‘Monster’ Brand, Monster Reputation? Full Federal Court Issues Ruling

Cheng Lim, Elizabeth Campetti and Hayley Webb of Mallesons Stephen Jaques reports on the case of Hansen Beverage Company v Bickford’s (Australia) Pty Ltd [2008] FCAFC 181, in which the Full Federal Court of Australia delivered a significant decision on brand reputation in the context of copycat products.

According to Cheng Lim, Elizabeth Campetti and Hayley Webb, the Full Court allowed an appeal by Hansen, the American owner of the ‘‘Monster Energy’’ drink brand, in its passing off and misleading or deceptive conduct case against Australian company Bickford’s. Cheng Lim, Elizabeth Campetti and Hayley Webb observe that the Court highlighted the distinction between section 52 of the Australian Trade Practices Act 1974 (Cth) and the tort of passing off with respect to the question of reputation, and recognised that indirect marketing techniques can establish the requisite reputation to found such claims.

Cheng Lim, Elizabeth Campetti and Hayley Webb note that the decision recognises that when assessing reputation in Australia, Courts can look at the impact of indirect marketing techniques, including the internet, viral campaigns and websites. Whilst it remains prudent for brand-owners to obtain Australian trade mark registrations for their brands, Cheng Lim, Elizabeth Campetti and Hayley Webb note that the case sends the message that brand reputation can travel across boundaries quickly.

‘Monster’ Brand, Monster Reputation? Full Federal Court Issues Ruling