Monster Energy Company v Nathan Darma [2017] ATMO 4 (13 January 2017)


Monster Energy opposed the registration of the trade mark ‘Beast Mode’ covering clothing in Class 25.  The application was filed by an individual, Nathan Darma, who did not appear or take part in the hearing.

Initially, Monster Energy outlined its opposition as being based only on sections 42 (use contrary to law) and 60 (confusion based on prior reputation).  These were the only two grounds included within the Monster Energy Statement of Grounds and Particulars.

Two weeks prior to the hearing, Monster Energy applied to amend its Statement of Grounds to include section 44 (prior trade mark registration/application), but this application was denied on the basis that Monster Energy did not satisfy the hearing officer that it could not have known of its own earlier trade mark application (on which its section 44 ground relied).

The opposition, therefore, proceeded on only the section 42 and 60 grounds.  To support these grounds, Monster Energy led evidence of its use of various MONSTER and BEAST trade marks, including UNLEASH THE BEAST! and PUMP UP THE BEAST!.  From the evidence led, the hearing officer was able to infer a reputation held by Monster Energy in relation to a stylised version of its tag line, UNLEASH THE BEAST!.

Having established a reputation, the matter turned on whether confusion between UNLEASH THE BEAST! and ‘Beast Mode’ was likely.  In the hearing officer’s estimation those two trade marks have immediately obvious visual, aural, and sematic differences.  In addition, the hearing officer noted a significant number of coexisting ‘BEAST’ trade marks already on the Register for clothing.  Both of these factors led to the finding that confusion between the trade marks was not likely.  Accordingly, both the section 60 and 42 ground failed.

To view the Office decision, click here.

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