Australia: Importance Of Trade Mark Registration Highlighted As MONSTER ENERGY Case Dismissed

Last Updated: 10 April 2008
Article by Nick Weston

In Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCA 406 (31 March 2008) the success or otherwise of both the claim and the cross-claim turned on each party evidencing a sufficient reputation of its product amongst Australian customers by reference to the unregistered marks MONSTER and MONSTER ENERGY in the context of deciding whether there had been a passing off at common law or a contravention of s 52 of the Trade Practices Act 1974 (Cth) (TPA).

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 J, stated:

"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 Inadmissable

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 brand.


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)

So What?

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.

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