… 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. MEC lost the opposition before the Registrar and appealed. 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 claimed reputation variously in:
(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:
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):
At , 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 :
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  – :
 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.
 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.
 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  and . 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 , 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 , 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.
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?
Monster Energy Company v Mixi Inc  FCA 1398