Monster Energy Company v Mixi, Inc  NZIPOTM 10
This decision reminds parties in an opposition to “follow the rules” when filing evidence and complying with pre-hearing directions or risk significant cost consequences.
Monster Energy Company opposed the registration of the MONSTER STRIKE trade mark filed by MIXI, Inc. for goods and services in classes 9 and 41. The basis for the opposition was:
- the use of the MONSTER STRIKE trade mark would be likely to deceive or confuse with Monster Energy’s MONSTER and MONSTER ENERGY trade marks (section 17(1)(a)); and
- the MONSTER and MONSTER ENERGY trade marks are well known in New Zealand (section 25(1)(c)).
Neither of the grounds of opposition were established.
Although Monster Energy established a sufficient awareness of its trade marks in New Zealand in relation to energy drinks, it was held that the use of the MONSTER STRIKE trade mark for the goods and services in classes 9 and 41 would not be likely to deceive or confuse a substantial or significant number of persons in New Zealand. Factored into this were the overall differences between the MONSTER and MONSTER ENERGY trade marks and the MONSTER STRIKE trade mark when they were compared as wholes and “energy drinks”not being held to be the same goods as, or similar to, any of the class 9 and 41 goods and services for which registration was sought.
Although Monster Energy’s trade marks were used within video games, cross-promotions with video games, and sponsorship of videogame teams and events was a relevant surrounding circumstance, its effect was minimal. As well as each of these factors, Monster Energy did not establish that its MONSTER and MONSTER ENERGY trade marks were well known in New Zealand.
A take home point for this case, however, is in relation to the Commissioner’s decision to award costs. The Commissioner may award costs to the successful party that he or she considers reasonable. In practice, the Commissioner generally awards costs according to the official scale set out in Regulations but also has the power to award additional costs where “the circumstances of the case, or the behaviour of a party, warrant it”.
In this case, the scale costs amounted to NZD2,950 and the Commissioner proposed an uplift of approximately 90%, bringing the costs to NZD5,600. The Commissioner considered that this was warranted for two reasons:
- A significant portion of Monster Energy’s evidence was vague and not tailored to the grounds of opposition. Much of the evidence was undated or post-dated the relevant date. The fact that the Opponent had faced this issue in previous proceedings before the Office was seen as a pattern of “undesirable behaviour” on the Opponent’s part.
- The Opponent did not comply with the standard pre-hearing directions. The directions state that a party’s written submissions should not be longer than 25 pages. Monster Energy’s submissions were 42 pages including a three-page schedule.
This is an expensive reminder to parties to ensure that any evidence filed is relevant and tailored to the grounds of opposition, as well as the necessity to strictly comply with pre-trial Hearing Directions.