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[2019] FCA 923
Federal Court of Australia
2019-06-21
O'Bryan J
Original judgment source is linked above.
2 Registration of the RJR marks was opposed by the respondent, Monster Energy Company (MEC). MEC is a supplier of energy drinks. Since 2002, MEC has promoted and sold its energy drinks and associated products throughout the world under several trade marks, represented below, including in Australia since 2009. On 24 April 2018, a delegate of the Registrar refused registration of the RJR marks pursuant to s 60 of the Act: Monster Energy Co v Rodney Jane Racing Pty Ltd [2018] ATMO 57. The delegate concluded that MEC had made out the ground of opposition in s 60 of the Act in respect of several of its trade marks. 3 By notice of appeal filed 14 May 2018, RJR appeals against the decision of the delegate under s 56 of the Act, joining MEC as respondent to the appeal. The appeal involves a hearing de novo: Registrar of Trade Marks v Woolworths Limited (1999) 93 FCR 365 at [32] (Woolworths). The onus is borne by the opponent to registration: Woolworths at [45]. The standard of proof is the balance of probabilities: Telstra Corporation Limited v Phone Directories Co Australia Ltd (2015) 237 FCR 388 at [133]. It is common ground between the parties that the date on which the grounds of opposition must be established is the filing date of the application for registration (27 January 2015), which I will refer to as the priority date: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (Southern Cross); Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 (Pham Global). 4 MEC maintains its opposition to registration of the RJR marks. It relies on the ground of opposition found by the delegate of the Registrar, s 60, as well as the further grounds stated in its amended notice of contention dated 31 January 2019 being ss 42(b), 58 and 59 of the Act. MEC did not press ground 2 of its amended notice of contention. 5 In respect of its opposition under ss 42(b) and 60 of the Act, MEC relies on its reputation in each of the following trade marks owned by it (MEC marks): (a) the word marks "Monster" and "Monster Energy"; and (b) device marks which incorporate a device that is referred to as the "M-icon" (and which resembles a claw mark or scraping that might be made by a figurative monster) either on its own or in conjunction with a stylised depiction of the words "Monster Energy" (using script for the word "Monster" that is suggestive of Gothic script) as shown below: 6 In respect of s 60 of the Act, MEC contends that, before the priority date for the registration of the RJR marks, the MEC marks had acquired a reputation in Australia and, because of that reputation, the use of the RJR marks on alloy wheels for motor vehicles would be likely to deceive or cause confusion. Relying on s 57 of the Act, MEC also opposes registration of the RJR marks on the basis stated in s 42(b) of the Act: that the use of the RJR marks would be contrary to law. In that respect, MEC contends that the use of the RJR marks on alloy wheels for motor vehicles would be likely to mislead or deceive consumers in contravention of ss 18 and/or 29 of the Australian Consumer Law by reason of: (a) the reputation of MEC in Australia as at the priority date in the MEC marks; and (b) the similarity between the RJR marks and the MEC marks. 7 In closing submissions, Senior Counsel for MEC acknowledged that if the Court found against it under s 60, it would follow that the Court would find against it under s 42(b) of the Act. As the evidence relied upon in respect of ss 60 and 42(b) is the same, it is convenient to address both sections together. 8 In respect of s 58, MEC contends that RJR did not have a valid claim to ownership of the RJR marks as at the priority date. In respect of s 59, MEC contends that RJR did not have the requisite intention to use the RJR marks as at the priority date. Under both sections, MEC argues that another company closely associated with RJR (through common shareholdings and directors), Bob Jane Corporation Pty Ltd (Bob Jane Corporation), was the owner of the RJR marks and had the requisite intention to use the marks as at the priority date. The evidence relied upon in respect of ss 58 and 59 is the same, and it is also convenient to address both of those sections together. 9 For the reasons that follow, the grounds of opposition are not made out. It is convenient to address the ownership and intended use issues (ss 58 and 59) before addressing the likely to deceive or cause confusion issues (ss 60 and 42(b)).
2.1 Overview 10 On these issues, the dispute between the parties is whether RJR or Bob Jane Corporation is to be regarded as the owner of the RJR marks as at the priority date for the purposes of s 58 of the Act, and a corresponding issue as to which of those companies had the intention to use the RJR marks as at that date for the purposes of s 59 of the Act. The dispute arises out of the circumstances in which the RJR marks were created and first used and the corporate and commercial relationship between RJR and Bob Jane Corporation, including particularly the dual positions held by Rodney Jane as the sole director of RJR and as a director and CEO of Bob Jane Corporation. 11 RJR contends that, as at the priority date, it was the owner of the RJR marks because it (through Mr Jane) authored the marks and controlled the first use of the marks as trade marks in respect of alloy wheels by Bob Jane Corporation. RJR argues that all relevant conduct undertaken by Mr Jane was undertaken by him in his capacity as the sole director of RJR and not in his capacity as a director and CEO of Bob Jane Corporation. RJR says that it was always its intention to license Bob Jane Corporation to use the RJR marks under the control of RJR. 12 MEC contends that, as at the priority date, Bob Jane Corporation was the owner of the RJR marks because it authored the marks and had been using the marks since about May 2013. MEC says that, despite Mr Jane's testimony to the contrary, the documentary record shows that all relevant steps taken in the creation and use of the RJR marks before the priority date were taken by or on behalf of Bob Jane Corporation. 13 To resolve the dispute, it is necessary to have close regard to the evidence concerning the creation and first use of the RJR marks. Before turning to that evidence, it is helpful to refer to the applicable legal principles (about which there was no dispute between the parties).
2.2 Legal principles 14 Section 58 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. The word "owner" is not defined in the Act. Its meaning has been established by a number of decisions, reflecting both the common law origins of trade mark rights and the statutory provisions. Most relevant for present purposes are the decisions of the Full Court of the Federal Court in Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 (Food Channel) and Pham Global. Those decisions establish the following principles: (a) While at common law, rights in a trade mark are established by use, the Act allows an applicant to obtain title to a trade mark prior to use so long as the requirements in s 27 of the Act are met. Those requirements are that the applicant claims to be the owner of the trade mark and the applicant is either using or intends to use (or authorises or intends to authorise another to use) the mark in relation to the goods or services concerned: Food Channel at [49]; Pham Global at [18]. (b) In respect of a mark that has not been used prior to the application for registration, the basis of a claim to ownership has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the application for registration: Food Channel at [52] citing Shell Company of Australia Ltd v Rohm and Haas Company (1949) 78 CLR 601 at 627 per Dixon J; Pham Global at [18] and [19]. (c) In respect of a mark that has been used prior to the application for registration, ownership is established by authorship of the mark and prior use: Food Channel at [55]; Pham Global at [19]. (d) An intention to use the trade mark may be inferred from the making of an application to register the mark: Food Channel at [67], [70] and [72]. (e) The question of ownership is to be determined as at the date of application for registration: Pham Global at [14], [31]. (f) The ground of opposition in s 58 is not confined to a party itself claiming ownership of the trade mark. The ground can be established by any third party showing that the applicant is not the owner: Food Channel at [58]. However, the court should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the other: Food Channel at [61]. (g) The burden of proof to establish the ground of opposition under s 58 is on the opponent. If the evidence is not sufficiently clear to enable a finding of fact to be made about ownership of the mark at the time of registration, the opponent will fail on that ground of opposition: Food Channel at [48]. 15 Authorship of a trade mark involves the origination or first adoption of the word or design as and for a trade mark: Shell Company of Australia Ltd v Rohm and Haas Company (1949) 78 CLR 601 at 628 per Dixon J; applied in Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 399 per Fullagar J. 16 In E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144, French CJ, Gummow, Crennan and Bell JJ approved (at [43]) the statement by the Full Court of the Federal Court in Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [19] (Coca-Cola) that: "Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of "trade mark" in s 17 - a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else." 17 As observed by their Honours (at [42]), the essential characteristics of a trade mark are distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner. A use of a mark in an advertisement of goods is a use in the course of trade and is a use in relation to the goods advertised: Shell Company of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 422 per Dixon J; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 433-434 per Deane J (Gibbs CJ and Mason, Wilson and Dawson JJ agreeing). 18 Ownership based on first use of a trade mark can be established through use by an authorised user. Section 7(3) of the Act provides that: "An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark". 19 The expressions "authorised user" and "authorised use" are defined in s 8 of the Act in the following terms: (1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark. (2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark. (3) If the owner of a trade mark exercises quality control over goods or services: (a) dealt with or provided in the course of trade by another person; and (b) in relation to which the trade mark is used; the other person is taken, for the purposes of sub-section (1), to use the trade mark in relation to the goods or services under the control of the owner. (4) If: (a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and (b) the owner of the trade mark exercises financial control over the other person's relevant trading activity; and the other person is taken, for the purposes of sub-section (1), to use the trade mark in relation to the goods or services under the control of the owner. (5) Sub-sections (3) and (4) do not limit the meaning of the expression under the control of in sub-sections (1) and (2). 20 Sections 8(2) and (3) are deeming provisions that identify a number of situations in which a person will be taken to use a registered mark under the control of the owner: Dunlop Aircraft Tyres Ltd v Goodyear Tire & Rubber Company (2018) 134 IPR 220 at [75] per Nicholas J (Dunlop). However, by virtue of s 8(5), ss 8(3) and 8(4) are not exhaustive of what may constitute control for the purpose of s 8(1) and (2): Caesarstone Ltd v Ceramiche Caesar SpA (No 2) (2018) 133 IPR 417 at [592] per Robertson J (Caesarstone). 21 Control must be exercised by a putative trade mark owner over the activities of the trade mark user such that the essential function of the trade mark, set out in s 17, is maintained. In Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670, Kitto J stated that (at 683): …the essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connexion in the course of trade with the registered proprietor, even though the connexion may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non-user, but it is essential both that the user maintains the connexion of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. 22 Control under s 8 of the Act means actual control in relation to the use of the trade mark, which involves questions of fact and degree. There must be control as a matter of substance. The mere fact that the registered owner granted a licence to use the trade mark is not sufficient to establish control within s 8: Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 at [97] per Besanko J (Allsop CJ, Greenwood and Nicholas JJ agreeing) (Lodestar). His Honour also observed: [95] The meaning of "under the control of" in s 8 is informed by the principle stated by Aickin J in Pioneer, that is to say, that the trade mark must indicate a connection in the course of trade with the registered owner. The connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. It is the connection which may be slight. Aickin J was not saying the selection or quality control or financial control which may be slight. … [98] As I have said, actual control will be a question of fact and degree. A licence agreement may contain a term that sets out in detail a quality standard to be achieved. The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time. The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. 23 Control for the purposes of s 8 may be established by many factors. As set out above, s 8(3) stipulates that exercising quality control over the relevant goods or services establishes control; and s 8(4) stipulates that exercising financial control over the trading activities of the user establishes control. In Caesarstone, Robertson J observed that it was sufficient that the registered owner was responsible for the manufacture of the goods (Caesarstone slabs) and gave instructions to the user as to how the goods should be transported to ensure their quality (at [595]); in that manner, the registered owner provided sufficient control over the wholesaling and retailing of the goods (at [597]). In that case, the control went further and included many obligations as to the promotion, fabrication and installation of the goods (described at [598] and [599]). In Dunlop, Nicholas J found that control was established by virtue of the financial and managerial control that the parent company (being the registered owner) exercised over its Australian subsidiary (being the relevant trade mark user) (at [85]-[88]). 24 In contrast, a licence agreement without more may be insufficient to establish control, at least where it has no effect on the way in which the user conducts its business: Lodestar at [97] and [103]. Similarly, a commonality of directors does not, without more, establish control, in circumstances where the registered owner is a subsidiary of the relevant trade mark user: Trident Seafoods Corp v Trident Foods Pty Ltd (2018) 137 IPR 65 at [100] per Gleeson J.
