MONSTER BATTLE: Monster Energy Company v Disney Enterprises, Inc [2017] ATMO 2 (10 January 2017)

Disney Enterprises, Inc (Disney) applied for the trade mark MONSTERS UNIVERSITY for various goods and services including clothing and a wide range of food products (the goods) applied for in classes 25, 29 and 30.  MONSTERS UNIVERSITY will be familiar to anyone with a child under 12 for reasons we explain below.  Monster Energy Company (Monster Energy) opposed the application based on the use and reputation of its MONSTER trade mark. Monster Energy drinks will be familiar to anyone who gets through the day on a superabundance of caffeine.

It was clear from the evidence filed by both companies that each had a significant reputation in their respective MONSTER and MONSTERS UNIVERSITY trade marks:

  • Monster Energy’s evidence showed use of its MONSTER trade mark in relation to carbonated energy drinks sold in 114 countries worldwide including in Australia where it has been sold since 2006.  In addition Monster Energy has licensed the sale of clothing branded with the MONSTER trade mark in Australia since 2005 (which interestingly predates the sale of its energy drinks).  Monster Energy demonstrated that it also uses its MONSTER brand to sponsor various sporting heroes and events which enables it to market to sports fans who wish to “emulate their sporting heroes sponsored by MONSTER”. Although Monster Energy owns trade mark registrations for and incorporating the word MONSTER, the hearing officer regarded the registrations as “not relevant” because Monster Energy relied on its reputation in the MONSTER mark under sections 42 and 60 of the Trade Marks Act 1995 (Cth) (the Act) to oppose the MONSTERS UNIVERSITY trade mark application.
  • Disney’s evidence confirmed its reputation as a “multinational mass media and entertainment conglomerate” and producer of motion picture films.  According to the evidence, the MONSTERS UNIVERSITY trade mark is the name of an animated children’s film that was released in Australia in 2013.  It was the prequel film to the MONSTERS INC. animated film which was released in Australia in 2001.

Monster Energy claimed that, because of the reputation in its MONSTER trade mark, consumers are likely to be deceived or confused into believing that the goods sold under the MONSTERS UNIVERSITY trade mark are in fact the goods of Monster Energy or that there is some association with or endorsement by Monster Energy.

Disney conceded and the hearing officer accepted that Monster Energy had a reputation in its MONSTER trade mark as at the priority date of the MONSTERS UNIVERSITY trade mark.

With regard to similarity of the marks, Monster Energy argued that the word MONSTERS is the dominant and distinguishing feature of the mark MONSTERS UNIVERSITY and that the word UNIVERSITY is “a descriptive term”.  The hearing officer did not accept this saying that the word “university” could hardly be regarded as being descriptive of the goods in question and that the word MONSTERS actually qualifies the word UNIVERSITY as a “university for monsters”.   The hearing officer also agreed with Disney’s argument that because of the close association of Monster Energy’s trade mark with sporting heroes that consumers are likely to be sports fans who by their nature are more discerning about trade marks associated with sporting teams and individuals that they follow and this, in turn, reduces the risk of deception of confusion.  The hearing officer found that Monster Energy had not established its grounds under either sections 60 or 42 of the Act and the application for MONSTERS UNIVERSITY was allowed to proceed to registration.

It remains to be seen whether Monster Energy will appeal the decision.  A review of the trade marks register shows that Monster Energy is currently involved in a remarkable 31 trade mark oppositions involving marks containing the word MONSTER as well as potentially similar marks such as REAL BEAST.