Stewart J has dismissed Brick Lane’s ACL[1] and passing off complaints against the get-up of Torquay Beverage Co’s Better Beer.
Some facts
On 21 July 2021, Brick Lane issued a press release announcing the launch of its new Sidewinder Hazy Pale ale, a no to low alcohol beer. The range had been in development, behind the scenes, since September or November 2020. Sales of the product to the public began around 2 August 2021 including in outlets such as Dan Murphy’s.
Brick Lane’s Sidewinder Hazy Pale
The domain name had been registered and and Instagram account created on 9 July 2021. From then, the Instagram account, at least, featured an image of the Sidewinder product. Before 21 July 2021, however, there were only 9 followers (and they were likely from Brick Lane or otherwise associated with its development).
On 26 July 2021, Mighty Craft[2] announced to the ASX that it had partnered with Torquay Beverage Co and The Inspired Unemployed to form Better Beer Co and the launch of the new zero carb beer Better Beer. The announcement was picked up and widely reported in industry publications; one of which, Beer & Brewer had a “reach” of 13,000 people and another, Drinks Trade, some 27,000 people. It was not until late October 2021, however, that product actually made it on to retail shelves.
Better Beer’s beer can
There was no suggestion that the respondents had some how copied Brick Lane’s get-up.
On 3 December 2021, Brick Lane launched the second product in its Sidewinder range – an XPA Deluxe.
In April 2021, Better Beer ginger ale was launched.
The claim
As is conventional, Brick Lane argued the get-up of the respondents’ product was liable to misrepresent to the public that the product was Sidewinder or manufactured by or in some way endorsed, approved or sponsored by the manufacturer of Sidewinder.
Brick Lane Sidewinder 4 packBetter Beer 6 pack
The respective get-ups alleged:
x
Brick Lane
y
Respondents
(1)
an off-white 355 ml can
(1)
an off-white 355 ml can (save for the bottled product)
(2)
an off-white cardboard cluster and case (where sold by cluster or case)
(2)
off-white cardboard cluster and case (where sold by cluster or case)
(3)
a curving flared striped design (on the can, cluster and case) in blue and shades of yellow and orange with the dominant flared part of the stripes being vertically aligned
(3)
a curving non-flared striped design (on the can, bottle, cluster and case) in blue and shades of orange and yellow with the stripes oriented horizontally; and
(4)
the use of horizontal black lettering for the Sidewinder name and horizontal off-white lettering against a black background for the name of the particular product on the can and case (the lettering, or background to the lettering, being silver on the cluster packaging); and
(4)
the use of dark blue lettering for the product name, the lettering being rotated vertically; and
(5)
the use of a sans serif typeface in upper case for the “Sidewinder” lettering.
(5)
the use of a serif typeface in title case for the “Better Beer” lettering.
What went wrong
There were two main problems.
First, when the respondents started their conduct – the launch of their product a mere 5 days after the launch of the Sidewinder product, Sidewinder itself did not have any appreciable reputation with the public. At [97], Stewart J explained:
The first reason why Brick Lane’s claim in respect of the Sidewinder Hazy Pale product must fail is that at the relevant time, being 26 July 2021, there was no appreciable knowledge amongst members of the relevant class of the Sidewinder get-up. That is to say, the hypothetical member of the class of consumers purchasing beer is not likely to have any familiarity with the Sidewinder get-up with the result that on seeing the Better Beer get-up they would not be likely to confuse it with the Sidewinder get-up. As it was explained by Burley J in Homart FCA at [125], “it takes a strong case” to establish a reputation that the get-up relied on is associated by consumers with the relevant product. Put differently, even assuming a strong similarity in the respective get-ups, the hypothetical consumer is not likely to be misled or deceived into thinking that the two products are associated if they do not readily associate the applicant’s product’s get-up with the applicant or its product.
The position was different with the Better Beer ginger beer, launched later in April 2022. By then, however, both the Sidewinder and original Better Beer products had been widely promoted and distributed throughout the market so that the public must be taken to have learned to distinguish between them.
The second main reason Brick Lane failed was the strikingly different names prominently plastered over the products and their packaging. At [100], Stewart J explained:
Turning now to the differences and similarities between the relevant products’ get-up, the first observation is that each product bears a distinctive brand name – Sidewinder and Better Beer. Not surprisingly, Mr Hall’s evidence was that the Sidewinder brand name is distinctive, unique and powerful. There is no reason to disagree with that assessment notwithstanding that not everyone encountering the name may associate it with 70s jet boats – they may think of air-to-air missiles or snakes or something else equally distinctive and memorable. Equally, Better Beer is a distinctive brand name. Brick Lane submitted that because it is descriptive it is weak, but I do not accept that. It is alliterative and catchy. Moreover, Sidewinder and Better Beer are rendered in quite different styles of typeface – sans serif and serif respectively. They look and feel very different. They do not have visual or phonetic similarities such as were material to the reasoning in Homart FCA at 195(b).
As in Parkdale v Puxu, this difference was compelling in distinguishing the products.
