was associated with a range
of gaming and eSports-related
products as a sponsor of such
products, this was alongside many
other well-known brand sponsors
such as Vodafone, Samsung
and Pirelli. Those seeing the M
MONSTER ENERGY device in this
context would have been well
aware that these traders were
sponsors and promoters, and
not the providers or publishers
of the games being sponsored.

Although MEC’s marks appeared
in many games, the Court found
that they did so in the same way
that they did in reality. There was
no evidence that MEC or any other
sponsor of video games published
such games themselves using their
trade marks, and accordingly the
evidence did not establish that MEC’s
reputation in Australia extended to the
publishing or sale of video games.

Mixi submitted evidence that
there were numerous pending and
registered marks including the
word MONSTER that covered video
games, and the Court noted that
monsters were common features
in video games. Reference was
made to PAC MAN, but curiously
not to POKÉMON, which features
numerous monsters and is derived
from ‘Pocket Monster’. Evidence
of numerous games using the
word MONSTER in their title was
also submitted, but was rejected
because it did not show that these
games existed as at the priority date.

In light of his findings, Justice
Stewart held that whilst the
reputation of the M MONSTER
ENERGY device was established,
there was no particular reputation
in MONSTER per se or its other
extensions. The M MONSTER
ENERGY device in which reputation
had been established was found
to be visually and aurally distinct
from MONSTER STRIKE, and the
reputation did not extend to the
relevant goods or services. Coupled
with the existence of several
other ‘MONSTER’ registrations
for gaming related goods and
services, the fact that the relevant
consumers were considered to
be generally brand-savvy and not
gullible or easily confused, and the
absence of any evidence of actual
confusion, this meant that use of
MONSTER STRIKE was not likely
to cause deception or confusion,
or to meet the higher bar of being
misleading and deceptive, and
accordingly the opposition failed.

Whilst oppositions can succeed
where a mark has acquired a prior
reputation in relation to goods or
services other than those covered
by the opposed application, it is not
enough to establish reputation alone,
even if that reputation is significant.

The likelihood of confusion must
also be shown and where the
respective goods or services are
unrelated, this can be very difficult.

Mere sponsorship of relevant goods
or services is not likely to create
confusion as to the source of the
goods; a connection between the
manufacture, supply, trade channels
and purposes of the goods and
services is more likely to lead to a
conclusion that confusion may occur.

Russell Waters | Principal
BSc LLB FIPTA
russell.waters@pof.com.au Inspire December 2020
in association with these events
by sponsoring eSports teams and
tournaments (including MONSTER
ENERGY-branded drink give-aways
at gaming events held in Sydney in
2013), sponsoring games (including
on-can promotions of sponsored
games and by operating a number of
gaming-related websites and social
media pages), and through a Monster
Energy Gaming Facebook page. The
sponsored games also allowed MEC
to use their mark ‘in-game’, with the
mark appearing on billboards, track
boarding, clothing and vehicles used
and seen by player’s avatars as they
would be in real life. Samples of game
discs showing the marks as used
in-game were filed in evidence, but
Justice Stewart commented that he
had not played these himself, as he
did not have the necessary hardware;
he relied instead on the testimony of
a witness who had played the games.

In the face of this evidence, Mixi
conceded that at the priority date for
their application, MEC was a large
and well-known provider of energy
drinks in Australia and that the M
MONSTER ENERGY device had a
reputation in Australia in relation
to energy drinks. However, they
submitted that this reputation did
not extend beyond energy drinks,
and in particular did not extend to
the goods and services covered by
their MONSTER STRIKE application.

The Court found that whilst there
was some limited evidence that
MONSTER was used by itself, for
example in the phrase “MONSTER®
packs a powerful punch but has
a smooth flavour you can really
pound down” which was printed
on cans, this use was dwarfed
by the M MONSTER ENERGY
device mark. The prominence of
the device mark meant that the
evidence did not demonstrate
any particular reputation in
the word MONSTER alone.

The Court also found that although
the M MONSTER ENERGY device
…the evidence did
not establish that
MEC’s reputation in
Australia extended
to the publishing or
sale of video games.

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