Hansen Beverage Company v Bickfords (Australia) Pty Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 31 March 2008
• Neutral Citation: [2008] FCA 406
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCA 406

TRADE PRACTICES - misleading and deceptive conduct - where applicant sells and promotes energy drink overseas using certain mark - where respondent commences using that mark without licence to sell energy drink in Australia - where applicant does not conduct business in Australia but alleges that it has reputation amongst target market in Australia on basis of exposure of its mark and that consumers would be misled or deceived - cross-claim by respondent that it has established requisite reputation - whether either party has established sufficient reputation - establishment of date at which reputation should be assessed

TORT - passing off - where applicant sells and promotes energy drink overseas using certain mark - where respondent commences using that mark without licence to sell energy drink in Australia - where applicant does not conduct business in Australia but alleges that it has reputation among target market in Australia on basis of exposure of its mark - whether sufficient reputation established

EVIDENCE - hearsay - business records exception - where television ratings data is sought to be tendered - where data is produced by computer extrapolating human representation - whether data is hearsay - where data is produced by third party as a product of its business - whether data falls within business records exception - whether data should be otherwise admitted under discretion in s 190(3) of Evidence Act 1995 (Cth)

Evidence Act 1995 (Cth) ss 59(1), 69, 76, 79, 146, 190(3)

Trade Marks Act 1995 (Cth) s 27(1)(b)(i)

Trade Practices Act 1974 (Cth) s 52

10th Cantanae Pty Ltd v Shoshana Pty Ltd (Sue Smith Case) (1987) 79 ALR 299 followed

Arnotts Ltd v Trade Practices Commission (1990) 97 ALR 555 discussed

ASIC v Rich (2005) 216 ALR 320 applied

.au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 207 ALR 521 not followed

Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 239 ALR 662 followed

Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 32 ALR 387 followed

Colorado Group Ltd v Strandbags Group Pty Ltd (2006) 67 IPR 628 distinguished

Compafina Bank v ANZ Banking Group Ltd [1982] 1 NSWLR 409 cited

ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 followed

McCormick & Company Inc v McCormick (2000) 51 IPR 102 cited

National Exchange Pty Ltd v Australian Securities & Investments Commission (2004) 61 IPR 420 cited

Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Limited (2007) 71 IPR 571 cited

R v Wood (1982) 76 Cr App Rep 23 distinguished

Roach v Page (No 15) [2003] NSWSC 939 applied

Rook v Maynard (1993) 126 ALR 150 distinguished

R W Miller & Co Pty Ltd v Krupp (Australia) Pty Ltd (1991) 32 NSWLR 152 cited

Shoshana Pty Ltd v 10^th Cantanae Pty Ltd (1987) 11 IPR 249 cited

Supetina Pty Ltd v Lombok Pty Ltd (1984) 5 FCR 439 not followed

Trade Practices Commission v Arnotts Ltd (1990) 93 ALR 657 cited

Walton v R (1989) 166 CLR 283 cited

HANSEN BEVERAGE COMPANY v BICKFORDS (AUSTRALIA) PTY LTD (ACN 053 240 261), MEAK PTY LTD (ACN 088 219 363), BICKFORDS (AUSTRALIA) PTY LTD AND MEAK PTY LTD AND HANSEN BEVERAGE COMPANY

VID 908 OF 2006

MIDDLETON J

31 mARCH 2008

MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 908 OF 2006

BETWEEN:	HANSEN BEVERAGE COMPANY Applicant
AND:	BICKFORDS (AUSTRALIA) PTY LTD (ACN 053 240 261) First Respondent MEAK PTY LTD (ACN 088 219 363) Second Respondent BICKFORDS (AUSTRALIA) PTY LTD AND MEAK PTY LTD Third Respondent HANSEN BEVERAGE COMPANY Fourth Respondent

JUDGE:	MIDDLETON J
DATE OF ORDER:	31 MARCH 2008
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1. The application and cross-claim be dismissed.