His Honour accepted that there were distinct similarities between the relevant get-ups and did not put much store in the different orientation of the coloured stripes or banding – vertical vs horizontal.
On the other hand, Stewart J did not think the size of the cans – 355ml instead of 375ml – had any significant role to play. Of the 894 different beers on offer at Dan Murphy’s, at least 50 used the 355ml can format so it could not be described as unusual.
Overall, Stewart J concluded at [113]:
Taking all of the above matters into consideration, I am not satisfied that the hypothetical reasonable consumer of beer would at the relevant date have had any particular familiarity with Brick Lane’s Sidewinder get-up, but even if they did, they would not have been likely to be misled by the similarity of the respondents’ Better Beer get-up to the Sidewinder get-up into thinking that the products were in some way associated. As explained, that arises in particular from the distinctive names used for the different products as well as the differences between the get-ups and the features of the relevant market.
A couple of noteworthy points
As his Honour noted, the question whether there has been a contravention of the ACL in these types of cases is determined when the respondent started the relevant conduct.
Brick Lane argued that the relevant date was when Better Beer was actually on the shelves available for retail purchase – that is, late in October 2021 – by which time Sidewinder was well established in the market.
Stewart J rejected that argument at [42] – [46] finding that the relevant date was when the respondents’ launched (i.e., announced the launch of) their product. As his Honour pointed out, the promotion of a product could give rise to misleading associations regardless of whether the product was actually available for purchase. In the cases which focused on the date sales started, there was no suggestion that there had been advertising or promotion beforehand. On the other hand, in In-n-Out Burgers, the contravening conduct started (at [181] and [193]) when the respondent launched its Facebook page, not later when it opened its store.[3] Correspondingly, the date Cadbury Schweppes started marketing its product in the Pub Squash case[4] was accepted by the Privy Council as the relevant date in passing off.
Secondly, Stewart J sought to explain the role of reputation in an ACL case. Where conduct is directed to a class rather than specific individuals, case law has now established it is not necessary to establish that a substantial or not insubstantial number of that class are likely to be misled or deceived. It is only necessary to show that the ordinary or reasonable member of the class is likely to be mislead or deceived.
Stewart J considered that in this type of case it was nonetheless necessary to show some association in the mind of the public between the get-up and the applicant. After quoting the Full Court in Cadbury Schweppes v Darrell Lea at [99], his Honour explained at [40]:
… although it might be said that a particular reputation is not necessary, it is nevertheless necessary that there is some association in the mind of the relevant sector of the public between the applicant’s product and its get-up such that confusion might arise from the use of the same or a similar get-up in relation to the respondent’s product. Without the pre-existence of such an association, it could not be said that the use by the respondent of the same or a similar get-up suggests a misleading or deceptive association. The inquiry does not proceed on the assumption that the hypothetical consumer member of the relevant class is familiar with the applicant’s product; that is required to be established.
In this case, the respondents had argued that its product was in a different market segment to Sidewinder – the low carb segment vs the low alcohol segment, but Stewart J found the relevant public was the beer market generally. There was no evidence that the different “segments” operated as distinct (sub-)markets. For example, there was no evidence that beer products were arranged on retail shelves in any fashion by market segments.
Brick Lane sought to rely on a Trade Mark examiner’s rejection of Torquay’s trade mark application in the face of Brick Lane’s prior application. Stewart J pointed out at [103] that the competing applications did not feature their respective brand names. His Honour also doubted the examiner’s opinion was admissible evidence in a Court in light of Evidence Act s 76.
Finally, for those of you that recall Lord McNaghten’s famous aphorism “thirsty folk want beer, not explanations”, this case was distinguishable. In Lord Mcnaghten’s case, there had been one brewery in the town of Stone making and selling its Stone Ales for hundreds of years when the competitor opened up as Stone Brewery selling Stone Ales. When Sidewinder and Better Beer launched into the market, however, the consumer was confronted with a plethora of brands and products.
A “craft beer accelerator” and the third respondent. The Inspired Unemployed and Torquay Beverage Co held, respectively, 40% and 60% of the shares in the second respondent, Better Beer Co Pty Ltd. ?
AGL, one of Australia’s largest suppliers of electricity, gas and telecommunications, owns copyright in and has registered as a trade mark its AGL “logo”:
TM No 1843098
Greenpeace started running a campaign about AGL’s business “Still Australia’s Biggest Climate Polluter” which included the online banner:
You can see why that might upset someone at AGL.
That caused AGL to sue Greenpeace for copyright infringement and trade mark infringement.
Some other uses, however, did not make such use of irony, sarcasm or ridicule, or humorous juxtaposition, as to qualify as parody or satire. This seems largely to have turned on the absence of the pointed tag line Australia’s Greatest Liability in an example such as:
A Greenpeace protest poster image
These uses also did not qualify for the defence of fair dealing for the purposes of review or criticism. They did not, for example at [92], “rise above the level of protest statements that are critical of AGL as a company, and would not be understood to represent criticism of review, whether of the AGL logo or any other work.”
