The applicant (Hansen) alleged that the
adoption of the brand MONSTER ENERGY (the second biggest
selling energy drink in the world, behind Red Bull), or its
contraction MONSTER, for energy drinks by the respondents
(Bickfords) conveyed a misrepresentation that
the Bickfords product is the product of Hansen or is associated
with Hansen. If not, then conversely the cross-claim required
Bickfords to establish whether at the relevant time it had a
sufficient reputation in Australia in the mark MONSTER ENERGY,
or its contraction MONSTER to succeed in its own claim as
against Hansen. The parties agreed that the similarities
between the products could relevantly mislead or deceive for
the purposes of the TPA and the tort of passing off.
The Court approached the question of the operation of s 52 of the TPA by requiring it to be
established that a significant or substantial proportion of
persons who would be potential customers within Australia would
be likely to be misled.
Date Of Reputation
The Court held that the relevant date at which Hansen's
reputation was to be assessed is (up to) the date on which the
relevant Bickfords' products were available to consumers,
on the basis that that consumers could not be misled or
deceived until the product was available for purchase.
For Bickfords' the relevant date was the date when
Bickfords alleged that Hansen threatened the acts complained of
in the cross-claim.
Hansen relied on evidence of the 'lay a foundation'
marketing strategy it had adopted to reach its target
demographic primarily in other countries to demonstrate the
relevant products' exposure to persons in Australia, prior
to the launch of the Hansen products here. Neither party sought
to lead any expert or survey evidence as to the reputation in
and public recognition of the Hansen product in Australia,
although such evidence would be potentially admissible.
On the summaries of exposures provided by Hansen, Middleton
"The Schedules of Exposure before the Court set out the
extent of exposure, but it is the quality of the exposure
that has been the major influence in the reaching of my
decision. In fact, whilst in this proceeding Hansen has
tendered much material to show references to the MONSTER or
MONSTER ENERGY marks, via many media, this should not beguile
one into thinking the marks are necessarily, on this basis
alone, known to the required proportion of potential
customers." (at para 104)
Bickfords' evidence included a survey with only 264
respondents, conducted after its products had entered the
market, posing the question 'where have you heard/seen
MONSTER ENERGY drink advertising'. The Court gave this
material little or no weight as it was unclear whose product
the survey was referring to.
OzTAM Television Ratings Evidence Held
The Court held that the OzTAM television ratings data was
inadmissible hearsay because the original makers of the
representation that a person or persons are in the room where
the television is on (the people pressing the buttons on the
OzTAM device) were not in Court giving the evidence themselves.
The Court held too that the 'business records'
exception to the hearsay rule did not apply as these documents
were a product of the OzTAM business rather than internal
records. The Court chose not to exercise its discretion to
admit the ratings data as evidence as it had aspects that fell
into the category of opinion evidence and s 79 of the Evidence Act 1995 (Cth) had not
been complied with.
The court found that Bickfords deliberately copied
Hansen's brand, but only in Australia where Hansen had no
actual sales or direct promotion, and where Hansen did not have
sufficient reputation of the quality and type it alleged.
Bickfords knew this and acted accordingly in its own commercial
interest. The Court accepted that these specific circumstances
permitted Bickfords to seize a window of opportunity to enter
the market in Australia by adopting the Hansen model and
Neither Hansen nor Bickfords established upon the evidence
before the Court the reputation required by law to succeed in
their respective claims. Both the claim and cross-claim were
dismissed and no restraining orders were made.
His Honour Justice Middleton stated:
"both Hansen and Bickfords, to a lesser or greater
degree, have only just commenced the development of a
reputation in Australia, and neither has reached the stage of
development such that the Court should make the orders sought
in this proceeding." (at para 3)
Substantial sales and advertising of a product overseas does
not necessarily translate to 'reputation' in Australia.
Overseas companies that fail or neglect to protect their
position by making early application to register their trade
marks in Australia, may do so at considerable cost.
The content of this article is intended to provide a
general guide to the subject matter. Specialist advice should
be sought about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).