Importance Of Trade Mark Registration Highlighted As MONSTER ENERGY Case Dismissed

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.

Approach

The Court approached the question of the operation of s 52 of the TPA by...