2.3 Factual history 25 The evidence concerning RJR and the history of the creation and use of the RJR marks was primarily given by Mr Jane. 26 Mr Jane is the son of Bob Jane who founded the business which trades as "Bob Jane T-Marts". The business began in around 1965 with a single automotive tyre store in Melbourne. In 1972, the first Bob Jane T-Marts franchise was granted to a franchisee in New South Wales. In the 1970s and 1980s the business grew, with outlets being established in Brisbane, Sydney and the Australian Capital Territory and elsewhere. The business is now one of Australia's leading automotive tyre and wheel retailers. It is comprised of company owned stores operated by Bob Jane Corporation and franchised stores operated by third parties under licence from Bob Jane Corporation. Bob Jane T-Marts stores are located in every capital city and major regional area throughout Australia and, as at January 2015, there were approximately 135 stores in Australia (of which approximately 45 were company owned stores and the balance were franchise stores). At all relevant times, all of the shares in Bob Jane Corporation have been held by Bob Jane Holdings Pty Ltd and all of the shares in that company have been held by Mr Jane's mother, Geraldine Jane. Mr Jane has been a director of Bob Jane Corporation since 2000, and is one of two directors today, the other being Alex Ying-Lee Chung. Mr Jane has also been the Chief Executive Officer of Bob Jane Corporation since 2002 and, in that capacity, has responsibility for the management of Bob Jane Corporation and the Bob Jane T-Marts business. 27 RJR was incorporated in 2002. Mr Jane is the sole director of the company and responsible for all aspects of its business. RJR has no employees. Since 2006, RJR has been owned by Mr Jane's mother, Geraldine Jane. Following its incorporation, the principal activity of RJR was the development and promotion of the Rodney Jane Racing motorsport brand including the brand name "RJR Wheels", which has been used in relation to wheels on performance vehicles. 28 On 22 June 2009, RJR and Bob Jane Corporation entered into a licence agreement (2009 Agreement) by which RJR granted Bob Jane Corporation an exclusive licence to use the "RJR Wheels" brand and Bob Jane Corporation agreed to promote that brand as its principal brand of wheels across all Bob Jane T-Marts stores. The 2009 Agreement was executed by Mr Jane on behalf of RJR and by Alex Chung (the other director of Bob Jane Corporation) and Mr Jane on behalf of Bob Jane Corporation. Mr Jane gave evidence that, thereafter, a range of brands and logos were developed for RJR to use to market various models of wheels. The development of wheel designs became a "pet project" for Mr Jane and he kept this work within RJR, being the company bearing his name, rather than Bob Jane Corporation. 29 Mr Jane gave evidence that he began giving serious consideration to the idea of developing a range of "Monster" branded wheels in about early 2010. Mr Jane explained that his interest in "Monster" as a brand name emanated from an interest he had with Monster Trucks when he was younger. In particular, he recalled that, in about 1987, Bob Jane Corporation modified a Holden Rodeo pick-up to create the Bob Jane Monster Truck which was used in events and for promotional purposes. Monster Truck events have been held at Calder Park Raceway, of which Mr Jane is a director. Mr Jane recalled attending a Monster Truck event at Calder Park Raceway in early 2010 at which the crowd was estimated to be in the tens of thousands. Mr Jane gave evidence that: For me, the word "Monster" in an automotive context always conjured up images in my mind of Monster Trucks and what they represent - big, strong, car-crushing vehicles with oversized tyres and wheels. About a decade ago, I became aware of the growing market in Australia for pick-up style utes, 4WDs and off-road vehicles …. I considered that the owners of such vehicles would be attracted to alloy wheels and chunky tyres that enhanced the appearance of their vehicles and matched the image of their vehicles. 30 When cross-examined, Mr Jane explained his conception of "Monster" as a brand in the following terms: I had grown up around monster trucks. We had, you know, a Holden Rodeo monster truck with a 455 Oldsmobile motor in it that I used to drive... …we used to have monster shows at - monster truck shows out at Calder. The orientation of the brand "Monster", you know, for me growing up, you know, every kid thought a monster truck was the coolest thing they had ever seen… …I had an F250 when my son, Max, was born, that we used to tow a race car around with, and ultimately I kept driving after that. You know, he used to call it a monster truck…he was obsessed with two things - monster trucks and football. And, you know, I think that really reignited my interest in this - this concept of pickup trucks with, you know, monster, and you know, the fact that the the emerging vehicle at the time was a, you know, was a Hilux. It was becoming the biggest selling car in Australia, and at the same time there was a massive decline in Commodore and Falcon, you know, coming at us, which was our biggest wheel market. So you know, it worked perfectly, Monster as a brand, to fit that market, as - as a monster truck, you know. 31 In February 2011, RJR lodged a trade mark application in class 12 for the word "Monster". The application did not pass examination and lapsed in September 2012. Notwithstanding the lapse of that application, Mr Jane remained interested in the brand name "Monster" for a new range of tyres and wheels to appeal to the 4WD and off-road vehicle market. Mr Jane considered that the word "Monster" complemented the image he had already developed in relation to the Rodney Jane Racing wheels but directed more towards pick-up style vehicles. 32 In about March 2013, Mr Jane requested the assistance of Zsuzsanna Zalatnai in developing logos to be used in conjunction with the "Monster" brand on a range of alloy wheels. At all times since February 2013, Ms Zalatnai has been the National Marketing Manager for Bob Jane T-Marts. She was initially employed by Bob Jane Corporation; however, on a date she could not recall, Ms Zalatnai became an employee of Advertising Development Services Pty Ltd (while continuing to perform the role of National Marketing Manager for Bob Jane T-Marts). Mr Jane gave evidence that he is "the shareholder" of Advertising Development Services Pty Ltd but not a director and that Advertising Development Services Pty Ltd provides marketing services to the Bob Jane T-Marts business. Mr Jane requested Ms Zalatnai to have someone draw up some possible logos for the "Monster" brand. Mr Jane instructed Ms Zalatnai that a prominent colour used in the "Monster" brand should be red and that the logo should conjure up a visual suggestion of a monster with eyes and a mouth. 33 Ms Zalatnai gave evidence that she engaged a graphic designer, Drafthouse Creative Studio, and that they sketched out four draft logos which they provided to Ms Zalatnai in early April 2013. Their work was billed to Strohfeldt Consulting, which was the advertising agent for the Bob Jane T-Marts business. Strohfeldt Consulting managed the designers ordinarily engaged by the Bob Jane T-Marts business and Drafthouse Creative Studio was one of those designers. 34 Mr Jane gave evidence that, in early April, Ms Zalatnai provided him with some draft logo designs. There is no documentary record of that but, on 9 April 2013, Ms Zalatnai sent an email to Mr Jane which appears to assume an earlier communication. The email was sent to the address rjane@bobjane.com.au and attached four designs for the "Monster" logo. The email had the subject line "Feedback please - Monster logo" and stated (in part): Hi Rodney, Sorry to hassle you with this, but I am just cautious of the deadline for the logo. We would really need some feedback/direction from you. (My understanding is that we need to finalise this by Friday) 35 Mr Jane replied by email later that day in the following terms (errors in the original): HI Zsuzsa Sorry for delay I like 4 the most and kids think iys the best also. I would consider in the cap logo adding some Red maybe the symbol and use a black background with silver monster and Bob Jane writting. Thanks Rod 36 The logo selected by Mr Jane became the marks the subject of this proceeding. Having selected the logo, Mr Jane requested Ms Zalatnai to have three dimensional mocks-ups of alloy wheels with the logo on the hubcap created for his review. On 15 April 2013, Strohfeldt Consulting issued an invoice in an amount of $1,980 for "Monster wheels logo. Four concepts developed plus selected concept mock up for wheel example centre cap". The invoice was addressed to "Advertising Development Services Pty Ltd | Bob Jane T-Marts". Pictures of the three dimensional mock-ups of alloy wheels with the logo on the hubcap were attached to the invoice. 37 Mr Jane gave evidence that, in the period March to May 2013, he had various discussions with Dean Hockley, who was then the National Sales Development Manager for Bob Jane T-Marts, and Phil Weir, who was the International Sales and Marketing Manager for Mullins Wheels Pty Ltd (Mullins Wheels), regarding the production and sale of wheels bearing the RJR marks. Mullins Wheels distribute alloy wheels in Australia. Mr Jane had known and dealt with Mr Weir and Mullins Wheels since the late 1990s. The effect of Mr Jane's evidence was that, in these discussions, he was seeking to develop and have produced a "Monster" wheel style for RJR, he wanted the wheel to be produced by Mullins Wheels and he wanted the wheel to be marketed and sold exclusively through Bob Jane T-Marts stores. Hence it was necessary for Mr Jane, Mr Weir and Mr Hockley to meet and discuss the commercial arrangements. Mr Jane stated that his discussions with Mr Weir concerned the appearance of the wheel (which was to be an aggressive, black, four wheel drive wheel for utes) and the characteristics of the wheel (load ratings, diameter and width). Mr Jane was confident that Mullins Wheels would produce a wheel that complied with all Australian standards and legal requirements and was safe and would not fail because he had dealt with Mullins Wheels for a long time. Correspondingly, the discussions involving Mr Hockley concerned the number of wheels that Mr Hockley believed could be sold through Bob Jane T-Marts, which dictated minimum manufacturing quantities and the production cost, which in turn affected the commercial viability of the product. Mr Jane selected a wheel offered by Mullins Wheels called the "Jackal". 38 On 10 April 2013, Mr Hockley sent an email to Mr Jane with respect to a proposed program for the ordering, production and supply of "Monster" wheels by Mullins Wheels to Bob Jane T-Marts stores. Although the email commences with the sentence "Hello Rod and I have attached the proposed pricing schedule for the new Monster Wheels 'Black-Jack' program", it is apparent that Mr Jane was the intended recipient of the email (the word "and" being a typographical error). The email contains proposed details for the commercial arrangements for the production of the "Monster" wheels including pre-ordering, lead times, delivery, management of inventory and pricing, and concludes with a request for Mr Jane's approval as follows (error in original): Rod I do believe that this is a good opportunity for BJC and the stores and if you are happy with the pricing matrix and the overall program we can commence the pre-sell to gauge store commitment to the program as Mullins will need to see that 600 unit initial commitment from stores to get the program rolling. Can discuss when your available. 39 On 15 April 2013, Mr Weir sent an email to Mr Hockley titled "Bob Jane Black Jackal" asking, amongst other things, whether Mr Hockley had obtained the "decal sign off for the black (sic) Jackal". 40 On 29 April 2013, Mr Hockley sent an email to John Kulikowski who worked in telesales for Bob Jane Corporation. The email was a copy of the email that Mr Hockley had sent to Mr Jane on 10 April 2013. 41 On 1 May 2013, Mr Hockley sent an email to Mr Jane, at his email address rjane@bobjane.com.au, and copied to Mr Kulikowski, containing a draft email proposed to be sent to Bob Jane T-Marts stores to announce and promote the "Monster" wheels and to seek pre-orders from the stores. The email had the title "Monster Wheels Program" and commenced as follows (error in original): Hello Rod and below is the draft email for the stores on the Monster Wheel Program. Can you please review as I would like to send this out today to get the pre-orders rolling. The artwork has been sent to the factory to get the decal underway and they will send a sample for sign off as soon as it is completed. 42 The draft email to Bob Jane T-Marts stores followed that opening paragraph, and commenced as follows (errors in original): Hello T-Marts, I am very excited to release the new Monster Wheels brand to the RJR stable. This new brand will be targeted at the 4x and SUV market. The 1st style to be introduced into the Monster Wheels range is the "Black-Jack". The "Black-Jack" will be supplied by Mullins wheels as an exclusive product for Bob Jane T-Marts. Size and pricing details are on the attached. The wheels will be warehoused and distributed by Mullins Wheels. 43 Mr Jane gave evidence that he amended the draft email to Bob Jane T-Marts stores because he did not consider that Mr Hockley "had described well enough what Monster was really standing for" and Mr Jane wanted to "make a statement to the stores of the market we were chasing with this product". Mr Jane stated that the market he wanted to chase was the "ute and 4x4 market…with an aggressive wheel which typically comes with an aggressive tyre" and that the "Rodney Jane Racing concept of Monster was to go and chase that market". After Mr Jane had amended the draft email, the email was then sent by Mr Hockley to Bob Jane T-Marts stores on 2 May 2013 in the form approved by Mr Jane. The email commenced as follows (errors in original): Hello T-Marts, We are very excited to release the new Monster Wheels brand to the RJR stable. This new brand will be targeted at the 4x4 and SUV market. The lst style to be introduced into the Monster Wheels range is the "Black-Jack". The "Black-Jack" will be supplied by Mullins wheels as an exclusive product for Bob Jane T-Marts. This is a trial program and will require everyone's support to ensure its success, the ongoing exclusivity is dependent upon continued volume. The 4x4 / SUV segment continues to grow and some of our competitors are very strong within this arena. The new "Black-Jack" covers a large range of vehicles and todays best sellers. Such as Toyota Hi-Lux, FJ Cruiser, Mitsubishi Triton & Holden Colorado just to name a few. In the 16x8 we have the 45 offset to suit new Few Ford Ranger and Mazda BT50. This fitment is currently being developed in 17x8 also and we expect to have this ready for July production. This market segment represent a great opportunity as the demand to dress up these vehicles is strong, dealer work is also great as they looking for that point of difference to attract both tradies and 4x4 enthusiasts alike. Size and pricing details are below and also attached. The range has been priced aggressively with the "Black Jack" being $30 to $40 per wheel cheaper than the YHI Crawler. The wheels will be warehoused and distributed by Mullins Wheels. 44 Mr Jane gave evidence that he approved the email "from the Rodney Jane Racing perspective" to ensure that it represented what Mr Jane was trying to do from an RJR point of view. Mr Jane also said that he is not ordinarily involved in approving product announcements relating to Bob Jane Corporation products. The implication of his evidence was that he was involved in the product announcement relating to the "Monster" wheels because they were an RJR product. 45 On 22 May 2013, RJR filed trade mark application numbers 1558366, 1558367 and 1558368. Those applications were identical to the marks the subject of this proceeding, save that the applications sought to register the marks in classes 12, 35, 37 and 41. 46 On 17 June 2013, Mr Weir of Mullins Wheels sent an email to Mr Kulikowski stating that Mullins Wheels required a letter from Bob Jane Corporation authorising it to commence production of wheels bearing the RJR marks. Mr Jane gave evidence that that authorisation was not given until RJR had licensed the use of the marks to Bob Jane Corporation. That occurred two days later. 47 On 19 June 2013, RJR and Bob Jane Corporation entered into a further licence agreement (2013 Agreement) pursuant to which RJR granted Bob Jane Corporation a non-exclusive, non-assignable, worldwide licence to use various trade marks listed in Schedule 1 to the agreement (which included the RJR marks) in respect of the promotion and sale of goods and services for which the marks were registered or sought to be registered. The recitals to the 2013 Agreement recorded that RJR was the owner of all of those trade marks. Bob Jane Corporation agreed to pay RJR licence fees for its use of the RJR marks and provided RJR with the right to exercise quality control over Bob Jane Corporation's use of the marks. In respect of quality control, cl 5.1 stipulated that: BJC will use its best endeavours to protect the integrity of the RJR brand and ensure the highest quality of manufacture promotion and display of any goods or services sold or promoted under the RJR Marks pursuant to this Agreement. BJC shall also use its best efforts to ensure that goods and services sold or promoted by BJC under the RJR Marks shall comply with all applicable laws and standards. 48 Clause 5.6 stipulated that: RJR shall have the right to exercise quality control over BJC's use of the RJR Marks to a degree reasonably necessary to maintain validity of the RJR Marks and to protect the goodwill associated therewith. BJC shall use the RJR Marks only on or in connection with goods and services that conform to the specifications and standards of quality which RJR prescribes, and will not deviate materially from such standards without prior written approval from RJR. In order to verify compliance, RJR may from time to lime require BJC to submit samples and other marketing or promotional items bearing the RJR Marks for approval. 49 Also on 19 June 2013, and according to Mr Jane after the 2013 Agreement had been executed, Mr Chung (a director of Bob Jane Corporation) sent a letter to Mullins Wheels formally authorising it to arrange production of up to 2,500 alloy wheels bearing the RJR marks. 50 There was no evidence that RJR had ever prescribed specifications or standards for the wheels on which the RJR marks were to be used in writing, as contemplated by cl 5.6 of the 2013 Agreement. However, Mr Jane gave evidence that he selected Mullins Wheels as the producer of the Monster wheels because he had dealt with them for a long time and Mr Jane believed that Mullins Wheels were very familiar with the requirements for wheels to suit vehicles in Australia, from a safety and quality perspective. Mr Jane also gave the following evidence with respect to his supervision of the quality of the "Monster" wheels, in his dual capacities as a director of RJR and the CEO of Bob Jane Corporation: (a) Mr Jane conducted personal inspections to check the quality of "Monster" wheels that were being supplied, as part of his regular visits to Bob Jane T-Marts stores. (b) At various times since June 2013, Mr Hockley consulted Mr Jane in relation to various wheel designs, including in relation to designs featuring the possible use of the RJR marks. Before Mr Hockley could order any new "Monster" wheel model from Mullins Wheels, he was required to consult with Mr Jane and obtain his approval. (c) In about 2016, PDW Group replaced Mullins Wheels as the preferred manufacturer of "Monster" wheels. During that process, Mr Jane attended and participated in meetings with the PDW Group to satisfy himself that they were capable of producing alloy wheels of a sufficiently high quality for sale under the RJR marks. (d) Mr Jane continued to review sample wheel designs from time to time to determine which styles would be future models to be sold in the Bob Jane T-Marts system as "Monster" wheels. 51 Pursuant to the Franchising Code of Conduct, Bob Jane Corporation is required to update its Disclosure Document for franchisees and potential franchisees each year. The 2015 Disclosure Document lists the three RJR marks on the list of trade marks used in the Bob Jane T-Marts business and records that the marks are owned by RJR. 52 Bob Jane Corporation paid RJR licence fees, in accordance with the 2013 Agreement, in return for RJR granting it permission to use the RJR marks. For the period from August 2013 to January 2015, the licence fees paid by Bob Jane Corporation to RJR totalled $4,918.55. 53 In August 2013, the trade mark applications that had been filed in May 2013 met with adverse reports, primarily due to the existence of the word mark 701401 "Monster" in class 12 owned by Ducati Motor Holding SpA. The adverse reports were not answered by their deadline of 23 October 2014 and Mr Jane decided to allow those applications to lapse, and then instructed his solicitors to file fresh applications. Applications for the marks the subject of this proceeding were then filed on 27 January 2015 in the name of RJR. Those applications were only filed in class 12 and were in relation to alloy wheels for automobiles excluding motorbikes. On 10 February 2015, RJR and Bob Jane Corporation signed an "Addendum" to the 2013 Agreement that substituted the 2015 trade mark application numbers for the original 2013 trade mark application numbers.
2.4 Disposition of the section 58 issue - RJR is the owner of the RJR marks 54 As at the priority date, there had been prior use of the RJR marks by Bob Jane Corporation. The parties are agreed that the first use of the RJR marks occurred through the email sent by Mr Hockley to Bob Jane T-Marts on 2 May 2013. There was then further use of the RJR marks before the priority date through the promotion and sale of alloy wheels bearing the marks. In those circumstances, ownership is established by the authorship of the RJR marks and the prior use. The relevant questions are: (a) was RJR or Bob Jane Corporation the author of the RJR marks; and (b) was the use of the RJR marks by Bob Jane Corporation use as an owner or as an authorised user under the control of RJR as owner?