Burley J also rejected AGL’s case on trade mark infringement: Greenpeace was not using the AGL logo as a trade mark. At [102], his Honour explained
The use of the modified AGL logo is to identify that brand, and the company that it represents, as the subject of criticism. [Consumers]would not perceive Greenpeace to be promoting or associating any goods or services by reference to that mark. Rather, it is the use of the modified AGL logo to refer in terms to AGL and the goods and services that AGL provides: see, for example, Irvings Yeast-Vite Ltd v Horsenail (1934) 51 RPC 110 at 115 (Lord Tomlin), cited in Shell Company at 426 (Kitto J).
This, with all due respect, has to be right. His Honour’s approach, however, demonstrates with stark clarity the problem with the reasoning in the “parallel import” cases like the Full Court’s (overruled) decision in E & J Gallo Winery v Lion Nathan Australia Pty Ltd, most recently confirmed in the Scandinavian Tobacco case at [21] – [56] (although one could argue, apart from the Gallo case, the goods weren’t in fact parallel imports).
p.s. AGL might feel doubly aggrieved by this as, back in the 1980s, it had successfully sued for copyright on the basis that there was no parody defence. It only took another (almost) 20 years, but the Act did finally get amended to bring in that revolutionary development.
Beach J has ruled that Maurice Blackburn did not breach any of State Street Global’s rights in the Fearless Girl statue by arranging for a replica to be displayed at the launch of a campaign to address the gender pay gap.
In 2016, State Street had commissioned Kristen Visbal to create a life-size bronze statue which became known as “Fearless Girl” in connection with a campaign to promote State Street’s Gender Diversity Index exchange traded fund, known as the “SHE fund”.
The completed statue was installed and unveiled in Bowling Green Park on Wall Street, famously appearing to confront the Charging Bull statue.[1] This had been a wildly successful campaign with, amongst other things, over 4.6 billion Twitter impressions (?) and a “mere” 745 million Instagram impressions (?) in the first 12 weeks!
In 2019, Maurice Blackburn and a number of corporate and super fund backers negotiated an agreement with Ms Visbal for a fee of USD250,000 permitting them to display a Fearless Girl replica in Federation Square Melbourne[2] in connection with a campaign for Equal Pay Day.
false, misleading or deceptive conduct in trade and commerce contrary to the Australian Consumer Law and passing off;
trade mark infringement; and
copyright infringement.
All the claims failed.
Beach J’s reasons for judgment run for some 1191 paragraphs over 274 pages. So, more considered analysis will have to await a later day (or days).
The central issue seems to have been the very specific nature of State Street’s rights to control further reproductions of the work and the careful way Maurice Blackburn had used Fearless Girl.
The terms State Street and the artist had negotiated included a clause granting State Street the exclusive rights:
to display and distribute two-dimensional copies, and three-dimensional Artist-sanctioned copies, of the Artwork to promote (i) gender diversity issues in corporate governance and in the financial services sector, and (ii) SSGA and the products and services it offers. …. (emphasis supplied)
and Ms Visbal also agreed that no other party could be authorised to use “the Artwork” as a logo or brand ….
Beach J held that the way Maurice Blackburn had used Fearless Girl in connection with the Equal Pay Day campaign did not fall within the scope of State Street’s exclusive rights. It also was not use as a logo or brand. Michaela Whitbourn has a nice summary.
However, it looks like there will need to be a further hearing to determine whether, and if so, how Maurice Blackburn may use and display its Fearless Girl replica in the future.
Those of you out there with long(-ish) memories, might recall that that juxtaposition caused its own ‘moral rights’ controversy. Fearless Girl was later moved in April 2018 to its current position in front of the New York Stock Exchange. ?
Fed Square, of course, is not without its own controversies! ?
In September 2020, IP Australia published its work plan to make provision for the better protection of Indigenous Knowledge in Australia’s Intellectual Property System.
Now it has released a consultation paper on four topics from that work plan it wishes to advance.
As summarised in the Introduction, the consultation paper raises four topics:
Establishing an Indigenous Advisory Panel – providing a formalised Indigenous voice to IP Australia.
Measures for trade mark or designs using Indigenous Knowledge – changes to processes to ensure IK owners benefit from, or have consented to, the use of their IK as the basis for rights.
New requirements to declare the source of Indigenous Knowledge used in new innovations – make it easier to determine if IK has been used in a patent or plant breeder’s right, and encourage conversations about access and benefit sharing.
Labelling to promote authentic Indigenous Products – exploring interest in labelling schemes that distinguish authentic Aboriginal or Torres Strait Islander goods.
Topic 2, relating to trade marks and designs, notes that IP Australia may currently reject an application if the application uses “IK” which is secret or sacred; the name of a group or a nation where there is no connection to that group or nation or uses a an Aboriginal or Torres Strait Islander word which should be available for other business to use.
