Monster Energy Update

First published in Lexis Nexis Australian Intellectual

Property Law Bulletin, June 2009

Hansen Beverage Company, the purveyor of Monster Energy, the

second biggest selling energy drink in the world, did not have to

prove their reputation in Australia was strong enough to found an

action in passing off in order to stop Bickfords (Australia) Pty

Ltd from hijacking their brand in this country.

In trying to stop Bickfords, Hansen had not relied simply on an

action for passing off, a remedy designed to protect brand

owners' reputation, but had included a claim under the consumer

protection provisions of the Trade Practices Act, 1974

("TPA"), alleging misleading and deceptive conduct by

Bickfords.

Hansen was disappointed last year when at first

instance1 Middleton, J held that on the evidence

presented not enough Australian adult males between the ages of

18-30 (Hansen's stated target market) knew about Hansen's

product to constitute sufficient reputation for either claim to

succeed.

However, the Full Federal Court held unanimously last year on

appeal from Hansen2 that the standard to be applied to

sufficiency of reputation that must be established in a TPA claim

for misleading and deceptive conduct is not to be applied by

reference to the aggrieved party's stated "target

market", or even a narrower "relevant market" of

persons. Rather the question to be answered is:... whether a not

insignificant number of...