Authorship 55 In relation to authorship, the evidence establishes that Mr Jane conceived the idea of "Monster" branded wheels and directed the creation of the logos which became the RJR marks. MEC argues that the evidence supports the conclusion that, in doing so, Mr Jane was acting in his capacity as the CEO of Bob Jane Corporation and not in his capacity as the director of RJR. In support of that contention, MEC relies principally on the fact that Mr Jane asked Ms Zalatnai to help him develop the logos, Ms Zalatnai being the National Marketing Manager for Bob Jane T-Marts, and that Ms Zalatnai engaged Drafthouse Creative Studio to create the logos, which was a design firm used by Bob Jane T-Marts' advertising agency, Strohfeldt Consulting. The invoices for the work were addressed to Bob Jane T-Marts. Various communications about the logos were sent by email to Mr Jane at the address rjane@bobjane.com.au, the domain name for which is owned by Bob Jane Corporation. 56 Taken on their own, the foregoing facts might support a conclusion that Mr Jane was acting in his role as CEO of Bob Jane Corporation in directing the creation of the RJR marks. The facts cannot, however, be taken on their own. Mr Jane gave evidence that he created the RJR marks in his capacity as director of RJR and the surrounding facts, outlined earlier, are consistent with and corroborate his evidence. The key facts are the following. 57 First, the RJR business includes responsibility for the management of some of the intellectual property relating to the Bob Jane T-Marts business. Upon its incorporation, RJR's principal activity was the development and promotion of the Rodney Jane Racing motorsport brand and associated intellectual property, including the brand "RJR Wheels". In 2009, RJR entered into a licensing agreement with Bob Jane Corporation in respect of that brand (the 2009 Agreement). Under that agreement, Bob Jane T-Marts sold wheels bearing that brand. Thus, prior to the creation of the RJR marks, there had been a commercial relationship between RJR and Bob Jane Corporation for the licensing of trade marks owned by RJR. 58 Second, in 2011 RJR applied for registration of the word "Monster" as a trade mark. That act corroborates Mr Jane's evidence that, in taking steps to create the "Monster" trade mark, Mr Jane was doing so on behalf of RJR. 59 Third, on 22 May 2013, RJR filed the original trade mark applications in respect of the RJR marks. Again, that act corroborates Mr Jane's evidence that his prior actions in creating the RJR marks were undertaken by him in his capacity as director of RJR and not in his capacity as CEO of Bob Jane Corporation. 60 Fourth, shortly after the creation of the RJR marks, RJR and Bob Jane Corporation entered into a licence agreement in respect of the marks (the 2013 Agreement). While entering into that Agreement cannot, of itself, change the facts that occurred prior to the date of the Agreement, it sheds light on the proper characterisation of the prior events. It confirms Mr Jane's belief, and an understanding between the corporate entities, that the creation of the RJR marks had been undertaken by Mr Jane in his capacity as director of RJR, not in his capacity as CEO of Bob Jane Corporation. 61 Fifth, Bob Jane Corporation has complied with the 2013 Agreement, paying royalties to RJR in accordance with the Agreement. Bob Jane Corporation has never challenged RJR's ownership of the RJR marks. 62 Given the above facts, there is no reason to doubt Mr Jane's evidence that in creating the RJR marks he was acting in his capacity as director of RJR. I accept his evidence. That evidence is not contradicted by the fact that Mr Jane utilised the services of employees and contractors of Bob Jane Corporation in order to undertake design work. Given the corporate and commercial relationship between RJR and Bob Jane Corporation, and Mr Jane's intention that the RJR marks would be licensed to Bob Jane Corporation, it is understandable that RJR might utilise design services available through Bob Jane Corporation while creating trade marks that would be owned by RJR. The fact that various communications were sent to Mr Jane at his email address rjane@bobjane.com.au is of little moment. There is no evidence that RJR had a domain name for emails or that Mr Jane had any other email address (although the evidence shows that RJR had letterhead). Mr Jane's evidence was that he rarely used emails and preferred to communicate directly with people in the office using printed documents where necessary. 63 For the reasons given above, I am satisfied that RJR was the author of the RJR marks. MEC has the onus of proving that RJR was not the owner, either by proving that RJR was not the author of the RJR marks or was not the first user. It has failed to discharge the onus of proving that RJR was not the author.
Prior use 64 In relation to prior use, the evidence establishes that Mr Jane selected the producer of the wheels that would bear the RJR marks, Mullins Wheels, selected the style of wheel to be produced, directed the first communication and promotion of the "Monster" wheels to Bob Jane T-Marts stores and then continued to review and control alterations to wheel styles and the producer of the wheels. Again, MEC argues that the evidence supports the conclusion that, in undertaking those tasks, Mr Jane was acting in his capacity as the CEO of Bob Jane Corporation and not in his capacity as the director of RJR. The evidence relied upon by MEC in support of that argument are the facts that: Mr Hockley, the National Sales Development Manager of Bob Jane T-Marts, was involved in establishing the commercial arrangements with Mullins Wheels for the supply of wheels bearing the RJR marks; the "Monster" wheels were first promoted to Bob Jane T-Marts stores through an email sent on 2 May 2013 by Mr Hockley; a director of Bob Jane Corporation, Mr Chung, authorised Mullins Wheels to apply the RJR marks to the wheels being supplied by Mullins Wheels; and the "Monster" wheels were sold through Bob Jane T-Marts stores. 65 There is no dispute between the parties that Bob Jane Corporation was a user of the RJR marks. The dispute is whether Bob Jane Corporation was an authorised user of the marks under the control of RJR as owner such that its use is taken, for the purposes of the Act, to be a use of the marks by RJR (pursuant to s 7(3) of the Act). The evidence, outlined above, supports the conclusion that Bob Jane Corporation was an authorised user of the RJR marks under the control of RJR as owner. The key facts concerning RJR's control of the use of the RJR marks are the following. 66 First, Mr Jane selected the producer of the wheel to which the RJR marks would be applied, and selected the type of wheel (in terms of appearance and characteristics) that would be supplied. For the reasons explained in the context of the authorship of the RJR marks, in my view the evidence establishes that, in selecting the supplier and type of wheels to be supplied, Mr Jane was acting in his capacity as director of RJR. 67 Second, whilst dealing with Mr Weir from Mullins Wheels, Mr Jane was also directing Mr Hockley in relation to the commercial arrangements for the supply of wheels bearing the RJR marks. In doing so, it may be accepted that Mr Jane was acting in two capacities: as director of RJR and as CEO of Bob Jane Corporation. There was no necessary inconsistency or conflict in Mr Jane performing both roles. The circumstances are consistent with the apparent intention of the parties that Bob Jane Corporation would be an authorised user of the RJR marks. 68 Third, Mr Jane controlled the form of the email sent to Bob Jane T-Marts stores by Mr Hockley on 2 May 2013. The parties agree that that email constituted the first use of the RJR marks as trade marks. That is because the email involved the advertising and promotion of goods bearing the marks to Bob Jane T-Marts franchise stores. Mr Jane's control over that communication is clear from the fact that Mr Hockley sent a draft to him for his approval on 1 May 2013 and Mr Jane made material changes to the draft email. The changes made by Mr Jane were to describe more fully the target market for the "Monster" wheels. The email itself identified RJR as the owner of the "Monster" wheels brand: it commenced with the sentence "We are very excited to release the new Monster Wheels brand to the RJR stable". The evidence of Mr Jane was that he approved the revised email in his capacity as director of RJR and not in his capacity as CEO of Bob Jane Corporation. In my view, Mr Jane's evidence is consistent with the surrounding facts and circumstances, and I accept his evidence. 69 MEC advanced a Jones v Dunkel submission in respect of the failure by RJR to call Mr Hockley as a witness, to the effect that an inference can be drawn that Mr Hockley's evidence would not have been helpful to RJR's case. I reject the submission. The rule in Jones v Dunkel permits, but does not require, a tribunal of fact to infer that the evidence of an absent witness, if called, would not have assisted the party who failed to call that witness: Jones v Dunkel (1959) 101 CLR 298 at 308 per Kitto J and 321 per Windeyer J; RPS v R (2000) 199 CLR 620 at [26] per Gaudron ACJ, Gummow, Kirby and Hayne JJ. However, the rule does not entitle a court to speculate about "what other evidence might possibly have been led": ASIC v Hellicar (2012) 247 CLR 345 at [165] per French CJ, Gummow, Hayne, Crennan, Kiefel and Bell JJ. The rule will not support an adverse inference unless the evidence otherwise provides a basis upon which that unfavourable inference can be drawn: Chong v CC Containers Pty Ltd (2015) 49 VR 402 at [208] per Redlich, Santamaria and Kyrou JJA. Further, the rule does not operate to require a party to give merely cumulative or corroborative evidence: Manly Council v Byrne [2004] NSWCA 123 at [61]-[65] per Campbell J (Beazley JA and Pearlman AJA agreeing); Seven Network Ltd v News Limited [2007] FCA 1062 at [473] per Sackville J. In the present case, Mr Jane gave direct evidence concerning the control he exercised over the use of the RJR marks by Bob Jane Corporation and the capacity in which he exercised that control. The documentary evidence and surrounding facts and circumstances were consistent with Mr Jane's evidence. In those circumstances, there was no requirement for RJR to call Mr Hockley and there was no gap in the evidence required to be filled by Mr Hockley. 70 Fourth, on 19 June 2013, RJR and Bob Jane Corporation entered into a licence agreement in respect of various trade marks including the RJR marks. While that Agreement cannot alter the character of actions undertaken prior to the Agreement, it provides corroboration of the characterisation that is otherwise open on the evidence. In my view, the entry into the 2013 Agreement corroborates the fact that the earlier actions undertaken by Mr Jane controlling the use of the RJR marks by Bob Jane Corporation were undertaken in his capacity as director of RJR (as owner of the marks). That conclusion is also supported by the evidence showing that Bob Jane Corporation complied with the 2013 Agreement by paying royalties to RJR, and that Mr Jane continued to control the selection of the wheels bearing the RJR marks and the selection of the producer of those wheels. 71 For the reasons given above, I am satisfied that Bob Jane Corporation was, from the outset, an authorised user of the RJR marks under the control of RJR and that, as a consequence, RJR was the first user of the marks. MEC has failed to discharge the onus of proving that RJR was not the first user of the marks.
2.5 Disposition of the section 59 issue - RJR always intended to use the RJR marks 72 Section 59(a) of the Act provides that a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise the use of, the trade mark in Australia. On this ground of opposition, MEC relies on materially the same evidence and arguments advanced in respect of s 58. It contends that the evidence shows that RJR did not exercise control over the use of the RJR marks by Bob Jane Corporation and never intended to use or authorise the use of the marks within the meaning of the Act. 73 In closing submissions, Senior Counsel for MEC conceded, quite properly, that the determination of the s 58 issue would be largely determinative of the s 59 issue. For the reasons given in the preceding section, I find that, as at the priority date, Bob Jane Corporation was an authorised user of the RJR marks under the control of RJR which is dispositive of the s 59 issue. Indeed, as at the priority date, RJR's intention to authorise the use of the RJR marks in Australia is readily established by the combined effect of: the filing of the original applications for registration of the marks and the subsequent applications; 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.
3.1 Overview 74 MEC also opposes registration of the RJR marks under ss 42(b) and 60 of the Act. On these grounds of opposition, the dispute between the parties is whether the use of the RJR marks would be likely to deceive or cause confusion because of the reputation of the MEC marks. As noted earlier, Senior Counsel for MEC acknowledged that if the Court found against it under s 60, it would follow that the Court would also find against it under s 42(b) of the Act. Accordingly, while some reference is made to s 42(b) below, the primary issue concerns s 60. 75 The evidence shows, and there is no dispute, that MEC has a strong reputation in Australia in its device marks which consist of the M-icon on its own or used in conjunction with the stylised depiction of the words "Monster Energy". That reputation is as a producer of energy drinks and as a sponsor of extreme sports including motorsports. The extent of that reputation, particularly in relation to motorsports, is considered further below. The parties dispute whether MEC has a reputation in the word "Monster" that is distinct from its reputation in its device marks. 76 MEC acknowledges that the RJR marks and the MEC marks are not visually similar (and, contrary to the decision of the Registrar's delegate below, the respective marks do not share "striking similarities"). MEC contends that the use of the RJR marks would be likely to cause confusion because a notional consumer, aware of the reputation of the MEC marks, would (as at the priority date): (a) perceive the reference to "Monster" as signifying that the RJR marks were associated with MEC; (b) perceive that the "Monster" design of the RJR marks differed from MEC's M-icon; and (c) conclude that the design of the RJR marks were those of MEC and another commercial entity with whom MEC had entered into a commercial relationship (and, in the case of the RJR marks bearing the name "Bob Jane", the other commercial entity would be identified as Bob Jane Corporation or its business Bob Jane T-Marts). 77 In other words, MEC contends that the notional consumer would believe, or would be confused as to whether, MEC had entered into a commercial relationship with the producer of wheels bearing the RJR marks in the manner of brand extension, lending the MEC "Monster" name to a different logo. 78 MEC's contention is based on the argument that the word "Monster" is the essential feature in each of the MEC marks (save for the M-icon when used alone); that it is dominant both visually and aurally in the MEC marks; and that the name "Monster" is the way in which the MEC marks would ordinarily be recalled and described by consumers. MEC submits that when the MEC marks are used on its energy drinks and in its extensive marketing activities, the word "Monster" is prominent whether that word is used by itself or in conjunction with the word "Energy". MEC submits that the word "Monster" is reinforced where the M-icon is also used because the M-icon looks like the letter "M" and has a "monster-like vibe". 79 On MEC's case, the strength of MEC's reputation in the word "Monster", being an essential feature of the MEC marks (save for the M-icon when used alone), is such that a notional consumer (aware of that reputation) would be likely to associate the use of the word "Monster" in connection with automotive wheels with MEC, or at least be confused about such an association. 80 RJR contends that there is no likelihood of confusion arising from the use of the RJR marks (as at the priority date). In support of that contention, it makes the following arguments: MEC has a strong reputation in its device marks, but not in the word "Monster" alone; the reputation of the MEC marks is in relation to energy drinks and the sponsorship of extreme sports, but not in relation to the sale of automotive wheels; the word "Monster" has a descriptive meaning and there has been extensive third party use of that word as a trade mark in relation to a range of goods and services; there are striking dissimilarities between the RJR marks and the MEC marks; and the RJR marks are registered in relation to goods (alloy wheels) that are sold at a relatively high price and for which consumers make a considered purchasing decision.