Noting the limitations in that range, the consultation paper seeks input on a range of issues including:
(a) whether people would have concerns providing a statutory declaration etc. as evidence to support an objection to an application;
(b) whether IP Australia should ask applicants whether they have consent to use the “IK”;
(c) the introduction of a check to assess whether an application would cause cultural offence to a community or communities;
(d) whether IP Australia should assess whether the the application involves a use of “IK” in a way which falsely suggests a connection to an Indigenous person, community or nation.
Other questions relate to tools for better identifying applications which involve the use of “IK”.
Topic 3 raises questions about whether patent applicants should be required to declare the source of (1) genetic resources and/or (2) traditional knowledge included in their applications or on which an application is based.
Additional questions relate to how such requirements would be implemented, enforced and, if not complied with, penalised.
The Overview page states that consultations close on 24 May 2021.
The Full Court has dismissed Urban Alley’s appeal from O’Bryan J’s rulings that URBAN ALE was invalidly registered as a trade mark and La Sirène’s use of URBAN PALE did not infringe URBAN ALE. The decision may provide some helpful clarification of the test of substantial identity and, perhaps, urges caution against his Honour’s conclusion that URBAN PAEL was not used as a trade mark.
Urban Alley had registered URBAN ALE for beer. La Sirène started selling a Farmhouse Style Urban Pale [beer] by La Sirène under this trade mark:
Not capable of distinguishing
The Full Court upheld O’Bryan J’s conclusion that URBAN ALE lacked any capacity to distinguish as essentially descriptive or laudatory. As Urban Alley had not used the term before it registered its trade mark, it was not registrable under s 41.
This was really just the result flowing from the facts arising on the evidence. So a successful appeal was always a steep hurdle.
Practice tip: if you are going to adopt something as a trade mark, it will be unhelpful to refer to it in marketing materials in terms like:
The signature Urban Ale sits somewhere between a classic Australian golden ale and a Belgian blonde, with pleasant tropical notes but a crisp, clean finish. This is a premium beer for the people and is described as a ‘celebration of our great city, a tribute to the laneway culture and a blend of the old and the new’
and
Name: Once Bitter Style: Urban Ale (Somewhere between an Aussie Golden Ale and Belgian Blonde) ABV: 4-5%
One could be mistaken for thinking the trade mark was “Once Bitter”!
Deceptively similar to prior conflicting registration
Likewise, Urban Alley was unable to overturn O’Bryan J’s conclusion that URBAN ALE was deceptively similar to a prior registration for URBAN BREWING COMPANY and so invalid under s 44.
On this part of the case, Urban Alley argued O’Bryan J’s reasons for concluding the two marks were not substantially identical were inconsistent with his Honour’s conclusion that they were deceptively similar and so the latter conclusion was wrong.
In relation to substantial identity, O’Bryan J held that the inclusion of BREWING COMPANY in the prior mark conveyed a different meaning to ALE.
The Full Court rejected Urban Alley’s attack at [98] – [99]:
A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical. The primary judge’s observation must be understood as having been made in that light.
The test of deceptive similarity is fundamentally different. It is not a studied comparison. Rather, it is a comparison between one mark and the impression of another mark carried away and hypothetically recalled, paying due regard to the fact that recollection is not always perfect.
Thus, when considered from the perspective of deceptive similarity and imperfect recollection the differences which were apparent from a side by side comparison lost much of their significance. In that assessment, Urban Alley’s challenge overlooked the significance of URBAN being the first word of both marks and the close association in meaning of “brewing company” and “ale”. At [106], the Full Court explained:
The appellant also submitted that there is “no relevant trade mark resemblance” between the words “ale” and “brewing company”. This submission requires careful consideration. As the appellant’s submission recorded immediately above recognises, each compared mark must be considered as a whole. It is impermissible to dissect each mark to emphasise its disparate elements and then compare the disparate elements of each in order to reach a conclusion on deceptive resemblance. To start with, this would leave out entirely the impact of the common element “urban”. It would also ignore the synergy between the word “urban” and the other word(s) in each mark. This synergy contributes to the impression gained of each mark, which is carried forward into the relevant comparison between the two. This last-mentioned consideration brings into play the primary judge’s finding that there was a clear association in meaning between “brewing company” and “ale”. Given that clear association, coupled with use of the common element “urban”, it is understandable that the primary judge reached the conclusion he did on the question of deceptive similarity.
It might be thought that the strong emphasis on the narrow scope of the substantial identity test, requiring a studied side by side comparison, is a very welcome brake on the ruling in Pham Global.
No infringement
Having ruled that Urban Alley’s trade mark was invalidly registered on two alternative grounds, their Honours pointed out that Urban Alley’s appeal against the finding that La Sirène did not infringe must fail. So, it was strictly unnecessary to consider whether La Sirène’s use of “Urban Pale” would have been an infringement.
