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Case review - NZ opposition by Hansen Beverage - Phillips Ormonde & Fitzpatrick | Intellectual Property Law Firm - Patent and Trade Mark Attorneys - Research and Investigation



Case Note – Trade Mark Application No 742904 (MONSTER ENERGY in class 32) in the name of Bickford's Australia Pty Ltd -and- Opposition by Hansen Beverage Company



2 July 2008



Case review by Sarah Dixon

Hansen Beverage Company opposed registration of the trade mark MONSTER ENERGY on a number of grounds, all relating to its alleged prior rights to the trade mark MONSTER ENERGY in New Zealand.

Hansen Beverage Company had not sold any MONSTER ENERGY beverages in New Zealand. However, it sought to establish that it had a reputation in New Zealand through the following:
  • Spill-over reputation from use of MONSTER ENERGY in the USA (Note: in 2005 MONSTER ENERGY was the 2nd most popular energy drink in the USA)
  • Circulation in New Zealand of publications and catalogues containing pictures of sponsored athletes wearing MONSTER ENERGY branded helmets and/or clothing
  • Other media (such as internet, television coverage and DVDs) that showed extreme sportspersons wearing MONSTER ENERGY branded clothing and/or headgear
  • Evidence of witnesses in New Zealand who were aware of the opponent's MONSTER ENERGY mark before the relevant date.

It was held that the relevant consumer of beverages was the general public. However, the opponent's evidence only showed use of or awareness of its mark in the specialist extreme sports market. Accordingly, it was held that Hansen Beverage Company did not establish that there was a substantial awareness in the relevant market of its MONSTER ENERGY trade mark.

The Hearings Officer also considered whether the application had been made in bad faith. She confirmed that there was no prohibition on a trader registering a foreign mark for use in New Zealand, provided that its claim is not affected by fraud, breach of duty or bad faith. From the evidence provided, the Hearings Officer found that there had been no bad faith and the opposition failed on all grounds.

(Note: there is a corresponding case Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) FCA 406 in Australia; with similar findings as to relevant consumer group and reputation in Australia).