Hansen And Bickford's 'Do The Monster Mash'

The Full Federal Court of Australia has allowed an appeal in a

case concerning the use of the words MONSTER ENERGY. In Hansen Beverage Company v Bickfords (Australia) Pty

Ltd [2008] FCAFC 181, the Full Court has set aside the orders

made at first instance (see Hansen Beverage Company v Bickfords (Australia) Pty

Ltd [2008] FCA 406) and has remitted the matter to the trial

judge. In a unanimous decision, the Full Court has decided that the

primary judge adopted an incorrect approach when considering

whether Hansen's use of MONSTER ENERGY was sufficient to

support an action for misleading and deceptive conduct under the

Trade Practices Act 1974.

Hansen produce an energy drink called MONSTER ENERGY, which was

launched in the United Sates in April 2002. Hansen did not apply to

register the trademark MONSTER ENERGY or formally launch the

product in Australia. Bickford's became aware of Hansen's

MONSTER ENERGY product during a trip to the United States in

February 2005 and set about developing a new energy drink.

Bickford's approached Hansen to discuss a possible licensing

agreement for the MONSTER trademark, however, no agreement was

concluded between the parties. Bickford's applied for

registration of MONSTER and MONSTER ENERGY and proceeded to launch

its own MONSTER ENERGY drink in the Australian market. According to

its evidence, Bickford's proceeded with its launch because its

market research found no indication that Hansen was promoting its

product in Australia and because members of the public seemed to

have no awareness of it.

There was no dispute...