Speaking obiter dicta, the Full Court emphasised that O’Bryan J’s finding that La Sirène did not use URBAN PALE as a trade mark, despite its prominence, turned very heavily on the “overwhelmingly descriptive” nature of the expression. At [119], their Honours said:
Thus, it is entirely possible—indeed likely—that, absent the finding of the Word Mark’s lack of inherent adaptation to distinguish because of the ordinary signification of the word “urban”, the primary judge would have come to a different conclusion on trade mark use in relation to the respondent’s use of the name “Urban Pale” on the depicted label. This is particularly so when regard is had to the prominence and location of the name “Urban Pale”. Such use would normally be regarded as persuasively suggesting trade mark use, a consideration which his Honour seems to have recognised in the next paragraph of his reasons, where he said:
205 It is apparent that the labelling of the La Sirène Urban Pale product features the words “Urban Pale” in large lettering and an emboldened font. It is the most prominent name on the labelling. However … I do not consider that that prominence converts the essentially descriptive name into a trade mark indicating the source of origin of the product.
Even so, it will be necessary to treat the finding that Urban Pale was not used as a trade mark very carefully and confined to its particular facts. On this part of the case, the Full Court concluded at [120]:
Be that as it may be, our resolution of Grounds 1, 2 and 3 of the appeal adversely to the appellant necessarily means that Ground 5 of the appeal should be dismissed, as we have said.
… out, again. Stewart J has dismissed Monster Energy Corporation’s (MEC) opposition to the registration of MONSTER STRIKE by Mixi for computer gaming.
Mixi Inc. applied to register MONSTER STRIKE as a trade mark in Australia for computer games and software in international classes 9 and 41.[1] MEC lost the opposition before the Registrar and appealed.[2] okMEC argued that, because of MEC’s reputation in its MONSTER marks, Mixi’s use of MONSTER STRIKE for computer games and software would be likely to deceive or cause confusion.
Mixi launched its Monster Strike game in October 2013. By June 2014, there had been 8 million downloads and, by June 2018, more than 44 million downloads. Mixi had discontinued the English language version in 2017, so that the game was available only in Japanese or Chinese after that.
The priority date for MONSTER STRIKE was 27 December 2013, so that was the date MEC’s reputation in MONSTER fell to be determined and assessed.
MEC’s reputation
MEC claimed reputation variously in:
(1) MONSTER
(2) MONSTER ENERGY
(3) MONSTER RIPPER
(4) MONSTER REHAB
(5) MONSTER GIRL
(6) MONSTER ARMY
(7) MONSTER ASSAULT
(8) MONSTER KHAOS
and two stylised “M”s known as the M icon or M claw (illustrated below).
MEC did have trade mark registrations for these in Australia, but the goods and services were not for computer games and software.
MEC had launched the original “Monster” energy drink in 2002, with the product first being introduced into Australia in July 2009.
By the priority date, MEC had sold more than US$19 billion worth of drink in the USA and US$23 billion worldwide. Sales in Australia between 2011 and 2013 ranged from US$27 million down to US$15 million. More than 78 million cans of drink had been sold in Australia; of which 40 million were the Monster Energy Original product. The drinks were sold in Australia in over 10,000 outlets including grocery stores, convenience stores, petrol stations, bars, pubs, cafes and take-away food outlets.
MEC’s main witness conceded that there had not been any sales of Monster Assault or Monster Khaos in Australia before the priority date.
You probably already know what the cans look like, but Stewart J included images of typical get-up:
Monster Energy Original
Monster Rehab
It was not in dispute that MEC did not provide computer software or games under its trade marks. MEC relied, however, on the fact that most of its advertising and promotional expenditure was spent on endorsements of athletes, gamers and musicians and sponsorships of sports, eSports (that is, competitive video gaming) and music festivals.
Between 2002 and 2013, MEC had spent more than US$2.5 billion on advertising, marketing and promotion. In Australia, MEC had spent US$50 million, with expenditure between 2011 and 2013 being US$31.4 million. Apparently, US$7.15 million was expenditure on athletes, musicians, competitions and other events.
MEC argued the target audience for its promotional activities were 18 –35 year olds, which was the same demographic as for computer games.
In addition to sponsoring the Evil Geniuses eSports team (starting in 2012), MEC had social media pages dedicated to gaming. Its Monster Energy Gaming page on Facebook had been operating since 2010. It had one million likes by the end of 2013; garnering about 10,000 “likes” from Australia each month between June and December 2013. MEC also used the Twitter handle @monstergaming.
There had also been extensive placements of MEC products, merchandise and advertising in video games, including t-shirts or other clothing, billboards and even some characters drinking MEC cans of drink. MEC had also sponsored at least one gaming developer, Ali-A, who had over 2 million subscribers to his YouTube channel.
In addition to the sports or gaming specific activities, MEC also engaged in the conventional provision of hospitality at pubs, sporting events, trade shows, gaming stores. The staff wore branded clothing, drove in branded vehicles and handed out branded samples.
MEC’s website had thousands of visits from Australians. Its main Monster Energy Facebook page had 24 million likes, of which 400,000 were Australians. The Monster Energy Girls Facebook page had 245,000 visits including 21,232 from Australia. There was a Monster Energy Facebook page with 3,450 visits from Australia; the Monster Energy Instagram account had almost 32,000 Australian followers and the main Monster Energy YouTube site had over 80 million views worldwide, with some 3.6 million views from Australia.
