Protecting a “Monster” reputation – Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181

Sonia Stewart of Mallesons reports on the Full Federal Court of Australia’s decision in Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181. According to Mallesons, the Court allowed an appeal by the overseas owner of the “Monster Energy” energy drink brand in its case against an Australian copycat rival.
Sonia Stewart writes that this landmark decision recognises that ground rules have changed in the digital era and that Australian courts have formally recognised the power of indirect marketing techniques when applied to famous brands sold overseas, but not yet in Australia. When assessing reputation in relation to the target market in Australia, Sonia Stewart notes that courts can look at the impact of indirect marketing through “non-jurisdictionally-confined” 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, Sonia Stewart notes that the case sends the message that brand reputation can travel across boundaries quickly and that it will no longer be as easy to imitate a successful overseas product and then argue that its reputation has not yet reached Australia.
The Full Court has now remitted the case back to the trial judge for reconsideration. Images of the cans can be seen on the respective companies’ websites: www.monsterenergy.com (Hansen) and www.monsterenergy.com.au (Bickfords).
Protecting a “Monster” reputation…