Section 60 81 Section 60 of the Act provides that the registration of a trade mark in respect of particular goods or services may be opposed on the ground that: (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion. 82 The purpose of s 60 is to provide protection for prior well-known marks, whether registered or not: Explanatory Memorandum to the Trade Marks Amendment Bill 2006 at [4.10(1)]. 83 The ordinary meaning of the word "reputation" is the recognition of a person or thing by the public generally or the estimation in which a person or thing is held by the public generally: McCormick & Co Inc v McCormick (2000) 51 IPR 102 at [81] (McCormick). The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally: see McCormick at [85]-[86]. 84 There was no dispute between the parties as to the following general principles governing the application of s 60: (a) First, the likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the other mark: Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd (2015) 115 IPR 82 at [29] per Jessup J (Delfi). The Court must compare "mark and reputation" rather than "mark and mark": Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [306] per Dodds-Streeton J (Tivo), citing with approval Pfizer Products Inc v Karam (2006) 219 FCR 585 at [27] per Gyles J. (b) Second, the reputation of the other mark is to be assessed at the priority date of the opposed application: Southern Cross at 595, cited in Pham Global at [21]. (c) Third, the relevant comparison is between the prior mark as actually used and a notional normal and fair use of the mark sought to be registered: Qantas Airways Ltd v Edwards (2016) 338 ALR 134 at [178] (Qantas). See also Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362 (Berlei); Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661 at [113]-[115]. (d) Fourth, s 60 is not constrained by the concept of deceptive similarity - the words of s 60 do not refer to resemblance at all. The question is purely one of prior reputation: Qantas at [142]. (e) Fifth, the test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient that consumers might wonder whether the respective goods might be connected in the course of trade: Explanatory Memorandum, [4.10(3)]; McCormick at [82]; Southern Cross at 595. It is enough if consumers might think that the product bearing the impugned mark is a variant of, or related to, an existing brand: Southern Cross at 594-595, 597; Woolworths at [50]; Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 at 229-230; Australian Postal Corporation v Digital Post Australia Pty Ltd (2013) 308 ALR 1 at [70] (Australian Postal Corporation). (f) Sixth, there is no requirement that it be more probable than not that the use of the opposed mark will deceive or cause confusion. All that is required is that there is a real and tangible danger of confusion or deception. It is enough if the ordinary person entertains a reasonable doubt: Southern Cross at 595; Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1 at [76] (Crazy Ron's). The creation of an incorrect belief or mental impression and causing confusion "may go no further than perplexing or mixing up the minds of the purchasing public…": Coca-Cola at [39]; Tivo at [102] per Dodds-Streeton J. In Australian Postal Corporation, the Full Court stated (at [70]): … the threshold for confusion is not high. Courts must compare the marks visually and aurally in the context of how the marks are used, and decide if there is a reasonable probability that the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks. But there must be a realistic assessment, and a mere possibility of confusion is not enough. (g) Seventh, evidence of actual confusion is not required: Berlei at 355 per Barwick CJ. (h) Eighth, a mark may acquire a reputation in Australia through indirect exposure in the press, on television and on the internet: Tivo at [336] per Dodds-Streeton J; Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 171 FCR 579 at [64] per Finkelstein J. 85 The parties' submissions were at variance on a number of matters, although the variance was mainly a matter of emphasis. 86 First, the parties placed different emphasis on the significance of the objective similarity of the marks in question. RJR emphasised statements in the cases to the effect that, in assessing the risk of confusion, the "degree of similarity between the allegedly conflicting marks will be a relevant consideration": Qantas at [142] and [172] per Yates J; Singtel Optus Pty Ltd v Optum (2018) 140 IPR 1 at [205] per Davies J (Singtel Optus). Further, when considering a logo mark, all visual features must be considered, including font, the arrangement and use of graphic elements, the use of any corporate name, the orientation of the mark and its constituent parts, whether text is upper case or lower case, and the overall shape, geometricity and stylistic impression of the mark: Australian Meat Group Pty Ltd v JBS Australia Pty Ltd (2018) 363 ALR 113 at [71]-[73] (Australian Meat Group). In contrast, MEC emphasised that, while the respective marks must be considered as a whole, consumers are likely to have an imperfect recollection of the prior mark, retaining only a general recollection of that mark: Re Rysta Ltd's Application (1943) 60 RPC 87 at 108; de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 105-6 (de Cordova); Crazy Ron's at [77]-[79]. For that reason, attention needs to be given to the "essential feature(s)" of the prior mark which would be recalled by the consumer, being the "idea which the mark will naturally suggest to the mind of one who sees it", or a "significant" or "distinctive" element of the mark or aspect(s) of the mark, or the feature "which strikes the eye and fixes itself in the recollection": Jafferjee v Scarlett (1937) 57 CLR 115 at 121-2; Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 162; de Cordova at 105-106; Crazy Ron's at [74], [79]-[84]; Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526 at [108]-[110]. MEC submitted that confusion may result if that feature is then adopted in the trade mark of another. RJR countered with the submission that, under s 60, "a strong reputation is likely to militate against any likelihood of confusion where there are differences between the marks under comparison": Singtel Optus at [205] per Davies J. This is because a consumer "with a stronger awareness of the respondent's mark" is more likely to be "immediately struck by the differences between the two marks": Delfi at [29] per Jessup J. 87 Second, the parties placed different emphasis on the similarity of the goods and services in respect of which the respective marks were used or intended to be used. MEC emphasised that the prior mark need not have established a reputation in Australia that is specific to the goods or services which are the subject of the opposed application: Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 at 436-7 (Hugo Boss); McCormick at [85]; in Qantas at [143]. While RJR accepted the correctness of that principle, it placed reliance on observations made in a number of cases to the effect that it is a material consideration in the application of s 60: Singtel Optus at [203] per Davies J; Qantas at [143] per Yates J; Gain Capital UK Ltd v Citigroup Inc (No 4) (2017) 123 IPR 234 at [148] per Markovic J; Hills Industries Ltd v Bitek Pty Ltd (2011) 214 FCR 396 at [208] per Lander J. RJR also emphasised the relevance of the nature of the goods or services to which the opposed mark is sought to be registered and the characteristics of the class of consumers for those goods and services, as those factors bear upon the interest and likely attention of the relevant consumers in making a purchase and therefore the likelihood of confusion: Pham at [71]; Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 357 ALR 15 at [19] and [63]. 88 Third, there was some disagreement as to whether the use of the RJR marks before the priority date was relevant to the s 60 assessment. MEC submitted that the use or reputation of opposed marks is generally not relevant to the comparison of marks under s 60. The language of s 60 asks simply whether the use of the opposed mark is likely to deceive or cause confusion because of the reputation of the prior mark. The assessment is made by considering a notional normal and fair use of the opposed mark. MEC accepted that account could be taken of the notional consumer's familiarity with an element of the opposed mark where that element has a degree of notoriety or familiarity of which judicial notice can be taken (such as the brand Woolworths): Woolworths at [61] per French J; CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at [52]; Crazy Ron's at [90]; Australian Meat Group at [41]. However, it submitted that that principle has no application to the RJR marks. RJR submitted that it is well established that, when assessing whether a party (here MEC) had acquired a distinctive reputation in a mark, third party usage of that mark "weighs heavily against the conclusion" (Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297 at [256]-[257] per Middleton J) and that third party usage will make it more difficult for a party to establish that use of that mark is likely to deceive (Telstra Corp Ltd v Phone Directories Co Pty Ltd (2014) 316 ALR 590 at [580] per Murphy J, in the context of passing off and misleading or deceptive conduct). RJR submitted that it followed that use of the RJR marks before the priority date would be relevant to the s 60 assessment in so far as that use diminished the likelihood that the MEC marks had acquired a distinctive reputation in the word "Monster" (also relying on Colorado Group Limited v Strandbags Group Pty Limited (2007) 164 FCR 506 at [136] per Allsop J). That proposition was accepted by MEC. 89 There was no disagreement between the parties that s 60 must be applied separately to each of the RJR marks and in respect of each of the MEC marks. It is therefore necessary to consider: what is the reputation of each of the MEC marks considered separately? In that respect, the primary contentions advanced by MEC recognised that it was MEC's device marks, comprising the M-icon and the stylised depiction of the words "Monster Energy", that had acquired a reputation in Australia, rather than the word mark containing the single word "Monster". MEC's primary contention was that the essential element of its device marks was the word "Monster", such that consumers would be likely to be confused by the use of the RJR marks, which featured the brand "Monster".
Section 42 90 Section 42(b) provides that an application for registration of a trade mark must be rejected if its use would be contrary to law. In that respect, MEC relies on ss 18 and 29 of the ACL. The principles governing the application of ss 18 and 29 are well established and neither party referred to them in any detail. The principles governing s 18 were recently summarised by Beach J in Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239 at [259]-[277] (Flexopack). Similar principles govern the application of s 29 of the ACL: Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 at [97]-[107]; ACCC v Coles Supermarkets Australia Pty Ltd (2014) 317 ALR 73 at [35]-[47]; Flexopack at [259]-[277]. 91 There are, however, two important differences in the enquiry required by s 60 of the Act on the one hand and under ss 18 and 29 of the ACL on the other. First, the enquiry under s 60 requires consideration of whether the reputation of a pre-existing mark is likely to deceive or cause confusion; the enquiry under ss 18 and 29 is not so confined and all relevant circumstances can be considered. Second, under s 60 it is sufficient to show that consumers are given "cause to wonder" as to the source of the applicant's goods, but that is not sufficient under the ACL: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 198 per Gibbs CJ; Google Inc v ACCC (2013) 249 CLR 435 at [8] per French CJ, Crennan and Kiefel JJ.
3.3 The reputation of the MEC marks 92 MEC adduced a substantial quantity of evidence concerning the use of the MEC marks in connection with the sale of its energy drinks and associated promotional activity in order to show the strength of the reputation in Australia of the MEC marks. That evidence was principally given by Mr Pontrelli, who is the Senior Vice President of Marketing for MEC, and by Mr Thiele, who is the Vice President - Oceania at Monster Energy AU Pty Ltd (the Australian subsidiary of MEC) (MEAU). RJR largely embraced the evidence of Messrs Pontrelli and Thiele, submitting that their evidence showed that each can of Monster Energy drink sold by MEC, and all of its associated promotional activity, whether by way of sponsorships or merchandising, prominently featured the device marks consisting of the M-icon and the stylised depiction of the words "Monster Energy", not the word mark consisting of the plain (i.e. not stylised) word "Monster". RJR argued that it was MEC's device marks that had a strong reputation, not the word mark "Monster", and that the strength of the reputation in the device marks reduced the likelihood of confusion from the use of the RJR marks. RJR's submission is correct.
Energy drinks 93 The original Monster Energy drink was launched by MEC in the USA in April 2002 with a target audience of male consumers in the 18-34 age bracket. Between 2002 and the end of 2014, MEC sold more than 13 billion cans of Monster Energy drink to consumers in 134 countries generating revenues of more than US$14 billion. MEC launched the original Monster Energy drink in Australia in July 2009 through its wholly-owned subsidiary MEAU. The packaging of the original drink had a black background with the M-icon and the word "Energy" coloured green. Also from 2009, MEC, through MEAU, launched variants of the Monster Energy drink which were sold in Australia prior to January 2015. All of the variants featured prominently the M-icon and the stylised depiction of the word Monster. On many of the variants, the word "Energy" was supplemented (or occasionally replaced) by the specific variant name such as "Monster Ripper Energy + Juice" and "Monster Energy BFC", and the variants used different colours on the packaging. By way of illustration, those examples are depicted below: Monster Energy Original Monster Ripper Monster Energy "BFC" (sold in Australia since 2009) (sold in Australia between 2009 and 2013) (sold in Australia between 2009 and 2013)
94 Between July 2009 and 27 January 2015, over 90 million cans of Monster Energy drinks were sold throughout Australia. Over 44 million of those were cans of the variants. Monster Energy drinks were distributed and sold in Australia through in excess of 10,000 retail outlets, including at supermarkets, petrol stations, bars and pubs, cafes, milk bars and take away food outlets. 95 In its submissions, MEC sought to emphasise the differences in the product variants that it has sold over time, in support of its overarching submission that the constant and essential element of the Monster Energy products was the name "Monster". In my view, the evidence supports the opposite conclusion: that despite producing many variants of its original Monster Energy drink, MEC has preserved on all of its products the key features of its branding which are the prominent M-icon and the stylised depiction of the word "Monster", usually in conjunction with the word "Energy". Those features are distinctive and make the MEC products instantly recognisable. That view is consistent with the evidence of Mr Thiele. When cross-examined regarding the cans sold in Australia, Mr Thiele agreed that the material appearing on the can had changed very little since 2002 and that the word "Monster" was rendered in a distinctive script with a vertical line through the letter "o". Further, Mr Thiele confirmed, when cross-examined, that: "Would you agree with this: that the Monster Energy business has never sold a beverage product in Australia displaying the word "Monster" without also displaying that M icon logo; that same distinctive script for Monster, including the vertical line through the letter O; and the word "energy"?---That's true. However, the word "energy" on some variants is much smaller, so, for example, Monster Rehab which we sold prior to 2015."
Marketing and promotion 96 Between 2002 and the end of 2014, MEC's world-wide marketing and promotional spend was more than US$3.1 billion. Between July 2009 and the end of 2014, over US$42 million was spent directly on marketing and promotion in Australia. 97 MEC does not use conventional advertising methods such as paid television, radio, print or on-line advertising. Instead, MEC focuses on promotional activities which allow it to engage more directly with its target market. These methods have been substantially the same since the product was launched in the USA and other overseas markets including Australia. Those promotional activities include: (a) Sponsorships: MEC sponsors athletes, sporting teams, video gamers, musicians and events. Relevantly, MEC's sponsorships include motorsports. The evidence concerning MEC's sponsorship activities is described in more detail below. (b) Product sampling: MEC gives away its Monster Energy drinks at MEC sponsored events or events at which MEC sponsored individuals or teams are competing, as well as at other venues including, in Australia, amateur sporting competitions (including motorsports competitions), motorcycle stores, beaches and festivals. In Australia, between 2009 and 2014, MEC spent over US$4.8 million on sampling activities (which incorporates wages for sampling staff, as well as the cost of Monster Energy drinks given away as samples). The MEC sampling teams wear MEC branded apparel and travel in MEC branded vehicles. (c) Branded apparel and merchandise: MEC distributes to the general public (including by giving away) apparel and merchandise bearing the MEC marks. In doing so, it licenses others to apply the MEC marks to a variety of apparel and merchandise such as items of clothing, caps, beanies, bandanas, belts, water bottles, umbrellas, backpacks, suitcases and cooler bags. MEC also provides the individuals it sponsors with MEC branded apparel and merchandise. Photographs of these individuals (including both Australian and internationally sponsored athletes) wearing MEC branded apparel or holding MEC branded merchandise are uploaded to the MEC social media accounts or to the MEC website, which are followed by a substantial number of Australian consumers. The sponsored athletes also post such photographs onto their own and/or their team's social media accounts which can be accessed in Australia. This approach promotes the MEC brand to its target audience by reinforcing its "cool" and "legitimate" brand image. (d) Point of sale materials: MEC displays point of sale (POS) materials at most locations where Monster Energy drinks are sold and has distributed large quantities of POS materials featuring the MEC marks. In Australia alone, between 2009 and 2014, MEC spent over US$2.7 million on POS materials. (e) In-store promotions: MEC conducts in-store promotions and competitions to promote the MEC brand. In Australia, those promotions are carried out largely in petrol stations and supermarkets and usually involve entry into a competition with the purchase of a Monster Energy drink product. 98 MEC adduced in evidence a large array of photographs of its energy drinks, MEC branded apparel and merchandise, MEC branded vehicles and MEC POS materials. The branding on all of that material, without exception, consists of MEC's device marks comprising the M-icon on its own or in conjunction with the stylised depiction of the words "Monster Energy". The plain word "Monster" (i.e. not in a stylised form) is never used on its own as a brand. As discussed further below, MEC draws attention to the occasions on which it, or consumers, use the plain word "Monster" when referring to MEC or its energy drink products. However, the plain word is never used as a brand. It is only ever used in written communications by MEC, such as a brochure that contains a written description of branded merchandise (for example, Monster T-shirt) or point of sale material (Monster cooler), or written communications by consumers on social media writing a response to a post from MEC or a sponsored athlete. Such use is always associated with, proximate to and never separate from, the other distinctive MEC marks, being the M-icon and the stylised "Monster Energy". The evidence of Mr Pontrelli, when cross-examined about the sponsorship and marketing activities undertaken by MEC, was: "When one reviews your photograph[s] that you have chosen to exhibit to your affidavit, there are no examples of the single word "Monster" being prominently displayed to consumers without either the M icon or the word "energy". Do you accept that proposition?---That is correct."
Sponsorship 99 MEC allocates a large portion of its marketing expenditure to the sponsorship of athletes, teams, sporting events, musicians, music festivals, video gamers and gaming competitions which appeal directly to MEC's target market, which traditionally has been 18 to 34 year old males. Between 2002 and the end of 2014, MEC spent over US$590 million in relation to its international sponsorships. Between July 2009 and 27 January 2015, MEAU spent over US$10 million on Australian sponsorships. MEC's sponsorship of events and athletes is not limited to placing the MEC marks on the athlete's apparel or vehicle. MEC also seeks to "leverage" its sponsorships, including by way of promotions, POS materials, sweepstakes and giveaways, and dressing its sponsored athletes with apparel and gear branded with the MEC marks, both casually and in-competition. As part of MEC's sponsorship deal, the athlete or team may be required to upload photos taken at competitions and events to their personal or team's social media accounts, which are directed to their own personal or team fan base. 100 MEC promotes its sponsorships (both international and Australian) on its own website and social media accounts, including Facebook, Twitter, Instagram and YouTube. Content posted to MEC's website and social media pages is tailored to its target market. This exposure has included the prominent display of the MEC marks on athletes' clothing and equipment (including, in relation to motorsports, on drivers/riders and their vehicles), on banners, posters and signs around the venues and on podiums, merchandise, promotional vehicles and hospitality trailers and staff uniforms. Since at least 2005, MEC has had a specialised digital marketing team responsible for running MEC's social media pages, including by compiling photos and videos and curating content to put on those pages. These pages are viewed by consumers around the world, including from Australia, in significant numbers as set out below: (a) The Monster Energy Website (www.monsterenergy.com) was launched in 2003. Between 1 September 2010 and 1 January 2016, there were a total of 526,000 visits to the website from Australia. (b) The Monster Energy Facebook page has been in operation since 2008. By 2010, the Monster Energy Facebook page had received 50,000 likes/follows from Australia. By December 2014, the page had over 430,000 likes/follows from Australia. (c) In addition to its primary Facebook page, MEC maintains a number of ancillary pages, including (i) a "Monster Energy Girls" page which, by December 2014, had received over 38,000 likes/follows from Australia; (ii) a "Monster Energy Gaming" page which, by December 2014, had received over 12,000 likes/follows from Australia; and (iii) a "Monster Energy Music" page which, by December 2014, had received over 4,500 likes/follows from Australia. (d) Monster AU also maintains a separate Facebook page, using the account name "MonsterEnergyAUS", which posts uniquely Australian content. (e) The Monster Energy Twitter account has been in operation since 2009. As at 2013, the Monster Energy Twitter account had over 1 million followers worldwide, including followers from Australia. In addition, MEAU maintains a separate Twitter page, using the handle @MonsterEnergyAU, which posts uniquely Australian content and has done so since at least September 2010. (f) The Monster Energy Instagram account has been in operation since 2011. By April 2012, the Monster Energy Instagram account had 31,756 followers from Australia. By February 2014, the Monster Energy Instagram account had more than 745,000 followers worldwide (including from Australia). (g) MEC delivers content through several YouTube channels, including the Monster Energy YouTube channel. The Monster Energy YouTube channel was created in 2006, and Monster Energy began posting content to that channel in 2009. By April 2014, the Monster Energy YouTube channel had received more than 2.4 million views from Australia. 101 As part of its sponsorship activities, MEC also engages female staff known as "Monster Girls" to assist with the marketing and promotion of its products by attending events to hand out samples and merchandise, and to meet and greet fans. MEC also maintains an amateur sponsorship and athlete development program called the "Monster Army". During the period 2009 to 2014, potential applicants worldwide could apply for inclusion in the program through the Monster Army website, at www.monsterarmy.com. By July 2012, more than 3,200 people from Australia had applied to be a part of the Monster Army. Between 1 October 2008 and 31 July 2015, the Monster Army website received more than 48,000 unique visits from Australia. By December 2014, the corresponding Monster Army Facebook page received more than 4,000 likes/follows from Australia. 102 MEC's evidence included a large array of photographs of MEC branded apparel, merchandise, equipment, vehicles, banners, posters, signs and staff uniforms. The observations made earlier apply. The branding on all of that material consists of MEC's device marks comprising the M-icon on its own or in conjunction with the stylised depiction of the words "Monster Energy", not the plain word "Monster".