What MEC’s reputation was in
Unsurprisingly in the light of this evidence, Stewart J accepted that MEC had a well-established reputation in Australia. However, his Honour considered the reputation was closely bound up with the M claw mark and also generally involved the use of Monster and Energy together in combination.
From over 3,000 pages of written evidence, including photographs, MEC was able to identify only limited instances where MEC had used the word Monster on its own. For example (look closely):
Monster Energy drink label
At [146], Stewart J explained:
Many other cans of Monster energy drinks had the same or a similar slogan printed on them. In each instance the writing is small and the MONSTER® is dwarfed by the device marks which are distinctive and catch attention. I do not consider this use of MONSTER® to have generated any particular reputation for the use of the word MONSTER on its own.
His Honour considered that other references to Monster alone were really shorthand references to Monster Energy, which is “really the brand that has a strong reputation.” Some comments on social media by consumers referring only to “Monster” were similarly shorthand.
Accordingly, his Honour concluded at [151]:
In the result, the evidence does not support a conclusion that the MONSTER word mark on its own had any particularly significant reputation in Australia at the relevant time. Any reputation of the word MONSTER is derived from the M claw, stylised MONSTER and the MONSTER ENERGY word mark. It is these that create the association in the minds of consumers.
MEC’s trade marks Monster Assault, Monster Khaos, Monster Ripper, Monster Army, Monster Rehab had either not been used in Australia or, if used, Stewart J considered there was no evidence to support a conclusion that they had developed a significant reputation in Australia.
Stewart J accepted that MEC reputation was well-known and that its (stylised) Monster marks were associated with a range of eSports-related products and activities. However, that association was as “a sponsor” or “supporter” and not as a provider or publisher of video games themselves. At [159] – [162]:
[159] MEC submits that by the priority date, Australian consumers in MEC’s target demographic had a wide awareness of MEC’s Australian marks as emanating from a company with a long-standing and highly active presence in gaming and eSports. It further submits that MEC was strongly engaged with the international gaming community through its dedicated gaming internet sites and social media channels; closely connected with the generation of gaming content creators through its association with eSports athletes, teams and other content creators; and actively involved in the gaming industry through its promotion of, and licensing of its marks to appear in, a number of popular games.
[160] Those submissions can be accepted insofar as they apply only to the M claw and the words MONSTER and ENERGY in association with that mark. It can also be accepted that the marks were well-known in Australia, and that they were associated with a range of gaming and eSports-related products, programs and activities. However, the nature of that association and hence reputation was as a sponsor and supporter. Very often MEC’s marks, showing its sponsorship, appeared alongside many other well-known marks such as Vodafone, Samsung, Toshiba, Blackberry, Alliance and Pirelli, all apparently the names of co-sponsors. Of those with whom the marks had a reputation, there would have been a keen awareness that the trader behind the marks traded in energy drinks and not in other goods or services. MEC sponsored and promoted gaming and eSports events, and for that purpose it published material about such events, but its marks did not, in my assessment, have a reputation as a brand of origin for the provision of gaming event or publishing services; the reputation remained one of sponsor and promoter.
[161] In my assessment, an ordinary consumer would understand the presence of MEC’s Australian marks on athlete uniforms, equipment, event signage, apparel and the like to be for the purpose of advertising and promoting MEC’s energy drinks, and not to be functioning as a brand, or a source of trade origin, for the particular equipment, uniform, signage and apparel upon which the marks appear. This is similar to the findings in Qantas at [174] and [177]. Similarly, MEC’s sampling activities conducted at sports events and other venues, including by the Monster Girls, would be understood by the ordinary consumer to have been conducted for the purposes of advertising and promoting its energy drinks.
No real, tangible danger of confusion
At [167], Stewart J concluded there was no real, tangible danger that a reasonable number of people would be caused to wonder whether or not MONSTER STRIKE was associated with MEC in some way.
First, Stewart J considered that the very different goods and services was significant. As a result, the risk of confusion was “inevitably very much less” than it might have been if they were “the same or significantly overlapping.”
Secondly, the competing trade marks were distinctively different, bearing in mind the stylised or composite form in which MEC’s reputation lay. “Monster” was part of that form, but MEC had not established a significant reputation in that form.
Correspondingly, MEC’s arguments based on the similar linguistic structure or brand extension failed as its evidence did not establish a reputation in the various extensions – Monster Assault, Monster Ripper, Monster Khaos, Monster Army.
Thirdly, the evidence showed that at least 40 other traders had registered trade marks for or including MONSTER in respect of video games etc. While there was no evidence of any use of these, at [174], Stewart J was prepared to infer that some of these at least would have reputation. However, this played only “a small role” in reducing the potential for confusion.
Fourthly, the likely public, being young men and women interested in computers and gaming, was “brand-savvy and not gullible or easily confused.”
Finally, there was no evidence of actual confusion.
Strike 2
As the claim under s 42(b) requires demonstrating a likelihood of deception, not just mere confusion or being caused to wonder, you won’t be surprised that it failed too.
