The Full Federal Court has rebuffed an attempt to appropriate
the international reputation of the Monster Energy brand drink in
Australia in Hansen Beverage Company v Bickfords (Australia)
Pty Ltd  FCAFC 181.
Hansen had established a huge international market for their
Monster Energy beverage drink among 18 to 30 year-old males.
Unfortunately, they had not begun marketing in Australia or applied
for their trade mark here. Bickfords, after noticing the success of
the Monster Energy product in the United States, decided to
introduce a very similar product into Australia. Hansen sued under
our Trade Practices Act for passing off.
At issue was whether Hansen had established the appropriate
reputation in the Australian market to the extent that a
significant portion of the relevant market would have been misled.
The trial judge held this not to be the case and refused to give
weight to "indirect" advertising by Hansen in sponsorship
of major international sporting personalities and celebrities. On
appeal, the Full Court was more ready to accept that indirect
advertising is a significant modern marketing tool and can be used
to establish reputation within Australia. In the words of Judge
Finkelstein: "the indirect brand advertising employed by
Hansen (and, for that matter, Bickfords) can establish reputation
as well as, if not better than, direct advertising. After all,
everyone knows that James Bond drives an Aston Martin, Janis Joplin
wanted to own a Mercedes Benz and Audrey Hepburn had breakfast at
The net result of the case is that local companies will face
increased hurdles in trying to appropriate forthcoming successful
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