Motorsports 103 MEC's marketing and promotion has focused on projecting the image that MEC and its products are "edgy and aggressive". MEC perceives that this image appeals to its primary target market. For that reason, MEC has sponsored motorsports and extreme sports which are seen as edgy and aggressive. MEC regards motorsports as an activity of particular interest to its primary target market and one which aligns closely with its image. As a result, since the commencement of MEC's business, a significant focus of MEC's marketing activities has been motorsports including on and off-road car and motorcycle racing, and motorsports related activities such as stunt driving and motorcycle stunts. By sponsoring these drivers, teams and events, the MEC marks receive significant amounts of unsolicited press coverage, creating widespread exposure. This includes television and web broadcast exposure internationally through news outlets, authorised broadcasts, amateur videos and in online and printed publications covering the events. 104 The evidence established that a significant part of MEC's motorsport sponsorships have an Australian audience: (a) International events such as NASCAR, F1, Dakar Rally, Superbikes, MotoGP, Speedway and the AMA Supercross, at which the MEC brands are displayed on athlete's helmets and uniforms, on track signage and/or on the press conference backdrop, are directly broadcast and/or webcast into Australia. (b) MEC also sponsors international drivers who have a significant following in Australia including, for example, Valentino Rossi (MotoGP), Lewis Hamilton (F1), Ken Block (Rally Driver / Gymkhana), and Ricky Carmichael (Supercross and Motocross). (c) In Australia (prior to January 2015), MEC sponsored various events including the V8 Supercars, the Formula 1 Grand Prix (Australian event), Powercruise, the MotoGP (Australian event), Australasian Supercross Championships and the MX Nationals. (d) MEC has also sponsored a range of Australian drivers in fields such as stunt cars, supercross/motocross, V8 supercars, kart racing, V8 ute racing, drag racing, drift driving, Carrera Cup racing, off-road racing and sprintcars. 105 MEC leverages its sponsorship of these athletes, teams and events by way of cross-promotions, POS materials, sweepstakes and giveaways, dressing its sponsored drivers/riders with apparel and gear branded with the MEC marks and distributing MEC branded motorsports related merchandise. 106 In Australia, MEC has also had a significant presence in Supercross. Between 2009 and 2011, MEC was the naming rights sponsor of the Australian Supercross Championship series, the Super X. During this time, there were at least five Super X events held in Australian cities each year. International MEC-sponsored riders (who had had significant success in the Super X) also competed in the series. In 2012, the Series was relaunched as the Australian Supercross Championship. MEC remained a sponsor of the series, in particular a named sponsor of particular series events. MEC branded merchandise was also sold in Australia, including replica Tim Ferry MEC branded gear, as well as other Supercross related merchandise. 107 MEC has also had significant involvement in Australia in relation to Monster Trucks, including through sponsorship of drivers, such as Damon Bradshaw, who have had considerable success in the Monster Jam series. For example, MEC sponsored athletes in every Monster Jam series event in Australia up to the end of 2014, and that sponsorship has continued. 108 Again, MEC's evidence included a large array of photographs of MEC branded apparel, merchandise, equipment, signs and banners at venues and on podiums. The branding on all of that material consists of MEC's device marks, not the plain word "Monster". The photographs also show that MEC is not the only, or dominant, sponsor of the events, teams or athletes depicted. The trade marks of many other well-known companies such as Vodafone, Samsung, Toshiba, Blackberry, Allianz and Pirelli are commonly displayed on event signage, motor vehicles and uniforms, often in conjunction with MEC's device marks.
Brand extension 109 MEC markets and sells energy drinks in Australia and does not itself sell any other merchandise in Australia. However, it has licensed a number of companies to sell official MEC apparel and merchandise, including in Australia. Most relevantly, since 2002 (and prior to 2015), MEC has licensed others to produce motorsports related products, such as decal kits, helmets, gloves and protective clothing, replica cars, and an MEC edition Kawasaki motorcycle displaying the MEC marks. In Australia, the MEC marks have been used on motorsports related products such as decals, helmets, gloves and protective clothing. Since at least 2013, MEC has also authorised the use of the MEC marks on electronic games involving motorsports that are available across multiple platforms such as Xbox, Play Station, Nintendo and as smart phone apps. 110 Since 2011, MEC has licensed American Tire Distributors Inc. (ATD) to manufacture and distribute MEC branded automotive wheels in the United States and Canada. Pictures of the wheels in evidence show that they have the M-icon on the hubcap. The evidence concerning the sale of MEC branded wheels in Australia was scant and there was no evidence concerning any licensing arrangements for the sale of such wheels in Australia. Nevertheless, MEC relied on the following matters as being relevant to the reputation of its marks in Australia in respect of wheels: (a) ATD and its distributors (including TIS Wheels) have advertised the MEC branded wheels by way of promotional videos uploaded to TIS's YouTube channel. (b) Since 2011, the MEC branded wheels have been displayed at the "Monster Energy DUB Show", which is a custom car show and concert tour that occurs in the United States. Advertisements for the MEC branded wheels have appeared in the associated "DUB Magazine" located on the DUB Show website. The MEC Facebook page refers to the DUB Magazine. (c) MEC sponsored drivers also occasionally fit custom MEC branded wheels on their vehicles. For example, in around April 2013, MEC sponsored the athlete BJ Baldwin who debuted his custom vehicle, fitted with MEC branded wheels, as part of a stunt video called "Recoil" published to MEC's YouTube channel. The first Recoil video received over 8 million views by the end of 2014. BJ Baldwin's custom wheels were also featured in the April/May 2013 edition of the DUB Magazine, which was promoted via the MEC Facebook page. 111 Ms Sapountsis, a lawyer employed by the solicitors for MEC, gave evidence of visiting the "Wheels Gallery" section of the Bob Jane website and accessing and downloading photographs of 9 vehicles with "Crossfire Fang" or "Crossfire Krawler" wheels having the M-icon on the hubcap, each vehicle apparently parked outside an identified Bob Jane T-Marts store. The date on which each photograph was taken was not clear from the website, although at least some of the photographs appeared to have been taken before the priority date. 112 Mr Kulikowski, the Wheel Division Coordinator for Bob Jane T-Marts, gave evidence that the "Wheels Gallery" on Bob Jane's website was created in about 2013 and, from that time, sales staff located at Bob Jane T-Marts stores throughout Australia could contribute photographs to be uploaded. As at December 2018, more than 1,700 photographs had been posted on the "Wheels Gallery". Mr Kulikowski gave evidence that the photographs are not necessarily of wheels being offered for sale at any particular Bob Jane T-Marts store, although I infer that in most cases the photographs would be of vehicles recently fitted with wheels or tyres at the relevant store. In his evidence, Mr Kulikowski identified the dates on which 7 of the photographs exhibited to Ms Sapountsis' affidavit were uploaded to the "Wheels Gallery": Beenleigh (6 June 2014), Toowoomba (28 June 2014), Tweed Heads (30 January 2015), Chermside (2 March 2015), Cleveland (16 March 2015), Chermside (23 May 2015) and Cairns (25 May 2015). Mr Kulikowski confirmed in cross-examination that the wheels would have been sold on a date earlier than the date of the upload. Mr Kulikowski verified that, in each photo, the alloy wheels are two models of "Crossfire" brand wheels: the "Fang" and "Krawler" models. During the period 2013-2016, the only local distributor to Bob Jane T-Marts of Crossfire wheels (including the Fang and Krawler models) was Access Alloys of Virginia, Queensland. A total of approximately 400 Crossfire wheels were supplied by Access Alloys and sold through Bob Jane T-Marts during that period. 113 MEC tendered in evidence 4 invoices issued by Bob Jane T-Marts stores before the priority date in respect of the sale of Crossfire Fang or Krawler wheels. The invoices on their own do not refer to MEC branding on the wheels that were sold. However, the details of the invoices correspond with 4 of the photographs exhibited to Ms Sapountsis' affidavit (3 of which were referred to in Mr Kulikowki's affidavit), supporting an inference that the wheels depicted in the 4 photographs, having the M-icon on the hubcap, were sold by Bob Jane T-Marts before the priority date. Mr Kulikowski was cross-examined about the photographs and the invoices. He agreed with the proposition that the invoices related to the vehicles shown in the photographs with corresponding details. I do not believe that his evidence rises any higher than being a conclusion he has drawn from seeing the apparent correspondence between the invoices and the photographs. Nevertheless, in the absence of contrary evidence, I draw the inference that the invoices do relate to the vehicles shown in the corresponding photographs. However, Mr Kulikowski stated that he was not aware that Bob Jane T-Marts stores had ever offered for sale or sold wheels with the M-icon on the hubcap. He said that, ordinarily, Crossfire wheels come with a "Crossfire" hubcap and he would have expected that Crossfire wheels sold by Bob Jane T-Marts had that hubcap. MEC also tendered in evidence a Bob Jane T-Marts Facebook post dated 30 May 2014 from the Alberton store with a photograph of a Crossfire Fang wheel with the M-icon on the hubcap and a message stating "4x4 just got real … New stock landed and ready to go in aggressive fitments. This is the Fang - in stock to suit Hilux, Colorado, Dmax, Triton, Prado and others". In cross-examination, Mr Kulikowski agreed that it appeared from the post that the Alberton store had the displayed wheel in stock, but Mr Kulikowski was not personally aware of that fact. 114 I infer from the evidence that at least some wheels bearing the M-icon on the hubcap were sold in Australia (through Bob Jane T-Marts) before the priority date. However, there is no evidence as to the quantity of those sales, beyond the 4 invoices referred to above and the Facebook post. Further, there was no evidence that MEC had licensed any wheel manufacturer to produce or sell wheels bearing the M-icon on the hubcap in Australia. It is therefore not clear whether the Crossfire wheels that were sold in Australia were imported from North America; nor is it clear whether MEC approved the use of the M-icon on the wheel hubcaps for sale in Australia. Given the absence of any licensing arrangements for the sale of MEC branded wheels in Australia, it is unsurprising that there was also no evidence that MEC had ever promoted itself as a producer or supplier of automotive wheels in Australia. Overall, the evidence concerning the sale of MEC branded wheels in North America or Australia has no material bearing on the reputation of the MEC marks in Australia.
Findings about the reputation of the MEC marks 115 Having regard to the evidence summarised above, I make the following findings about the reputation of the MEC marks in Australia as at the priority date. 116 First, the evidence establishes that there is a very strong reputation in MEC's device marks which consist of the M-icon on its own, and the M-icon together with the stylised depiction of the words "Monster Energy". The primary reputation is as a producer and seller of energy drinks. However, through its extensive marketing and promotional activities, those marks are also associated with various extreme sports including motorsports. In my view, the type of association in the minds of consumers would be as a sponsor of events, teams and individuals. Some consumers would also associate those marks with a range of merchandise bearing those marks, from apparel through to motorsport equipment such as gloves and helmets. However, the evidence does not establish a reputation in Australia in connection with the sale of automotive wheels. 117 Second, MEC's word marks which contain the plain (i.e. not stylised) words "Monster Energy" are likely to enjoy the same reputation. The extensive marketing and promotion of Monster Energy drinks using the device marks inevitably carries across to the word marks "Monster Energy". Those words, used together in plain text, would immediately identify MEC, its products and sponsorships to a large number of consumers. 118 Third, and related to the preceding findings, MEC's device marks, comprising the M-icon and the stylised depiction of the name "Monster Energy", have remain unchanged since the business was commenced in 2002. While MEC has engaged in some brand extension, by licensing those marks for use on apparel and other merchandise (including certain motorsport apparel and equipment), there has been no change to the appearance of the device marks. 119 Fourth, there is no evidence that MEC has used the word marks which contain the plain (i.e. not stylised) word "Monster" as a brand to sell its energy drinks or for promotional purposes. Any use of the word "Monster" by MEC is subsidiary to the use of its device marks. As such, in my view MEC's word marks which contain the plain word "Monster" have only a limited reputation on their own. Any reputation they enjoy is derived from MEC's device marks. In other words, consumers are likely to associate the word "Monster" with MEC and its products and promotional activities if the word is used in connection with, or in proximity to, MEC's device marks. In that sense, it is the device marks that create the association in the minds of consumers. MEC submitted that the word "Monster" is an integral part of MEC's branding and reputation. That is undoubtedly correct, but it doesn't follow that consumers would associate the word "Monster" used on its own with MEC or its products or sponsorships. It is possible to imagine circumstances in which the use of the plain word "Monster" as a mark might cause consumers to wonder whether the product in question was associated with MEC. An obvious example is if the word was used in connection with soft drinks. However, in my view other uses of the word "Monster" as a mark would be unlikely to cause such confusion.
3.4 Other uses of the word "Monster" as a brand in Australia 120 RJR adduced evidence of the use of the word "Monster" as a brand in Australia before the priority date both by itself (through the use of the RJR marks) and by others. The submission advanced by RJR was that the word "Monster" is a common English word which carries the connotations of large, powerful or wild and its common usage in the course of trade in Australia diminishes the likelihood of a consumer associating the RJR marks with MEC. RJR relied on four categories of evidence.
The word "Monster" is a commonly used mark 121 Mr Fraser gave evidence on behalf of RJR of searches he conducted on the website of IP Australia, which is an Australian Government agency that administers Australia's various statutory intellectual property regimes. Mr Fraser clicked the "Search trade marks" link and typed the word "Monster" into the search function, producing 816 results. He then filtered the results to "trade mark words" and "registered" status, which reduced the number of results to 246, and exhibited the list of results. The resulting trade marks were registered in various classes for which trade marks may be registered, spanning a wide range of products. RJR relied on this evidence to show the common usage of the word "Monster" as a brand in Australia. MEC submitted that the evidence adduced by Mr Fraser does not go that far. First, of the 246 registrations, 57 are after the priority date and 67 are registered to MEC. Second, and more significantly, there is no direct evidence before the Court as to what use, if any, there has been of the remaining marks between the registration date of the marks and the priority date.
The Ducati Monster motorbikes 122 Evidence was given about the Monster brand of Ducati motorbikes. Mr Fraser's searches showed that the trade mark "Monster" had been registered in the name of Ducati Motor Holding SpA since 1995 in respect of, amongst other things, motorcycles and clothing, footwear and headgear. Mr Cuthbert gave evidence on behalf of RJR about those motorbikes. Until March 2003, Mr Cuthbert was Managing Director of Graeme Cuthbert Automotive Pty Ltd, an automotive business, established by Mr Cuthbert in 1971, which undertook repairs, restorations, testing, vehicle sales and valuations. Since 2003, Mr Cuthbert has been a consultant to various aspects of the automotive industry undertaking valuations, insurance assessments and sales and acting as a forensic expert witness. He is presently a director of Cuthbert Auto Sales and Cuthbert Automotive Consulting. Mr Cuthbert's qualifications and experience show that he has wide experience in automotive repairs, brokering and valuations. Mr Cuthbert said that he is familiar with Ducati Monster motorbikes, which Mr Cuthbert described as very well known, widely purchased and an iconic range of motorbikes.
