Monster Energy Company v Mixi Inc

• Jurisdiction: Australia Federal only
• Judgment Date: 01 October 2020
• Neutral Citation: [2020] FCA 1398
• Court: Federal Court
• Date: 01 October 2020

Federal Court of Australia

Monster Energy Company v Mixi Inc [2020] FCA 1398

File number:	NSD 1959 of 2017
Judgment of:	STEWART J
Date of judgment:	1 October 2020
Catchwords:	TRADE MARKS – extension of protection in Australia to International Registration Designating Australia for the trade mark MONSTER STRIKE in Classes 9 and 41 – opposition relying on ss 42(b) and 60 of the Trade Marks Act 1995 (Cth) (TM Act) – appeal under s 56 against decision of the Registrar of Trade Marks allowing extension of protection – with regard to s 60, whether appellant’s marks including M icon and MONSTER ENERGY had acquired a reputation in Australia – nature and quality of reputation – whether promotion of energy drinks by sponsorship and events in gaming market amounts to reputation in computer games and associated products and services – whether use of opposed mark likely to deceive or cause confusion because of reputation ; CONSUMER LAW – s 18 of the Australian Consumer Law (ACL) – misleading or deceptive conduct or conduct likely to mislead or deceive – s 29 of ACL – false or misleading representations – whether use of opposed mark would make representation that products have sponsorship or approval of, or affiliation with, owner of opposing marks – reputation of opposing marks part of the context in which use of opposed mark is assessed – whether use of opposed mark would be contrary to law as being contrary to ss 18 and 29(1)(g) and/or (h) of ACL – whether reliance on s 42(b) of TM Act and ss 18 and 29 of ACL adds anything to reliance on s 60 of TM Act – duplication of case
Legislation:	Competition and Consumer Act 2010 (Cth) Sch 2 (‘Australian Consumer Law’) ss 18, 29(1)(g), 29(1)(h) Trade Marks Act 1995 (Cth) ss 42(b), 56, 60, 197 Trade Marks Regulations 1995 (Cth) regs 17A.3, 17A.28, 17A.34 Explanatory Memorandum, Trade Marks Amendment Bill 2006 (Cth)
Cases cited:	Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd[2014] FCA 634; 317 ALR 73 Australian Competition and Consumer Commission v TPG Internet Pty Ltd[2020] FCAFC 130; 381 ALR 507 Australian Competition and Consumer Commission v TPG Internet Pty Ltd[2013] HCA 54; 250 CLR 640 Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; 129 CLR 353 Butcher v Lachlan Elder Realty Pty Ltd[2004] HCA 60; 218 CLR 592 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70; 159 FCR 397 Campbell v Backoffice Investments Pty Ltd[2009] HCA 25; 238 CLR 304 Campomar Sociedad, Limitada v Nike International [2000] HCA 12; 202 CLR 45 ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176; 33 FCR 302 Condé Nast Publications Pty Ltd v Taylor[1998] FCA 864; 41 IPR 505 Electrocoin Automatics Ltd v Coinworld Ltd [2004] EWHC 1498 (Ch) Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; 185 FCR 9 GAIN Capital UK Ltd v Citigroup Inc (No 4) [2017] FCA 519; 123 IPR 234 Global Sportsman Pty Ltd v Mirror Newspapers Ltd [1984] FCA 167; 2 FCR 82 Google Inc v Australian Competition and Consumer Commission [2013] HCA 1; 249 CLR 435 Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181; 171 FCR 579 Health World Ltd v Shin-Sun Australia Pty Ltd[2005] FCA 5; 64 IPR 495 Hill Industries Ltd v Bitek Pty Ltd[2011] FCA 94; 214 FCR 396 Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG [1999] ATMO 23; 47 IPR 423 Jafferjee v Scarlett [1937] HCA 36; 57 CLR 115 Kraft Foods Group Brands LLC v Bega Cheese Ltd[2020] FCAFC 65; 377 ALR 387 McCormick & Co Inc v McCormick[2000] FCA 1335; 51 IPR 102 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd[1982] HCA 44; 149 CLR 191 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; 251 FCR 379 Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265; 42 FCR 227 Qantas Airways Ltd v Edwards [2016] FCA 729; 338 ALR 134 Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 Rodney Jane Racing Pty Ltd v Monster Energy Company[2019] FCA 923; 370 ALR 140 Singtel Optus Pty Ltd v Optum Inc [2018] FCA 575; 140 IPR 1 Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592 Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; 237 FCR 388 Tivo Inc v Vivo International Corporation Pty Ltd[2012] FCA 252 Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; 294 ALR 661
Date of hearing:	8–10 October 2019
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	183
Counsel for the Appellant:	N Murray SC with S Rebikoff
Solicitor for the Appellant:	Davies Collison Cave Law
Counsel for the Respondent:	A Fox with E Thompson
Solicitor for the Respondent:	Watermark Intellectual Property Lawyers

ORDERS

		NSD 1959 of 2017
BETWEEN:	MONSTER ENERGY COMPANY Appellant
AND:	MIXI INC Respondent

order made by:	STEWART J
DATE OF ORDER:	1 October 2020

THE COURT ORDERS THAT:

1. The appeal against the decision of the delegate of the Registrar of Trade Marks on 18 October 2017 is dismissed.

2. The appellant pay the respondent’s costs.

3. The parties have leave to apply to vary Order 2 by filing and serving, and providing by email to the Associate of Stewart J, written submissions (of no more than three pages) in support of any variation within 14 days of these orders.

4. Until further order, the text of the reasons for judgment published today is to be published and disclosed only to the external lawyers (solicitors and counsel) of the parties who may then disclose the substance of the reasons to their respective clients (the parties) without disclosing any fact or information the disclosure of which would otherwise be in breach of any existing suppression orders in respect of the evidence in the case.

5. Within 14 days of these orders, the parties are to notify the Court by email to the Associate of Stewart J of any parts of the reasons for judgment that they submit should be suppressed, with brief reasons in support of such suppression.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

STEWART J:

INTRODUCTION	[1]
LEGAL PRINCIPLES	[7]
The s 56 appeal	[7]
Section 60 of the TM Act	[12]
Section 42(b) of the TM Act	[23]
THE...