Stewart J’s decision is the second in a year or so in which MEC has failed in its attempt to extend its rights from the field of energy drinks into what might be thought rather unrelated fields. The earlier decision, involving an infringement action against Rodney Jane’s use for tyres, is under appeal. I wonder if we have heard the last of this dispute too?
IP Australia has published a Consultation Paper on a possible new Geographical Indications Right.
You probably know we are not supposed to call a fizzy or bubbly alcoholic beverage made from grapes “Champagne” unless it comes from that special part of France (that’s France in the EU, not Texas).[1]
This, and a range of other prohibitions, stem originally from the Australia-EU Wine agreement (and its successors) back in the 1990s which was supposed to give our wine producers much easier access to the EU market in return for respecting their cultural properties. (I’m not sure if anyone has ever undertaken an empirical assessment to see how that worked out.)
As previously reported, our Government and the EU are in the throes of negotiating a more wide ranging Free Trade Agreement. As part of those negotiations, the EU wants Australian law to significantly broaden the number and scope of EU “geographical indications”[2] which are protected to include a further 236 spirit (as in alcoholic beverages) names and 172 agricultural and other names.
The Consultation Paper is a further round in seeking input on this proposal. Now, it is important to note, that the Consultation Paper does state:
Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.
It appears that, in addition to protecting any EU GIs ultimately agreed, what the Government is now considering would put in place a mechanism for registration of new or additional GIs as well.
The Consultation Paper itself sets out 11 questions on which comments are particularly sought:
Registering a GI
Q.1 What types of goods should be eligible for protection as a GI?
Q.2 Should GIs filed under a new system cover a single good or multiple goods?
Q.3 Are there particular safeguards that should be considered for a new GI right?
Q.4 Under what circumstances should two rights, for example a new GI and an earlier trade mark, be able to co-exist?
Q.5 What level of detail should be required for any conditions of use, such as production methods, boundaries and what it means for a product to come from the region?
Standard of protection vQ.6 Should a new GI right extend the international standard of protection for wines and spirits to all goods? Are there other practices that should be prevented?
Using a GI right
Q.7 Who should be able to apply for a GI in Australia?
Q.8 Should those who meet the requirements of a GI be able to use the GI automatically, or should they need approval from the GI right holder?
Enforcing GIs
Q.9 Should any user be able to enforce a GI or should it be limited to the GI right holder?
Q.10 Should criminal enforcement be available for GIs registered in Australia?
Costs and Benefits
Q.11 What would be the costs and benefits to Australian industry, producers, and consumers of creating a new GI right?
Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.
The Consultation Paper mentions that a common thread in submissions from the earlier round was the need to ensure that GIs could not be used to stop the continued use of food names already in common use. It envisages that there would be an opportunity to oppose registration on the basis that the term is a common or generic name for “a plant variety or animal breed” in Australia.
It’s not clear if the grounds of opposition would be limited to common or generic terms which are names of a plant variety or animal breed, or they are just examples of what might be common or generic terms.[3] (It should be noted that the wine producers who were using “champagne”, “burgundy”, “claret” and the like didn’t get to oppose those GIs.)
Moreover, p. 2 of the Consultation Paper does note that in the previous round of consultations people could object to the EU’s proposed lists of further GIs but, if Australia agrees to protect any of them as part of the FTA, they will not go through the application and opposition process. They will go straight on to the Register.
But remember:
Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.
On the subject of the Register, the Consultation Paper envisages that there would be a new Register created through amendment of the Trade Marks Act 1995. Hopefully, that would bring in all the currently protected GIs as well. Hopefully, it would also be more integrated and searchable than the current hotch potch.
On the more positive side, the Consultation Paper does say (p.3) that protection would not extend to a term like “camembert” alone if the GI registered was “Camembert de Normandie”.
On the other hand, the EU is seeking protection against uses which “evoke” a registered GI. On p. 5, the Consultation Paper notes that:
in the EU a producer has been prevented from selling whisky labelled ‘Glen Buchenbach’ because ‘glen’ (meaning ‘valley’) is a term used in Scotland and was found to evoke the GI ‘Scotch Whisky’. As another example, cheese sold in packaging with images of windmills and sheep was found to evoke the Spanish GI ‘Queso Manchgeo’[4] because those images are typical of the region in Spain where the GI is produced.
Maybe camembert is made in other parts of France than Normandy? What happens if that were to change and only the Normandy producers could use camembert “over there”? How would you test whether (presumably) Australian consumers would associate windmills and sheep with Don Quixote country? Don’t the Dutch have sheep? Would it matter what kind of windmill? Would the test be what Australian consumers would understand?
According to the Consultation Paper, consultations are open until 30 November 2020. In addition, there:
is GI Survey (you may have to agree to the privacy policy etc. before you get in);
will be a Webinar – outline of GI consultation on 30 September at 12 noon to 1pm
will be a Virtual Roundtable – Standard of protection on 13 October at 12 noon to 1pm
will be Virtual Roundtable – Australian use of GIs on 15 October at 12 noon to 1pm
will be Virtual Roundtable – General operation of a possible GI system on 20 October at 12 noon to 1pm
will be Virtual Roundtable – GIs and Indigenous Knowledge on 22 October at 12 noon to 1pm
Links and more information about these via this page.