Monster Trucks 123 Evidence was given about "Monster Jam" events that have been held in Australia (and overseas) in which oversized pick-up trucks known as "Monster Trucks" participate. Mr Fraser's searches showed that the trade mark "Monster Jam" has been registered in the name of Feld Motor Sports Inc since 2011 in respect of the production, organisation and provision of sporting events, toy vehicles and clothing. 124 Mr Jane gave evidence that Bob Jane Corporation had a Monster Truck as early as 1987, that he had been interested in Monster Trucks since childhood and that he had attended Monster Truck events in Australia in 2010, 2012 and subsequently, along with substantial crowds of spectators. Mr Worsnop, a solicitor for RJR, gave evidence that he had attended a Monster Truck event at Ballarat in 2006, where the crowd numbered several thousand people, and also at Melbourne in 2010, where the crowd numbered in the tens of thousands. Mr Cuthbert gave evidence that he associated the word "Monster" in an automotive context with Monster Trucks and in particular the monster truck series known as "Monster Jam", that his initial exposure to Monster Trucks was in 2010/2011 via television, and that he had attended a Monster Trucks display at the Royal Melbourne Agricultural Show in about 2012 or 2013. 125 Ms Maartensz, a solicitor for MEC, adduced in evidence documents downloaded from the "Monster Jam" website that were records of Monster Jam events held in Australian cities before the priority date. Those records showed that: (a) a Monster Jam event was held on 19 October 2013 at ANZ Stadium in Sydney and was attended by "more than 50,000 roaring fans" and a subsequent "pit party" was "sold out" and attended by "more than 12,000 fans"; (b) a Monster Jam event was held on 27 September 2014 at QSAC Stadium in Brisbane and was attended by "over 25,000 fans cheering for each Monster Jam truck to win"; (c) there were two Monster Jam events held on 4 October 2014 at AAMI Park in Melbourne, both of which had a "sell out crowd"; (d) a Monster Jam event was held on 18 October 2014 at ANZ Stadium in Sydney and "for the second straight year Aussie fans turned out in huge numbers at the Sydney Olympic Park Stadium"; and (e) in the period between 27 June 2013 and 22 January 2015, there was sustained and extensive television coverage of Monster Jam events on free-to-air television in Melbourne. In total, there were 223 discrete televised broadcasts of Monster Jam events over a period of approximately 1.5 years. Put another way, in the 1.5 years immediately before the priority date, a Monster Jam event was, on average, broadcast on free-to-air television in Melbourne approximately every second day. 126 The evidence of Mr Pontrelli, on behalf of MEC, was that the Monster Jam series tours across the United States of America, and also internationally, including to Europe, Japan and (since 2013) Australia, that the series is televised internationally and that the Monster Jam events, teams and athletes create widespread public exposure and awareness.
RJR's Monster wheels 127 The evidence showed that RJR had used the RJR marks on alloy wheels before the priority date. Mr Jane gave evidence that the brand was launched in mid to late 2013 and alloy wheels featuring the RJR marks were promoted in national catalogues and in national television advertising for the Bob Jane T-Marts business as a featured brand. Example pages from the catalogues were in evidence. They depicted wheels bearing the RJR marks alongside many other wheels being offered for sale in Bob Jane T-Marts stores. 128 Mr Jane gave generalised evidence that, by the priority date, alloy wheels featuring the RJR marks had been promoted in many millions of catalogues (which were distributed in Australia either through newspaper inserts or through letterbox drops); however, the evidence did not run to precise numbers. The evidence showed that, by the priority date, a total of 1,839 wheels bearing the RJR marks had been sold, generating sales revenue of approximately $350,000. 129 Ms Zalatnai gave evidence that wheels bearing the RJR marks were featured on the "wheel specials" page of the Bob Jane website during the period October 2013 to January 2015. I infer that the wheels were featured from time to time, not every day. A Google Analytics report showed that, between 2013 and the priority date, there were a total of 119,332 unique views of that page. However, without knowing how often the wheels bearing the RJR marks were shown on the page, it is not possible to form any assessment of the degree of exposure of the brand to the public through that medium.
3.5 The purchase of alloy wheels 130 A number of witnesses gave evidence for RJR in relation to the price of alloy wheels and the factors that influence a purchasing decision by a consumer. 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. 131 As stated earlier, Mr Cuthbert's qualifications show that he has wide experience in automotive repairs, brokering and valuations. Mr Cuthbert gave evidence that car owners generally buy alloy wheels for one of two reasons. First, and primarily, car owners buy alloy wheels because they want to improve the look of their vehicles, by having wheels that look more sporty or distinctive in some way. As a result, car owners often spend a great deal of time "shopping around" for alloy wheels, as they compare the look of different sets of wheels and the prices of those wheels. Second, some car owners buy alloy wheels for their performance benefits. There are a range of performance benefits of alloy wheels. In particular, alloy wheels are lighter than conventional steel wheels and lighter wheels allow a vehicle to accelerate faster and brake faster along with improved handling. Mr Cuthbert also stated that alloy wheels are relatively expensive. The price of a typical set of four alloy wheels ranges from $2,000 to $5,000, although specialist sets can cost many times more. In Mr Cuthbert's experience, car owners typically spend quite a lot of time looking for and considering different sets of alloy wheels before making a final purchase, having regard to the considerations set out above. 132 Mr Thomas is a store manager employed by Bob Jane Corporation and presently manages the Bob Jane T-Marts store located at Nunawading in Victoria. He has been employed by Bob Jane Corporation for approximately 25 years in various roles starting from a tyre fitter and aligner to work shop foreman before working his way up through sales and showroom positions to his current position as a store manager. He has been involved in the sales part of the Bob Jane T-Marts business for about 20 years and has been stationed at a number of different stores across Victoria. Mr Thomas gave evidence that, in his experience, a typical Bob Jane T-Marts store will serve hundreds of customers each year who visit the store looking for alloy wheels. Customers who come to a store to purchase alloy wheels are making a carefully considered choice. The typical cost of a set of alloy wheels and matching tyres will be several thousand dollars. Typically, customers want a set of alloy wheels that will enhance the appearance of their motor vehicle, something that will make it look more sporty and edgy. Hence, it is typical in the industry to use product names for alloy wheels such as Monster, Raptor, Venom, Stealth, Rockstar and Bandit, which help to evoke the sporty, edgy flavour which customers are seeking. In Mr Thomas' experience, most customers for alloy wheels are males across a wide band of ages and have investigated different styles and varieties of alloy wheels that are available on the internet before coming into a Bob Jane T-Marts store. 133 Mr Prinzi is the General Manager for PDW Group in Australia. PDW Group is an international alloy wheel and tyre manufacturer founded in 1983. It has a distribution network in over 60 countries, including Australia. It commenced trading in Australia in 2007 and Mr Prinzi has remained with PDW Group since then. Before joining PDW Group, Mr Prinzi was employed in other automotive wheel businesses. In Australia, PDW Group is a wholesale supplier of tyres and alloy wheels that are sold through Bob Jane T-Marts and many other wheel and tyre retailers such as Bridgestone, Beaurepaires, Goodyear and Tyrepower. Mr Prinzi gave evidence that the experience of Mr Thomas, described in the preceding paragraph, was typical for all retailers in the Australian market in his experience. In particular, the process of consumers purchasing alloy wheels tends to involve some time, with consumers paying particular attention to the aesthetic, functional aspects and cost of the alloy wheels they are considering.
3.6 The Bob Jane mark 134 Two of the RJR marks refer to the Bob Jane website address (bobjane.com.au) and thereby incorporate the Bob Jane mark. RJR argues that this further diminishes the possibility of confusion arising from the use of those marks because of the notoriety or familiarity of the Bob Jane mark. Mr Jane gave the following evidence about the Bob Jane T-Marts business. 135 As stated earlier, the Bob Jane T-Marts business, now owned by Bob Jane Corporation, was founded by Mr Jane's father, Robert Frederick Jane. Today, the Bob Jane T-Marts business consists of company owned stores and franchised stores. As at January 2015, there were approximately 135 stores across Australia. 136 Bob Jane Corporation is the registered proprietor of a number of trade marks in Australia, most of which incorporate the words "Bob Jane". Since at least the early 1980's, the Bob Jane mark has been an important component of the marketing and branding strategy of the Bob Jane T-Marts business. The forms of media in which the Bob Jane T-Marts business has been promoted throughout Australia by reference to the Bob Jane mark include store signage, catalogues, online and printed directories, newspapers, magazines, television, sponsorship of major motorsport events, the internet, Bob Jane T-Marts staff uniforms, branded products, trade shows and promotional giveaways. By way of elaboration: (a) Since at least the 1980's, outlets for the Bob Jane T-Marts business (whether company owned or franchised stores) have used signage that bears the Bob Jane mark in prominent positions. (b) Since at least the late 1980's, catalogues have been used to promote the Bob Jane T-Marts business and the products and services offered. The catalogues have been produced every month or so and have been distributed through all State and Territory capital cities as well as major regional cities such as Ballarat, Launceston and Albany. The catalogues are generally distributed in national newspapers. (c) Since at least the 1980's, the Bob Jane T-Marts business has been advertised in newspapers throughout Australia. The business has also been promoted through television commercials on free-to-air television stations throughout Australia usually (but not exclusively) at prime time. (d) Since at least the early 1980's, the Bob Jane T-Marts business has maintained directory listings in the printed Yellow Pages and White Pages telephone directories published in each of Australia's capital cities and regional centres (where there are Bob Jane T-Marts stores). (e) From time to time, Bob Jane Corporation has been a major sponsor or naming rights sponsor for major Australian motorsport events such as, from 2002 to 2004, the Bathurst V8 Supercars event and, from 1999 to 2003, the Qantas Australian Grand Prix. In addition, Bob Jane Corporation has in the past sponsored, and continued to sponsor, individual racing cars and drivers in a number of categories at events like the V8 Utes, Carrera Cup, Fujitsu V8 Racing and the V8 Supercars series. As part of that sponsorship, the relevant racing cars bear the Bob Jane mark. (f) The Bob Jane T-Marts business is also promoted through the Bob Jane website with the address www.bobjane.com.au. Data extracted from Google Analytics by Ms Zalatnai shows that in the period October 2013 to January 2015, the total number of users of that website was approximately 2.5 million and the total number of page views was approximately 11.5 million. 137 The evidence establishes that the Bob Jane T-Marts business is a well-known business in Australia supplying wheels and tyres to consumers.
3.7 Disposition of the section 60 issue - there is no likelihood of deception or confusion 138 As stated earlier, MEC's opposition under s 60 is based on 3 contentions: that the essential feature of the MEC marks is the word "Monster"; that the MEC marks are strongly associated with motorsports and other extreme sports, and it is a brand that is marketed as edgy and aggressive; as a result the use of the RJR marks, which feature the word "Monster", in connection with automotive alloy wheels is likely to deceive or cause confusion. Senior counsel for MEC acknowledged that there were sufficient differences between the RJR marks and the MEC marks that an ordinary consumer would not confuse them. However, MEC argued that there was a real and tangible risk that the ordinary consumer would wonder whether there was a commercial association between the alloy wheels bearing the RJR marks and MEC. 139 In my view, the evidence establishes that the use of the RJR marks, considered separately, would not be likely to deceive or cause confusion because of the reputation of any of the MEC marks. That conclusion is supported by the following factors. 140 First, while the word "Monster" is an integral part of MEC's corporate name and "Monster Energy" brand, the word on its own does not have a strong reputation. Rather, it is MEC's device marks, and the word mark "Monster Energy", which carry its reputation. That is not to say that the use of the mark "Monster" by another person could never give rise to confusion. However, in my view such confusion could only arise if there were aspects of the use of the mark by the third person that suggested a connection to MEC, its products or sponsorships and that was not separately distinctive. Those features are not present in this case. 141 As submitted by RJR: This is a case where the sheer enormity of MEC's sales, and promotional and marketing activities, tells strongly against any risk that a consumer will confuse a product which is not branded as MONSTER ENERGY, and which does not feature the distinctive M-logo and the rendering of the word MONSTER in a distinctive script, with an unusual vertical line through the letter "O", as a product of MEC. In this sense, MEC is "a victim of its own success". 142 The phrase "a victim of its own success" was used by Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 at [32] in relation to the brand "Maltesers". The phrase is used in a figurative sense because the relevant company, here MEC, is hardly a victim, being so successful from a sales and marketing perspective that consumers in general are familiar with its product. 143 The evidence establishes that the word "Monster" has been registered as a trade mark in Australia in respect of a vast array of products. It is an ordinary English word which conveys a range of meanings such as large, strong or wild. 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. 144 In my view, the word "Monster" is not distinctive of MEC, its products or sponsorships. That is not to say that MEC does not have any reputation in the word "Monster". MEC inevitably has some reputation because, as it submitted, the word "Monster" is an integral part of MEC's corporate name and brand. However, the risk of deception or confusion from the use of the word "Monster" as a mark by another person is dependent on the appearance of the other mark, the goods in respect of which it is used and the related context in which it is used. 145 Second, in this case, none of the RJR marks bears any resemblance to any of the MEC marks. That is shown by a simple visual comparison of the marks and requires little elaboration. The RJR marks are reproduced below: No 1670840 No 1670841 No 1670842
146 RJR marks 840 and 842 contain 3 elements, while mark 841 contains 2 elements. The first element, which features prominently in each of the marks, is the stylised depiction of a monster, with two eyes separated from the remainder of its body, comprising two large wings or arms and two small legs. The shape of the monster is broadly circular. It is distinctive and entirely different to the MEC device marks. The second element, which features prominently in marks 840 and 841, and less prominently in mark 842, is the word "Monster". It is that element which lies at the heart of MEC's opposition. However, the marks use the word "Monster" in a plain font and in conjunction with the monster image, removing any real or tangible risk of confusion with MEC. The third element, in marks 840 and 842, is the text BOBJANE.COM.AU. That text makes plain that the mark is connected with the well-known Bob Jane T-Marts business. As to overall visual appearance, marks 840 and 841 are rendered in a horizontal orientation, while mark 842 is rendered in a circular shape. 147 Apart from the word "Monster", the RJR marks do not share any of the distinctive features of the MEC device marks, nor do they use the word "Energy". The M-icon has the appearance of a claw mark made by a figurative monster. It is both jagged and vertically elongated in its appearance. The device marks which incorporate the words "Monster Energy" adopt a distinctive script that is suggestive of Gothic script. 148 Third, the RJR marks are used on alloy wheels. The evidence establishes that alloy wheels are the types of products which are purchased by engaged consumers, making carefully considered purchasing decisions, at a premium price. The typical cost of alloy wheels and matching tyres will be upwards of $2,000. 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. 149 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. However, that reputation does not carry across to alloy wheels. 150 Overall, MEC has failed to satisfy me that the use of the RJR marks is likely to deceive or cause confusion because of the reputation of the MEC marks. In my view, there is no real or tangible prospect of that occurring. 151 It also follows that MEC's opposition under s 42(b) fails. In my view, the use of the RJR marks does not contravene ss 18 or 29 of the ACL.
