The Full Federal Court has rebuffed an attempt to appropriate the international reputation of the Monster Energy brand drink in Australia in Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181.
Hansen had established a huge international market for their Monster Energy beverage drink among 18 to 30 year-old males. Unfortunately, they had not begun marketing in Australia or applied for their trade mark here. Bickfords, after noticing the success of the Monster Energy product in the United States, decided to introduce a very similar product into Australia. Hansen sued under our Trade Practices Act for passing off.
At issue was whether Hansen had established the appropriate reputation in the Australian market to the extent that a significant portion of the relevant market would have been misled. The trial judge held this not to be the case and refused to give weight to "indirect" advertising by Hansen in sponsorship of major international sporting personalities and celebrities. On appeal, the Full Court was more ready to accept that indirect advertising is a significant modern marketing tool and can be used to establish reputation within Australia. In the words of Judge Finkelstein: "the indirect brand advertising employed by Hansen (and, for that matter, Bickfords) can establish reputation as well as, if not better than, direct advertising. After all, everyone knows that James Bond drives an Aston Martin, Janis Joplin wanted to own a Mercedes Benz and Audrey Hepburn had breakfast at Tiffany's."
The net result of the case is that local companies will face increased hurdles in trying to appropriate forthcoming successful foreign products.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