So, while:
Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.
we can hardly claim we are not being properly consulted.
We are also not supposed to use “traditional expressions” on our wines. These matters are currently regulated under the Wine Australia Act 2013. There is a rudimentary overview with links to the Register of protected expressions here. ?
The Consultation Paper defines a “geographical indication” as “a name that identifies a product as originating in a country, region or locality where a particular quality, reputation or other characteristic of the product is essentially attributable to that geographic origin.” The definition in s 4 of the Wine Australia Act is in much the same terms, but limited to “wine goods”. ?
Although it is headed “Commercial in confidence”, a Google search on “yarra valley fetta” turned up this impassioned defence of “fetta” / “feta” as a common or generic term (but not, I think a plant variety or breed of animal). ?
I suspect that is Manchego. But it looks like Coles would be safe. ?
Two all beef patties, special sauce, lettuce, cheese, pickles, onions on a sesame seed bun – it’s a …
As you have no doubt heard, late last month McDonald’s Asia Pacific sued Hungry Jacks following the launch in July of the “Big Jack”.[1]
Michaela Whitbourn at the Channel 9 paper has a clean slide over comparison or you can get messy fingers here (your choice whether you skip the ads or not).
Mr Too Aussie’s video suggests the Big Jack is a special or limited time offer. However, Hungry Jack’s did file for and has obtained registration for “Big Jack” as a trade mark, No 2050899, for hamburgers etc. in classes 29 and 30, way back in November 2019. And Ben Butler at The Guardian reports McDonalds is also seeking revocation of that registration on the grounds the application was made in bad faith.[2]
Someone’s suing Hungry Jack’s. They reckon Aussies are confusing the Big Jack with some American burger. But the Big Jack is clearly bigger ….
Hmmm. Earlier this year, Katzman J, in another case about burgers, explained:
What is the line between inspiration and appropriation? That is the question at the heart of the dispute in the present case.
That case didn’t turn out so well for the emulators.
As you will appreciate, McDonald’s have to get TM No. 2050899 cancelled in light of s 122(1)(e). Presumably, in addition to the “bad faith” allegation, McDonald’s is also asserting s 44 and s 60.
These provisions, like s 120, raise the question whether Big Jack is substantially identical with, or deceptively similar to, Big Mac.
You might think, even on the expanded and controversial test for “substantial identity” declared in Pham Global, the side by side comparison doesn’t work out in McDonald’s favour. Mac and Jack look and sound different and, you might think, convey rather different ideas.
What about deceptive similarity tested on the basis of imperfect recollection?
There couldn’t be too many Australians, especially of the fast food consuming public, who wouldn’t appreciate that Big Jack is gunning for Big Mac. But, is there a real and appreciable risk that a significant number of them would be caused at least to wonder whether there was some association with McDonald’s?[3]
Also, you would have to think, all those ordinary Australians would know you can only get a Big Mac in a McDonald’s outlet.
You would probably have to think they pretty much know Hungry Jack’s is a direct competitor, which makes a point of being critical of McDonald’s.[4]
Similarly, pretty much all those ordinary Australians winding up in a Hungry Jack’s take away could hardly be under any illusions that they were in Big Mac land?
Now, at 50(iii), French J did wholly orthodoxly say:
In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
Does being in the shop count? Or is that violating the rule that you compare only the allegedly infringing trade mark to the registered trade mark?
What about billboards and the like? No shop context, probably a Hungry Jack’s logo – maybe not.
Also, you might think that “Big Mac” gets into the Woolworths territory of a household name and there could have lots of fun re-running the fight between Woolworths and Henschke.[5]
What do you think?
Would things be any different if we had an anti-dilution law?
Maybe, at 50c to almost $1 more, the Big Jack will turn out to be a commercial flop and Hungry Jack’s will give up. I guess we’ll have to wait and see.
And, by way of fig leaf, Hungry Jack’s also introduced a “Mega Jack”. NSD967/2020 – First case management hearing before Justice Burley on 2 October. ?
Shades of “merit” and “nerit”, but note the interesting approach in OHIM rejecting Banksy’s – or those representing him – attempt to “trade mark” one of his, er, graffiti. ?
It’s not exactly front page news, but over at news.com.au they have a short video explaining the battle between Kraft and Bega over who can market peanut butter in that yellow get-up. This follows news that Kraft has applied for special leave to appeal the dismissal of its complaint.
A Current Affair also has a go with a lot more flag waving and some gruesome finger dipping.
If you’re looking for the more formal legal analysis, the Full court decision is here.
So far, the moral of the story is that an unregistered trade mark is not property in its own right. Such a “thing” can be assigned only as part of the transfer of the goodwill of a business as a going concern. If you are going to sell your business, or its assets, but you don’t want to the purchaser to use an unregistered name, or get-up, after the sale, you will need to impose appropriate contractual restraints.