4.1 Affidavit of Emily Elizabeth Maartensz 153 RJR objected to paragraphs 42 to 74 to the affidavit of Emily Elizabeth Maartensz affirmed 5 October 2018 and the exhibits referred to in those paragraphs. On 7 March 2019, I ruled that those paragraphs and exhibits were inadmissible. The reasons for that ruling follow. 154 Paragraphs 42 to 74 of Ms Maartensz's affidavit concerned internet, Facebook and Instagram searches undertaken by Ms Maartensz and the results of those searches which were exhibited to the affidavit. With one exception, the evidence was sought to be adduced by MEC to prove that automotive wheels bearing an MEC mark had been offered for sale or sold in Australia. The one exception was a Facebook page which depicted an alloy wheel bearing one of the RJR marks. 155 As discussed earlier in these reasons, MEC adduced evidence that, since 2011, it had licensed a third party, ATD, to manufacture and distribute automotive wheels bearing an MEC mark. A copy of the 2013 licence agreement between MEC and ATD was adduced in evidence. Evidence was also given that ATD distributed those wheels throughout the United States, including through a distributor called "TIS Wheels". 156 Ms Maartensz's online searches fell into a number of categories and it is convenient to consider each of these categories separately. 157 The first category of evidence comprised recent internet searches performed by Ms Maartensz (during September or October 2018) of certain websites that appeared to offer for sale wheels and tyres for automobiles as at the date of the searches. By way of illustration of the first category, one such website had the URL https://www.superperformance.com.au. Ms Maartensz conducted searches of the website in September 2018. She exhibited screenshots of the home page, which represented that Superperformance was a supplier of automotive parts. Ms Maartensz clicked on the "About Us" link and exhibited the results. The page states that the business has been supplying various types of automotive parts since 1979. Ms Maartensz used a search function on the home page and typed in the words "Monster" and exhibited screenshots of the results. Ms Maartensz then clicked on one of the results labelled TIS Wheels and exhibited screenshots of that page. The page appeared to offer for sale automotive wheels produced by TIS wheels which was said to be an American wheel manufacturer. One of the TIS wheels displayed an MEC mark. Ms Maartensz also conducted a "WhoIs" search at the website https://whois.auda.org.au for the domain name "superperformance.com.au" and exhibited a screenshot of the result of that search which represented that the registrant of the domain name was Superperformance Pty Ltd and the contact email was grant@superperformance.com.au. Ms Maartensz then conducted an ASIC search of Superperformance Pty Ltd and exhibited the results which recorded Grant Malseed as the sole director and secretary. 158 The key attribute of this category of evidence is that it concerned offers for the sale of wheels after the priority date. It was not evidence of offers that were current at or before the priority date. Although the "About Us" page contained statements to the effect the business had been operating since 1979, there was no evidence about the period during which the website had been functioning, and no evidence that TIS Wheels bearing an MEC mark had been offered for sale on the website before the priority date. 159 The evidence that fell within this first category comprised the following paragraphs of Ms Maartensz's affidavit and the accompanying exhibits: 42-44 (the Superperformance website), 45-47 and 50 (the Sin City Rims website), 56-60 (the Street Art Wheels website), 61-63 and 65 (the CARiD website), 67-68 (the Hubcap, Tire and Wheel website) and 70-71 (the Monza Imports website). The products offered for sale on the Monza Imports website comprised motorbikes and related articles some of which bore an MEC mark, as opposed to automotive wheels, but the common feature of the evidence is that it concerned offers for sale after the priority date. 160 The second category of evidence comprised recent internet searches performed by Ms Maartensz (during September or October 2018) using the website https://web.archive.org/ (known as the "Wayback Machine") and searches for historical versions of webpages using the functionality of the "archive" website. By way of illustration, Ms Maartensz visited the "archive" website and searched for the URL https://www.sincityrims.com.au/. She exhibited a screenshot of the results of that search. The screenshot depicted a webpage titled "Internet Archive Wayback Machine" with an adjacent statement: "Explore more than 338 billion webpages saved over time". Beneath that statement, the words "Saved 38 times between April 9, 2013 and August 12, 2018" appear, representing that the "archive website" had purportedly captured a record of the Sin City Rims website on 38 occasions during that period. The webpage also depicted a calendar function which enabled each of the 38 dates to be searched to retrieve the captured record of the website. Ms Maartensz clicked on the 23 December 2014 link and exhibited a screenshot of the webpage that appeared as a result of that search. From the webpage, Sin City Rims appeared to be a business that sold automotive wheels. Amongst other things, the webpage depicted a number of brands of wheels or tyres under a heading "Brands", including MEC's M-icon device mark. Ms Maartensz then clicked on the date 28 March 2015 within the timeline and exhibited a screenshot of the webpage that appeared as a result of that search. The webpage displayed offers of wheels, at least one of which bore an MEC mark. Ms Maartensz then clicked on the date 14 January 2014 within the timeline and exhibited a screenshot of the webpage that appeared as a result of that search. She then clicked an eBay link on that page and exhibited a screenshot of the webpage that appeared as a result of that search. The resulting page was dated 6 June 2014, rather than 14 January 2014, indicating that the link on the Sin City Rim webpage that had purportedly been archived did not operate in its original manner. The eBay page displayed offers of wheels, a number of which bore an MEC mark. 161 The key attribute of this category of evidence is the use of the "Wayback Machine" to generate purported historical versions of webpages before the priority date. The evidence that fell within this second category comprised the following paragraphs of Ms Maartensz's affidavit and the accompanying exhibits: paragraphs 48-49 (the Sin City Rims website), 64 and 69 (the CARiD website) and 69 (the Hubcap, Tire & Wheel website). 162 The third category of evidence comprised recent internet searches performed by Ms Maartensz (during September or October 2018) using the Facebook or Instagram links attached to particular websites and searching for current and historical "posts" from those Facebook or Instagram accounts. By way of illustration, Ms Maartensz visited the "Sin City Rims" website in September 2018, clicked on the "Facebook" link and exhibited a screenshot of the landing page for the Sin City Rims Facebook page. That page appeared to depict recent posts. Ms Maartensz then clicked on the "posts" function on the page and, using a search function on the page, typed the word "Monster Energy" and exhibited a screenshot of the results. Amongst other results, this produced a page purportedly depicting a number of posts dated 28 January 2015. The first post contained a picture of a vehicle with a caption "Jarred's PX Ranger rolling out 17x9 Monster Energy 535BM's. Cheers for the pic Jarred." I infer that the post was made by Sin City Rims, but the picture had been sent to Sin City Rims by "Jarred". A subsequent post contained a picture of a vehicle showing a wheel bearing an MEC mark with a caption stating "Jase's FJ & a set of Monster Energy rims…Very nice". Again, I infer that the post was made by Sin City Rims, but I am unable to determine who took the photo. MEC would wish me to infer that these posts are evidence of the fact that Sin City Rims sold wheels to "Jarred" and "Jase" bearing an MEC mark prior to the date of the posts, being 28 January 2015. 163 The key attribute of this category of evidence is the use of the Facebook and Instagram platforms to search within particular accounts and generate historical posts to those accounts. The evidence that fell within this third category comprised the following paragraphs of Ms Maartensz's affidavit and the accompanying exhibits: 51-52 (the Sin City Rim Facebook account) and 54 (the Tuff AT Wheels Australia Instagram account). 164 The fourth category of evidence comprised recent internet searches performed by Ms Maartensz (during October 2018) on the website https://issuu.com/. Ms Maartensz first conducted searches of the website http://www.monzaimports.com.au/. The website indicated that it sold a range of products, including products in a category called "Moto Division". Ms Maartensz followed links to that section of the website and downloaded current (dated 2018) catalogues titled "Bell Helmets" (which offered for sale motorcycle helmets bearing an MEC mark, amongst others), "FOX M19" (which offered for sale motorcycle clothing bearing an MEC mark, amongst others) and "Pro-Circuit" (which offered for sale motorcycle parts, clothing and accessories bearing an MEC mark, amongst others). I address the admissibility of the current catalogues in connection with the first category of evidence. When searching the Monza Imports website, Ms Maartensz observed that the product catalogues displayed on the website were displayed using an embedded reader called "Issuu". Ms Maartensz then visited that website, typed Monza Imports into the search function and exhibited screenshots of the results. Following further links produced what purported to be historical versions of various catalogues, including the Pro-Circuit and Fox catalogues, in the period before the priority date. The key attribute of this category of evidence is the use of the "Issuu" website to generate what purported to be historic versions of product catalogues. 165 RJR objected to those paragraphs of Ms Maartensz's affidavit on three grounds: (a) the evidence was irrelevant under s 56 of the Evidence Act 1995 (Cth) (Evidence Act); (b) the evidence was inadmissible hearsay under s 59 of the Evidence Act; and (c) the evidence ought be excluded under s 135 of the Evidence Act on the basis that the probative value was substantially outweighed by the danger that the evidence might be unfairly prejudicial to RJR. 166 It is convenient to address each ground of objection separately.
Relevance 167 As to relevance, RJR submitted that the relevant date at which the grounds of opposition must be established is the priority date, 21 January 2015. It followed that a webpage of a business that offered automotive wheels bearing an MEC mark as at 18 September 2018 is irrelevant to the statutory question, which required consideration of the position as at the priority date. As noted earlier, MEC also accepted that the grounds of opposition must be established as at the priority date. 168 I accept RJR's submission that webpages that purported to offer automotive wheels bearing an MEC mark as at 18 September 2018 are irrelevant to the statutory question. For that reason, the paragraphs of Ms Maartensz's affidavit in the first category referred to above, and the accompanying exhibits, are inadmissible on the ground of relevance.
Hearsay 169 All of the website pages sought to be adduced in evidence are hearsay. They are evidence of previous representations and are adduced to prove the facts asserted by the representations. In broad terms, the previous representations were that various products, particularly automotive wheels, bearing an MEC mark were offered for sale on various websites in Australia. 170 MEC submitted that the webpages came within the business records exception in s 69 of the Evidence Act. Relevantly, to satisfy the business records exception, three matters must be shown: (a) first, that the document either is or forms part of the records belonging to or kept by a person, body or organisation in the course of, or for the purposes of, a business, or at any time was or formed part of such a record; (b) second, that the document contains a previous representation made or recorded in the document in the course of, or for the purposes of, the business; and (c) third, the relevant representation in the document was made by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact, or was made on the basis of information directly or indirectly supplied by such a person. 171 The admissibility of website pages under the business records exception has been considered in a number of cases. 172 In Roach v Page (No 27) [2003] NSWSC 1046, Sperling J ruled inadmissible extracts from the websites of two businesses which described the quality control procedures undertaken by each business. His Honour referred to his earlier ruling in Roach v Page (No 15) [2003] NSWSC 939 in which his Honour had observed that not every publication by a business is a "record of the business" within the meaning of s 69. In the earlier ruling (at [5] and [6]), his Honour concluded that: The records of the business are the documents (or other means of holding information) by which activities of the business are recorded. Business activities so recorded would typically include business operations so recorded, internal communications and communications between the business and third parties. On the other hand, where it is a function of a business to publish books, newspapers, magazines, journals (including specialised professional, trade or industry journals), such publications are not records of the business. They are the products of the business, not a record of its business activities. Similarly, publications kept by a business such as journals or manuals (say, for reference purposes) are not records of the business. 173 In Roach v Page (No 27), Sperling J concluded that a flyer, media advertisement or a website publication, extolling the virtues of the business, is not a record of a business within the meaning of s 69. 174 The reasoning of Sperling J in Roach v Page (No 15) and Roach v Page (No 27) has been cited on many occasions, including in Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 75 IPR 505 at [133] per Middleton J; National Telecoms Group Ltd v John Fairfax Publications Pty Ltd (No 1) [2011] NSWSC 455 at [70]-[71] per Davies J; McMahon v John Fairfax Publications Pty Ltd (No 4) [2012] NSWSC 216 at [22]-[26] per McCallum J; and ACCC v Air New Zealand Limited (No 5) (2012) 301 ALR 352 per Perram J (ACCC v Air New Zealand Limited (No 5)). 175 Sperling J's rulings were, of course, directed to the specific types of documents in issue before him. In Southern Cross Airports v Chief Commissioner of State Revenue [2011] NSWSC 349, Gzell J cautioned against applying Sperling J's reasoning as a rule of law in place of the statutory test, stating (at [41]-[44]): I do not understand Sperling J to have spoken categorically about what constituted a business record. In addition to the documents by which activities of a business are recorded I would include as business records documents relevant to the conduct of the business. The introductory words of s 69(1)(a)(i) of the Evidence Act that the provision applies to a document that is, or forms part of, the records belonging to or kept in the course of, or for the purposes of a business, encompasses more than documents recording the activities of a business. For example, a valuation of the assets of a business for insurance purposes or for the purpose of determining appropriate depreciation rates does not record the activities of a business but it is kept in the course of, or for the purposes of, the business. It is preferable, in my view, not to seek to define a business record but to be guided to a decision whether or not a document is a business record by the terms of the statutory provision itself. 176 Similarly, in Charan v Nationwide News Pty Ltd [2018] VSC 3, Forrest J observed (at [463]): …the distinction between "product" and "records" is problematic. It does not appear in the text of s 69(1). The language used in the provision is broad and appears to encompass any documents kept by a person, body or organisation "in the course of, or for the purposes of" a business. To exclude documents that are part of the records of an organisation, however generated and for whatever purpose under this provision (as opposed to a subsequent discretionary exclusion under s 135) involves, I think, an artificial distinction not covered by the wording of the section. 177 As recognised by Perram J in both ACCC v Air New Zealand Limited (No 5) and Voxson Pty Ltd v Telstra Corporation Limited (No. 10) (2018) 134 IPR 99 at [37] (Voxson), there is no invariable rule that pages of a website are not business records within the meaning of s 69. Ultimately, whether the results of an internet search can be shown to be a business record within the meaning of s 69 depends upon the content of the webpage and what is able to be established (whether directly or by inference) about the content of the page. Business records include invoices (as per Asden Developments Pty Ltd (in liq) v Dinoris (No 2) (2015) 235 FCR 382 at [11]-[16] per Reeves J) and contractual terms and conditions and customer communications (as per Dowling v Commonwealth Bank of Australia [2008] FCA 59 at [13], [15] per Reeves J). 178 In my view, documents by which a business offers a product for sale, which typically includes a description of the product and the price and possibly other terms and conditions of the offer, would constitute business records within the meaning of s 69. That would be so whether the documents are made available to potential customers via the company's website or in the company's retail store. However, documents which are merely promotional or descriptive of the activities of a company, such as might be found on an "About Us" link on a website, are unlikely to constitute business records, consistently with the conclusions reached in Roach v Page (No 27) and ACCC v Air New Zealand (No 5). 179 Historic webpages generated through the use of the "Wayback Machine" have been ruled inadmissible in a number of cases: see for example E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69 at [126] per Flick J; Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2) [2017] FCA 474 at [23] per Mortimer J; and Voxson at [36]-[37] per Perram J. As observed by Perram J in Voxson, the Wayback Machine website conveys an implicit representation that the website has copied third party webpages into its archive and recorded the date on which it did so and that the webpage which appears in its archive is the webpage which existed on that date. As such, documents produced using the Wayback Machine are necessarily hearsay (indeed, second hand hearsay in the sense that the archived webpage is itself hearsay). In each of the cases referred to above, the business records exception in s 69 was not satisfied as there was no admissible evidence to establish that the archived webpages formed part of the records of the business conducted by the Wayback Machine or that the webpages were created by someone who might be expected to have had personal knowledge of the facts which had been recorded. 180 Turning to the evidence in dispute, it is unnecessary to consider in detail the first category of evidence because I have ruled that it is irrelevant. I observe, though, that if the webpages were relevant, I would have admitted the evidence in so far as it consisted of webpages offering products for sale and where the existence and identity of the business conducting the website was proved. 181 The second category of evidence comprised archived webpages generated by the use of the Wayback Machine. No evidence has been adduced concerning the business of the Wayback Machine. In the absence of such evidence, and consistently with the decisions referred to earlier, I am not satisfied that the archived webpages are business records. I therefore rule them inadmissible. 182 The third category of evidence consists of historical "posts" on Facebook and Instagram accounts maintained by a business. This category raises difficult questions. It is necessary to consider each of the three elements of the definition of business records. 183 The first element is whether the Facebook and Instagram posts sought to be adduced in evidence are or form part of the records belonging to or kept by an entity in the course of, or for the purposes of a business, or at any time were or formed part of such a record. In a business context, the posts are communications by the business concerned to persons who follow the Facebook or Instagram account of the business. I infer that such followers would be past or potential future customers of the business. Taking the Sin City Rims Facebook posts as an example (described above), the posts are not a direct record of a business activity; drawing necessary inferences in favour of MEC, the posts are a form of promotion, publicising the sale of "Monster Energy" wheels. While email communications of a business have been found to be business records (see ACCC v Air New Zealand Limited (No 1) (2012) 207 FCR 448 at [58] per Perram J and the cases there cited), the Sin City Rims Facebook posts are of a different nature in that they are not communications to specific persons but are published more broadly to "followers". Nevertheless, applying the statutory language, it seems to me that the Sin City Rims Facebook posts are documents that form part of the records belonging to or kept by Sin City Rims in the course of or for the purposes of its business. The posts are a record of the communications made by the business to its followers, and are analogous to emails that might be sent to a customer distribution list. 184 The second element is whether the Facebook and Instagram posts contain a previous representation made or recorded in the document in the course of, or for the purposes of, the business. For the reasons already given, I am prepared to find that this second element is also satisfied. I infer that the posts are communications by the business concerned directed to potential customers of the business. However, a more difficult question is to determine what is being communicated by the post, which is relevant to the third element of the definition of business records. MEC asks me to infer that the pictures posted to the Facebook or Instagram accounts display vehicles with wheels bearing an MEC mark sold by Sin City Rims prior to the date of the posts. Certainly that inference is open. But without further evidence, other inferences are also open. It may be that the pictures uploaded to the Facebook and Instagram accounts are pictures taken by "followers" of the businesses concerned, showing products of general interest to the business and other followers, but which were not purchased from the business concerned. 185 The third element is whether the previous representation in the document was made by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact, or was made on the basis of information directly or indirectly supplied by such a person. There are a number of difficulties in satisfying this element in the present case. The first difficulty is identifying what the representation is. The second difficulty, associated with the first, is identifying the source of, and the background to, the photos and information in the posts. As noted above, I infer from the posts that the photos of vehicles that are depicted originated from a third person (Jarred and Jase respectively). That fact does not exclude the application of s 69 (Vitali v Stachnik [2001] NSWSC 303 at [8] per Barrett J). However, given the nature of the Facebook and Instagram posts, there is no basis for the Court to make any clear finding as to what is represented by the post and whether the representation was made by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact, or was made on the basis of information directly or indirectly supplied by such a person. 186 Accordingly, I am not satisfied that the Facebook and Instagram posts are business records and I rule them inadmissible. 187 The fourth category of evidence comprises product catalogues which contained descriptions of various motorcycle related products apparently being offered for sale, some of which bore an MEC mark. In my view, such documents are capable of constituting business records. However, the documents were retrieved from a website called Issuu and there is no evidence concerning that website or any business conducted by it. There is no evidentiary basis to find that the catalogues are business records of Issuu. Nor is there any evidence as to the identity or operation of the businesses that published the catalogues, nor is there any evidence as to whether, where, when and how any such catalogues were made available to members of the public in Australia. For that reason, I am not satisfied that the catalogues are business records and I rule them inadmissible.
