Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923

Author: Jasmine Burrows, Progressive Legal

Appellant, Rodney Jane Racing Pty Ltd (RJR), applied for registration under Part 4 of the Trade Marks Act 1995 (Cth) of three trade marks in class 12 in relation to “alloy wheels for automobiles excluding motorbikes” on 27 January 2015.  

The RJR marks each include the word, ‘Monster’, and the respondent, Monster Energy Company (MEC), opposed the registration of the RJR marks.  

MEC promoted and sold its energy drinks and associated products under several trade marks in Australia and has done so since 2009. These trade marks include the word marks ‘Monster’ and ‘Monster Energy’ and the device mark referred to as the ‘M-icon’. 

On 14 May 2018, MEC successfully opposed the registration of the RJR Marks in the Australian Trade Marks Office on the grounds of s 60 of the Trade Marks Act 1995 (Cth). The registrar found that the use of the RJR Marks was likely to deceive and cause confusion given MEC’s prior reputation. Learn about what happened in this notorious case on this page. 

Facts

By notice of appeal filed 14 May 2018, RJR appeals against the decision of the registrar under s 56 of the Act. 

MEC maintains its opposition to the registration of the RJR marks. 

MEC relied on s 60 Trade Marks Act 1995 (Cth) and contended that MEC had acquired a reputation in Australia before the priority date for the registration of the RJR marks. The use of the RJR marks on alloy wheels for motor vehicles would be likely to deceive or cause confusion. 

MEC also opposed registration of the RJR marks on the basis stated in s 42(b) of the Trade Marks Act 1995 (Cth): that the use of the RJR marks would be contrary to law. 

MEC relied on Trade Marks Act 1995 (Cth) and contended that MEC did not have a valid claim to ownership of the RJR marks as at the priority date. 

MEC relied on s 59 Trade Marks Act 1995 (Cth) and contended that RJR did not have the requisite intention to use the RJR marks as at the priority date. 

Both parties raised objections under the Evidence Act on relevance, hearsay and s 135 grounds (probative value outweighed by other factors) to several categories of evidence. 

These included data generated by Google analytics and documents downloaded from websites like Wayback Machine, Facebook, and Instagram. 

Issues

• Whether the appellant had a valid claim to the ownership of the marks at the priority date. 
• Whether the appellant intended to use or authorise the use of the marks at the priority date. 
• Whether the marks were likely to deceive or cause confusion. 
• Whether the documents constitute business records under s 69 of the Evidence Act 1995 (Cth). 
• Whether the Court should exercise its discretion under section 135 of the Evidence Act 1995 (Cth) to exclude the evidence. 

Decision

• Justice O’Bryan allowed RJR’s appeal and ordered registration of the RJR Marks.  
• The grounds of opposition raised by MEC were rejected.  
• MEC was ordered to pay RJR’s costs of the court proceeding and the proceeding before the Registrar of Trade Marks.  

Reasoning

Trade Mark Rulings

Under s 60 of the Trade Marks Act 1995 (Cth), Justice O’Bryan concluded that: 

MEC has established a strong reputation, however, this does not apply to the word ‘Monster’ alone. The word ‘Monster’ is not distinctive of its products or sponsorships. Rather, it is MEC’s device marks, and the word mark “Monster Energy”, which carry its reputation. 

MEC’s primary reputation is as a producer and seller of energy drinks. Despite MEC’s extensive marketing associated with motorsports, this does not establish a reputation in Australia in connection with the sale of automotive wheels.  

There is no evidence that MEC has used the word marks which contain the plain word ‘Monster’ as a brand to sell its energy drinks or for promotional purposes. The word ‘Monster’ thus has a limited reputation on its own. It is an ordinary English word which conveys a range of meanings such as large, strong, or wild. Consumers would not associate the word ‘Monster’ used on its own with MEC’s products.  

The word ‘Monster’ has descriptive meaning. There is extensive use of the word as a trade mark in relation to a range of goods and services. It has been used in a motorsport context as the name of a series of motorbikes manufactured by Ducati and as the name of an event, Monster Jam, in which Monster Trucks compete. 

MEC has no reputation in respect of alloy wheels.  It does have a strong reputation as a sponsor of motorsports, including teams and individual drivers and riders.  It is also associated with motorsport clothing and equipment.  That reputation, however, does not carry across to alloy wheels. 

 There are striking differences between the RJR marks and the MEC marks. They do not bear any resemblance to each other. The ordinary consumer would not confuse them.  

The evidence establishes that alloy wheels have a premium price in comparison to other wheels and are generally purchased by engaged consumers making carefully considered purchasing decisions. The primary reason why consumers purchase alloy wheels is aesthetic, to enhance the appearance of their vehicle.  Consumers typically investigate a range of different styles and varieties. This reduces the chance of confusion from consumers.  

These s 60 findings were determinative for the related s 42(b) “contrary to law” opposition ground. 

Overall, MEC has failed to satisfy that the use of RJR marks is likely to deceive or cause confusion because of the reputation of the MEC marks.  

Under s 58 of the Trade Marks Act 1995 (Cth), Justice O’Bryan concluded that: 

MEC did not satisfy that RJR did not exercise control over the RJR marks by Bob Jane Corporation and never intended to use the marks within the meaning of the Trade Marks Act 1995 (Cth). 

At the priority date, given the close association between the two companies, Bob Jane Corporation was an authorised user of the RJR marks under the control of RJR. This settles the s 59 issue.  

The determination of the s 58 issue is largely determinative of the s 59 issue.  

RJR did intend to authorise the use of the RJR marks in Australia as evidenced by the filing for the registration of the marks, the entry into the 2013 Agreement granting a licence to use the marks to Bob Jane Corporation, and the control (through Mr Jane) of the use of the marks exercised by Bob Jane Corporation. 

Evidentiary Rulings

Under s 69 Evidence Act 1995 (Cth) Justice O’Bryan found that: 

Whether or not the documents fall under the exemption depends on the content of the web page. 

Documents which are merely promotional or descriptive of the activities of a company are unlikely to constitute business records. 

In relation to Wayback Machine evidence, Justice O’Bryan followed past case law indicating that archived web pages are not business records.  

Facebook and Instagram posts and searches were ruled to be hearsay and did not constitute business records.  

Justice O’Bryan referred to the “nature” of social media platforms and explained that the Court does not have enough evidence or information to determine what exactly is being communicated through posts on these platforms. This includes whether the information in the posts is being shared by someone who personally knows the facts they are asserting or if it is based on information provided by someone else, either directly or indirectly. 

Generic Google search results were merely promotional and descriptive of businesses, containing, for example, an “About Us” section. They therefore constitute hearsay and do not satisfy the business records exemption.  

In relation to Google Analytics information, Justice O’Bryan decided that this information was admissible as a business record of the entity operating the website. Unlike the websites above, Google Analytics is a specific service that is used for the sole purpose of allowing businesses to track and record website traffic. This evidence was ultimately admissible.  

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