Rodney Jane Racing Pty Ltd v Monster Energy Company  FCA 923 (21 June 2019)
Successful appeal by Rodney Jane Racing (RJR) against a decision by the Registrar upholding oppositions by Monster Energy Company (MEC) to registration of RJR’s trademark applications for the three composite marks shown below filed on 27 January 2015 for alloy wheels for automobiles in class 12 (the Monster Marks).
The Registrar upheld the opposition based on s60, namely the likelihood of confusion arising from the Australian reputation of MEC’s MONSTER ENERGY trade marks for energy drinks. That decision is reported here .
In the appeal, MEC also relied on grounds of opposition under s42(b) – contrary to law, s58 – ownership and s59 – intention to use.
Under the s58 ownership ground, MEC contended that a related company, Bob Jane Corporation Pty Ltd was the true owner and not RJR.
Rodney James was the son of Bob Jane who founded the Bob Jane T-Marts business in 1965 which has developed into a well known business conducted by Bob Jane Corporation. All the shares in Bob Jane Corporation are held by Bob Jane Holdings Pty Ltd and all the shares in that company are held by Geraldine Jane (being the mother of Rodney Jane). Rodney Jane has been the CEO of Bob Jane Corporation since 2002.
RJR was incorporated in 2002 with Rodney Jane as sole director and responsible for all aspects of its business. Since 2006, RJR has been owned by Geraldine Jane. RJR has no employees. The principal activity of RJR concerns the Rodney Jane Racing motorsport brand and the RJR Wheels brand used in connection with wheels for performance vehicles. Under a 2009 licence agreement, RJR granted Bob Jane Corporation an exclusive licence to use the RJR Wheels brand.
Rodney James gave evidence that, in 2010, he developed the idea of MONSTER branded wheels which emanated from his interest in ‘Monster Trucks’ and subsequently developed logo versions. Under a 2013 licence agreement, RJR granted a non-exclusive licence to Bob Jane Corporation to use various trade marks, including the Monster Marks. Rodney Jane selected the manufacturer and the style of the relevant wheels to be marketed under the MONSTER Marks; although Bob Jane Corporation authorised the relevant manufacturer to apply the Monster Marks to the wheels to be sold through Bob Jane T-Marts stores.
O’Bryan J was satisfied the evidence was consistent with the Monster Marks being created by Rodney Jane in his capacity as director of RJR and not in his capacity as CEO of Bob Jane Corporation. His Honour was satisfied that RJR was the author of the Monster Marks. MEC had failed to discharge its onus of proving that RJR was not the owner. The evidence supported the conclusion that Bob Jane Corporation was an authorised user of the Monster Marks under the control of RJR as owner.
Under the s59 intention ground, MEC relied on the same evidence and arguments advanced under the s58 ownership ground and his Honour quickly dismissed that ground of opposition.
The key ground of opposition was under s60 and MEC acknowledged that, if the Court found against it under that ground, then the Court would also find against it under the s42(b) contrary to law ground (because it carries a high evidentiary burden).
There was no dispute that MEC had, since 2002, acquired a strong Australian reputation in trade marks containing a stylised letter ‘M’ used on its own or in combination with the words ‘Monster Energy’. That reputation was as a producer of energy drinks and as a sponsor of extreme sports including motorsports.
MEC contended that the notional consumer would believe, or would be confused as to whether, MEC had entered into a commercial relationship with the producer of wheels bearing the Monster Marks in the manner of brand extension, lending the MEC ‘Monster’ name to a different logo.
RJR adduced evidence of the use of the word ‘Monster’ as a brand in Australia before the priority date both by itself (through the use of the Monster Marks) and by others. This evidence showed the word ‘Monster’ has been registered as a trade mark in Australia in respect of a vast array of products. It is an ordinary English word which conveys a range of meanings such as large, strong or wild. It has been used in a motorsport context as the name of a series of motorbikes manufactured by Ducati and as the name of an event, Monster Jam, in which Monster Trucks compete.
Significantly, O’Bryan J considered that MEC’s word marks which contain the plain word ‘Monster’ have only a limited reputation on their own. Any reputation they enjoy is derived from MEC’s device marks. In other words, consumers are likely to associate the word ‘Monster’ with MEC and its products and promotional activities if the word is used in connection with, or in proximity to, MEC’s device marks. In that sense, it is the device marks that create the association in the minds of consumers.
His Honour appears to have accepted RJR’s submission that “the sheer enormity of MEC’s sales, and promotional and marketing activities, tells strongly against any risk that a consumer will confuse a product which is not branded as MONSTER ENERGY, and which does not feature the distinctive M-logo and the rendering of the word MONSTER in a distinctive script, with an unusual vertical line through the letter “O”, as a product of MEC. In this sense, MEC is “a victim of its own success”.” Of course, the reference to “a victim of its own success” was used by Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd  FCA 606 in relation to the Maltesers brand.
His Honour concluded, based on the evidence, that use of the Monster Marks, considered separately, would not be likely to deceive or cause confusion because of the reputation of any of MEC’s marks. While the word ‘Monster’ is an integral part of MEC’s corporate name and ‘Monster Energy’ brand, the word on its own does not have a strong reputation. The word ‘Monster’ is not distinctive of MEC, its products or sponsorships. That is not to say that MEC does not have any reputation in the word ‘Monster’. MEC inevitably has some reputation because, as it submitted, the word ‘Monster’ is an integral part of MEC’s corporate name and brand. However, the risk of deception or confusion from the use of the word ‘Monster’ as a mark by another person is dependent on the appearance of the other mark, the goods in respect of which it is used and the related context in which it is used. MEC has no reputation in alloy wheels. Its reputation as a sponsor of motorsports does not carry across to alloy wheels. Further, the evidence established that alloy wheels are the types of products which are purchased by engaged consumers, making carefully considered purchasing decisions, at a premium price.
MEC failed to satisfy his Honour that use of the Monster Marks is likely to deceive or cause confusion because of the reputation of MEC’s marks. His Honour considered there is no real or tangible prospect of that occurring. As a result, the s60 ground failed and it followed that the s42(b) ground also failed.
O’Bryan J also made various rulings as to the admissibility of certain evidence. Web pages downloaded after the relevant 2015 priority date purporting to show automotive wheels bearing an MEC mark were irrelevant and hearsay. Further, whether any such documents fall within the business records exception to hearsay depends upon their content and purpose. His Honour observed that documents by which a business offers a product for sale, which typically includes a description of the product and the price and possibly other terms and conditions of the offer, would constitute business records. That would be so whether the documents are made available to potential customers via the company’s website or in the company’s retail store. However, documents which are merely promotional or descriptive of the activities of a company, such as might be found on an “About Us” link on a website, are unlikely to constitute business records. His Honour followed earlier authority that evidence as to the results of internet archive searches using the Wayback Machine facility purporting to generate historical versions of webpages is hearsay and inadmissible. Historical posts to Facebook and Instagram accounts were also inadmissible and could not be clearly characterised as business records. The results of searches of registered trade marks of others from IP Australia’s database were admissible but of limited probative value as to whether any of those marks are actually in commercial use. However, internet searches conducted after the relevant priority date purporting to show use and ownership of those trade marks by others was inadmissible as being irrelevant and hearsay. Statistical data of website visitors derived from Google Analytics reports was admissible. Although the reports were hearsay, they were admitted under the business records exception.