General discretion to exclude evidence 188 RJR also submitted that each of the categories of website evidence ought to be excluded under s 135 of the Evidence Act. RJR submitted that the probative value of the evidence was slight for the reason that there was no evidence as to the nature of the businesses that operated the websites, how many customers they might have, or how many people visited their website in a given period. RJR also submitted that admitting the evidence would be unfairly prejudicial to it because it has no opportunity to test the evidence. 189 I accept the submission that the probative value of the contested evidence is slight. At its highest, it presents a snapshot of instances in which automotive wheels or motorcycle related products have been offered for sale and possibly sold in Australia bearing an MEC mark. There is no basis on which to assess the scale of any such offers or sales. For that reason, the evidence has very little probative value to an assessment of the reputation of the MEC marks in Australia. 190 On the other hand, I am not generally persuaded that the admission of the evidence might be unfairly prejudicial to RJR. This is a civil proceeding where the onus rests on MEC. The evidence will be given such weight as it deserves, recognising its shortcomings. Further, it is not entirely the case that RJR could not test the evidence. The evidence was adduced to prove that particular businesses had offered for sale and possibly sold various products in Australia bearing an MEC mark. If it chose, RJR could have subpoenaed the various businesses referred to in the evidence to obtain records of any sales of products bearing an MEC mark. Understandably, RJR has chosen not to do that. But I do not consider that RJR was unable to test the evidence. As such, if the evidence had otherwise been admissible, I would not have exercised the discretion to exclude it under s 135.
4.2 Affidavit of Ben Keith Fraser 191 MEC objected to the whole of the affidavit of Ben Keith Fraser sworn 21 November 2018, other than paragraphs 1 and 50 to 57, on the grounds of relevance and hearsay. Alternatively, MEC asked me to exclude the evidence under s 135. RJR did not read paragraph 73. On 15 April 2019, I ruled inadmissible the following paragraphs and the exhibits thereto: 4-7, 9-13, 15, 22, 23, 25, 26, 28, 30, 32, 33, 35, 38, 39, 42, 44, 46, 48, 58-67, 69 and 71-76. These are my reasons for that ruling. 192 Mr Fraser gave evidence of internet searches he conducted on 23 October 2018 and exhibited screenshots of the results of his searches to his affidavit. Mr Fraser visited the homepage of IP Australia, clicked the "Search trade marks" link and typed the word "Monster" into the search function, producing 816 results. He then filtered the results to "trade mark words" and "registered" status, which reduced the number of results to 246, and exhibited the list of results. Mr Fraser then clicked on the links to several of the listed trade marks, and exhibited a printout of the trade mark details from IP Australia. The details included a depiction of the trade mark, the priority date and the registration date and the goods or services in respect of which the mark was registered. 193 In addition, in respect of some of the listed trade marks, Mr Fraser conducted internet searches of the name of the owner of the mark and/or the mark using Google. By way of illustration, Mr Fraser conducted a search of "Monster Cable", locating a website https://monsterproducts.com.au/, purportedly the Australian website for Monster Cable which described the entity as the largest headphone manufacturer in the world. Mr Fraser then clicked on the "Our Story" tab and exhibited a screenshot of the results, including a page that promoted its collaboration with several brands including the automobile brand Lamborghini. Mr Fraser exhibited screenshots of several other pages of the website that contained promotional descriptions of the business under the "About Monster" link. Mr Fraser repeated this exercise in respect of several other "Monster" marks. In respect of some of the websites visited, Mr Fraser exhibited screenshots of products offered for sale by the business via the website. However, none of the webpages, and therefore none of the offers, were dated before the priority date. 194 RJR submitted that the evidence was adduced to prove the extent to which the word "Monster" had been used by traders in Australia as a trade mark before the priority date. It was submitted that such evidence was relevant to the nature and extent of MEC's reputation in the word "Monster" in the marketplace. To illustrate, it was said that if the evidence showed that there had been extensive use of the word "Monster" as a mark in respect of alloy wheels, and if MEC had not used its marks in that product category, it would be open to the Court to conclude that a notional consumer would not associate the use of the word in that category with MEC. RJR acknowledged that the evidence obtained from the IP Australia website, showing registration of marks, did not directly prove use or extent of use of the marks. However, it submitted that many of the marks were registered before the priority date, in some cases 20 or 30 years earlier, and the Court could draw an inference that at least some of the marks had been used before the priority date. RJR also submitted that the evidence demonstrated that a large number of traders had adopted the name "Monster" with the intention of using the name as a trade mark. RJR also acknowledged that none of the website pages of the businesses that used the "Monster" marks predated the priority date. However, it submitted that the Court could infer that the marks had been used before the priority date because the registration of the marks had been in place well before the priority date. 195 The evidence can be divided into two categories. The first category is the result of searches conducted on the IP Australia website of the trade mark registrations. The objection is that the evidence is irrelevant because registration does not prove use or extent of use before the priority date. I will allow the evidence. I accept that its probative value is limited. Nevertheless, I infer that many of the traders who have registered a "Monster" mark have used the mark at least to some extent, and it follows that there are a significant number of traders who have adopted the "Monster" mark. Although I have not excluded the evidence on the ground of relevance, the evidence has not been material to my overall conclusions in this case. 196 The second category of evidence is the result of Google searches of the name of the owner of the mark and/or the mark. The objection is that the evidence is irrelevant (because it shows use of the marks after the priority date) and is hearsay. I uphold those objections and will not admit that evidence. First, many of the webpages are promotional and descriptive of the businesses (downloaded from the 'About Us' sections of websites). For the reasons explained earlier, such material is inadmissible hearsay. Second, in so far as the webpages are in the nature of offers for products, those offers show use of the marks after the priority date and I cannot infer from the evidence that the relevant company used the marks in a similar manner before the priority date. The evidence is irrelevant for that reason. That evidence is contained in the paragraphs of the affidavit I have ruled inadmissible, and the exhibits thereto.
4.3 Affidavit of Zsuzsanna Zalatnai 197 MEC objected to paragraphs 6 and 7 of the Affidavit of Zsuzsanna Zalatnai sworn 20 November 2018 and exhibit ZZ-3 on the ground of hearsay. On 15 April 2019, I ruled that evidence to be admissible. These are my reasons for that ruling. 198 Ms Zalatnai is the National Marketing Manager for Bob Jane T-Marts. Ms Zalatnai gave evidence that she had collated from Bob Jane T-Marts' computer system data concerning the number of visitors to the Bob Jane website and to pages of that website which featured "Monster" wheels. That data was recorded in exhibit ZZ-3. In further oral evidence in chief, Ms Zalatnai stated that exhibit ZZ-3 was a document printed out from Google Analytics, which was used by Bob Jane T-Marts for measuring traffic to the Bob Jane website. Ms Zalatnai stated that Bob Jane T-Marts had a Google Analytics account which gave access to the information presented in the document. She also stated that Bob Jane T-Marts used the data obtained from Google Analytics to make marketing decisions as to what would be displayed on the Bob Jane website. Bob Jane T-Marts used the data for ongoing marketing campaigns. 199 Exhibit ZZ-3 is hearsay. It is evidence of previous representations (data relating to visits to the Bob Jane website) adduced to prove the facts asserted by the representations. MEC submitted that the document did not come within the business records exception in s 69 of the Evidence Act, in part because it had been prepared in contemplation of litigation within the meaning of s 69(3). 200 Data obtained from Google Analytics by businesses operating websites has been admitted into evidence in a number of cases: Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 at [56]-[57]; Vendor Advocacy Australia Pty Ltd v Seitanidis (2013) 103 IPR 1 at [115]; Pedavoli v Fairfax Media Publications Pty Ltd (2014) 324 ALR 166 at [133]-[134] (Pedavoli); Brooks v Fairfax Media Publications Pty Ltd [2015] NSWSC 986 at [7]; Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd (2017) 127 IPR 1 at [57]-[60], [66]-[68], and [111]; and Pham Global at [62] and [77]. However, in most of those cases, there was no challenge to admissibility. 201 In Pedavoli, an objection was taken to the admissibility of a document recording Google Analytics data. McCallum J concluded that the document was admissible as a business record of the entity that operated the website. Her Honour concluded that the document formed part of the records belonging to the entity for the purposes of its business. Her Honour also found that the document was produced by a computer (using Google Analytics). In accordance with s 146 of the Evidence Act, her Honour considered that it was reasonably open to find that the process used is one that, if properly used, produces the outcome of identifying the number of website page views on the dates in question. 202 With respect, I agree with the conclusions expressed by McCallum J. Although no direct evidence was adduced in relation to the Google Analytics service, I infer from the evidence of Ms Zalatnai and exhibit ZZ-3 that Google Analytics is a service supplied by Google to individual businesses which tracks and records traffic to the business' website. Ms Zalatnai gave evidence that Bob Jane T-Marts has an account with Google Analytics and is able to retrieve such data through the account. Ms Zalatnai also gave evidence that Bob Jane T-Marts uses the data in the course of and for the purposes of the business at Bob Jane T-Marts. 203 I am satisfied that exhibit ZZ-3 satisfies the requirements of the business records exception. Although the data is apparently stored by Google Analytics, and only comes into the possession of Bob Jane T-Marts when it is accessed through the Bob Jane T-Marts account, it is data kept by Google Analytics for Bob Jane T-Marts and is accessible by Bob Jane T-Marts whenever it chooses to access it. The data therefore forms part of the records belonging to Bob Jane T-Marts in the course of and for the purposes of its business. The document contains a previous representation made or recorded in the course of and for the purposes of the business of Bob Jane T-Marts and, given the nature of the Google Analytics service, I infer that the relevant representations in the document were made on the basis of information indirectly supplied by a person who had or might reasonably be supposed to have had personal knowledge of the underlying facts. 204 In my view, s 69(3) is not applicable to exhibit ZZ-3. I infer from the evidence of Ms Zalatnai and exhibit ZZ-3 that Bob Jane T-Marts' account with Google Analytics pre-dated this proceeding. The underlying data was recorded and stored by Google Analytics for Bob Jane T-Marts in an ongoing capacity and the underlying data (which is the relevant representation in the document) was not prepared or obtained for the purpose of conducting, or for or in contemplation of or in connection with, a proceeding. 205 Accordingly, in my view paragraphs 6 and 7 of, and exhibit ZZ-3 to, the Affidavit of Ms Zalatnai are admissible.
Rodney Jane Racing Pty Ltd
Monster Energy Company
Pty Ltd (2008) 171 FCR 579 Hills Industries Ltd v Bitek Pty Ltd (2011) 214 FCR 396 Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 Jafferjee v Scarlett (1937) 57 CLR 115 Jones v Dunkel (1959) 101 CLR 298 Lodestar Anstalt v Campari America LLC (2016) 244 FCR 557 Manly Council v Byrne [2004] NSWCA 123 Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 McCormick & Co Inc v McCormick (2000) 51 IPR 102 McMahon v John Fairfax Publications Pty Ltd (No 4) [2012] NSWSC 216 Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd (2017) 127 IPR 1 Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 National Telecoms Group Ltd v John Fairfax Publications Pty Ltd (No 1) [2011] NSWSC 455 Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 Pedavoli v Fairfax Media Publications Pty Ltd (2014) 324 ALR 166 Pfizer Products Inc v Karam (2006) 219 FCR 585 Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 Qantas Airways Ltd v Edwards (2016) 338 ALR 134 Re Rysta Ltd's Application (1943) 60 RPC 87 Registrar of Trade Marks v Woolworths Limited (1999) 93 FCR 365 Roach v Page (No 15) [2003] NSWSC 939 Roach v Page (No 27) [2003] NSWSC 1046 RPS v R (2000) 199 CLR 620 Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 Seven Network Ltd v News Limited [2007] FCA 1062 Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2) [2017] FCA 474 Shell Company of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 Shell Company of Australia Ltd v Rohm and Haas Company (1949) 78 CLR 601 Singtel Optus Pty Ltd v Optum (2018) 140 IPR 1 Southern Cross Airports v Chief Commissioner of State Revenue [2011] NSWSC 349 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 357 ALR 15 Telstra Corp Ltd v Phone Directories Co Pty Ltd (2014) 316 ALR 590 Telstra Corporation Limited v Phone Directories Co Australia Ltd (2015) 237 FCR 388 Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 Trident Seafoods Corp v Trident Foods Pty Ltd (2018) 137 IPR 65 Vendor Advocacy Australia Pty Ltd v Seitanidis (2013) 103 IPR 1 Vitali v Stachnik [2001] NSWSC 303 Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661 Voxson Pty Ltd v Telstra Corporation Limited (No. 10) (2018) 134 IPR 99 Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297
[2018] VSC 3
(2012) 207 FCR 448
(2012) 301 ALR 352
(2014) 317 ALR 73
(2015) 235 FCR 382
(2012) 247 CLR 345
(1960) 103 CLR 391
(2018) 363 ALR 113
(2013) 308 ALR 1
(1973) 129 CLR 353
(2000) 52 IPR 42
(2018) 133 IPR 417
(2000) 202 CLR 45
(2015) 49 VR 402
(1999) 96 FCR 107
(2007) 164 FCR 506
(2004) 209 ALR 1
(2015) 115 IPR 82
(2018) 134 IPR 220
(2008) 77 IPR 69
(2010) 241 CLR 144
(2016) 118 IPR 239
(2010) 185 FCR 9
(2017) 123 IPR 234
(2013) 249 CLR 435
(2008) 75 IPR 505
(2008) 171 FCR 579
(2011) 214 FCR 396
(1999) 47 IPR 423
(1937) 57 CLR 115
(1959) 101 CLR 298
(2016) 244 FCR 557
(2009) 81 IPR 354
(2000) 51 IPR 102
(2017) 127 IPR 1
(1984) 156 CLR 414
(2010) 275 ALR 526
(1982) 149 CLR 191
(2014) 324 ALR 166
(2006) 219 FCR 585
(2017) 251 FCR 379
(1977) 137 CLR 670
(1993) 42 FCR 227
(2016) 338 ALR 134
(1999) 93 FCR 365
(2000) 199 CLR 620
(1963) 109 CLR 407
(1949) 78 CLR 601
(2018) 140 IPR 1
(1954) 91 CLR 592
(2010) 186 FCR 519
(2018) 357 ALR 15
(2014) 316 ALR 590
(2015) 237 FCR 388
(2018) 137 IPR 65
(2013) 103 IPR 1
(2012) 294 ALR 661
(2018) 134 IPR 99
(2010) 191 FCR 297