2. The parties confer and thereafter file and serve any agreed order as to costs, and in the event of no agreement, any submissions as to costs, within 14 days.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 908 OF 2006

BETWEEN:	HANSEN BEVERAGE COMPANY Applicant
AND:	BICKFORDS (AUSTRALIA) PTY LTD (ACN 053 240 261) First Respondent MEAK PTY LTD (ACN 088 219 363) Second Respondent BICKFORDS (AUSTRALIA) PTY LTD AND MEAK PTY LTD Third Respondent HANSEN BEVERAGE COMPANY Fourth Respondent

JUDGE:	MIDDLETON J
DATE:	31 march 2008
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

Introduction

1 The principal issue in this proceeding is whether the applicant (‘Hansen’) has shown a sufficient reputation in Australia in the mark MONSTER ENERGY, at the relevant date, in relation to energy drinks, such that the adoption of that mark, or its contraction MONSTER, for energy drinks by the respondents (‘Bickfords’) conveys a misrepresentation that the Bickfords product is the product of Hansen or is associated with Hansen. If not, by reason of the cross-claim in this proceeding, the issue then arises as to whether Bickfords has itself established a sufficient reputation in Australia in the mark MONSTER ENERGY, or its contraction MONSTER. Both issues arise in the context of deciding whether there has been a passing off or a contravention of the Trade Practices Act 1974 (Cth) (‘TPA’).

2 It is accepted by the parties that if Hansen is successful in its claim, then the cross-claim should be dismissed. However, it is not accepted that if Hansen is unsuccessful, the claim in the cross-claim will necessarily be successful, as the issue of sufficient reputation in support of that claim is in dispute. The parties accept that if sufficient reputation is established in either the claim of Hansen or Bickfords, then the successful party would be entitled to relief, although the extent of the relief in the case of Hansen being successful would depend upon some factual findings the Court may need to make in relation to Bickfords’ conduct.

3 I have decided that neither Hansen nor Bickfords has established upon the evidence before the Court the reputation required by law to succeed in their respective claims, and I propose to dismiss the claim and cross-claim making no restraining orders. This may admit of the risk of confusion or possibility of blunders by some members of the public in their choice of the energy drinks that are or may be made available by either Hansen or Bickfords, but such risk or possibility the law accepts. In essence, I have come to the conclusion that 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.

4 I make one further introductory remark. Hansen has led evidence (which was uncontested) that it definitely intends to sell MONSTER ENERGY drinks in Australia. However, no evidence was led of any definite business plan or of any intended sales in Australia in the near or immediate future. Nevertheless, the issue of Hansen’s present intention was not raised in this proceeding, and I proceed on the basis that Hansen intends to sell MONSTER ENERGY drinks in Australia, and the principal issue in this proceeding is as I have described it above.

BACKGROUND Hansen and MONSTER ENERGY

5 Hansen has, since 1992, developed, marketed, sold and distributed non-alcoholic beverages, including carbonated drinks, energy drinks, fruit juice smoothies, lemonades and juice cocktails in the United States. As at November 2006, Hansen had over 700 employees, with the annual revenue for the 2005 financial year being US$415,417,282.

6 In 1996, in response to the success of energy drinks in the United Kingdom, Hansen began consumer testing of its own energy drink, Hansen’s Energy Smoothie. The primary demographic for Hansen’s energy drinks was, and remains, 18 to 30 year old males. This is to be contrasted with the primary demographic for its natural soft drinks and juice products, being 25 to 40 year old affluent college educated females. Hansen’s management, in 2002, decided to launch a new energy drink which would be targeted to the 18 to 30 year old male demographic, to compete with Red Bull, the leading energy drink in the world at the time. Hansen created, in conjunction with an independent design firm, the MONSTER ENERGY brand name, and decided to sell the drink in 16 oz (473 mL) cans. Hansen’s intention was to create, by using MONSTER ENERGY, a completely separate ‘identity’ and ‘personality’ from the Hansen brand, thus enabling it to focus on the young male target market. To this end, Hansen developed a website at www.monsterenergy.com, which was separate from, and contained no reference to, Hansen.

7 The official United States launch of MONSTER ENERGY drinks by Hansen was in April 2002. In 2003, Hansen introduced a low carbohydrate version of the energy drink, and in 2004 it began selling MONSTER ENERGY in 4-packs. During 2005 other variations of the MONSTER ENERGY drink and packing were introduced, which included Khaos (with 70% juice) and Assault.

8 Hansen attempts to distinguish its MONSTER ENERGY drinks by, among other things, using ingredients such as taurine, L-carnitine, panax ginseng, guarana, B vitamins, inositol, glucuronolactone, sodium, glucose and caffeine. All varieties of the MONSTER ENERGY drinks contain these ingredients and are carbonated. Further, all varieties of the drinks are sold in 16 oz (473 mL) cans which:

· are predominantly black, with an ‘M’ claw design;

· refer to the www.monsterenergy.com website;

· include the MONSTER ENERGY slogan ‘Unleash the Beast!’, which is a registered trademark of Hansen;

· list certain of the ingredients around the top of the can; and

· emphasise the ‘O’ in MONSTER and MONSTER ENERGY.

9 In addition, there are variations between the cans for the different varieties...