ATMO case note: Monster Energy Company v Disney Enterprises, Inc  ATMO 2
Applicant’s mark: MONSTERS UNIVERSITY
Relevant classes: 25 (clothing, footwear, headgear etc), 29 (fresh & dried foods), 30 (various processed foods).
Opponent’s marks: MONSTER and MONSTER ENERGY – registered and used in various classes including in relation to carbonated soft drinks.
Grounds of opposition: ss 42(b) and 60 – grounds not established – mark to proceed to registration.
Hearing Officer McDonagh set out the following lengthy passage from Cars on Demand IP Pty Ltd v Cars on Demand Limited  ATMO 87:
A finding of deceptive similarity in wholly contained trade marks is not automatic and may depend on a number of factors. These include:
(a) The extent to which the shared element has retained its identity as an essential feature of the trade marks (See: Bulova Accutron Trade Mark  RPC 102 (Ch D).
(b) The distinctiveness of the common element/s and the distinctiveness of additional element/s. If the additional element changes the idea of the trade mark, this may point towards a finding that the marks are not deceptively similar.
(c) The nature of the additional element(s) – if the additional element(s) is/are particularly distinctive then the marks will most likely not be deceptively similar, even though they share a common element. And vice versa – if the additional element has a low level of distinctiveness then the marks are more likely to be deceptively similar (See: Application by Coles Myer Ltd, (1993) 26 IPR 577, BRATS: BONZA BRATS)
(d) The meaning behind the trade marks – where an additional element changes the meaning of the trade mark or the concept behind it then the trade marks are less likely to be deceptively similar.
(e) The placement, within the trade mark, of the common and non-distinctive elements, including size of text and any other elements may provide a different context and consequently alter the overall impression of the trade mark.
(f) When both the common element and additional element are distinctive – each case will turn on its own facts. See BAREFOOT: BAREFOOT RADLER. E & J Gallo Winery v Lion Nathan Australia Pty Ltd  FCA 934 at 63 per Flick J.
(g) Consideration must be given to the surrounding context of the goods and services, such as methods of sale and common trade techniques. Are customers purchasing goods by name? How are the goods presented? Who are the consumers? (General or specialist?).
The hearing officer considered that in the application of these principles in this case led to the conclusion that the marks were unlikely to be confused. This was particularly so due to the close association of the Opponent’s marks with sporting teams: “if consumers are involved with a sporting team, event or individual to the extent that they associate and purchase the Opponent’s Goods sold under the Opponent’s Trade Marks because of that association and further seek out goods in Classes 25, 29 or 30 to purchase on the basis of those trade marks, it is less likely that they will confuse the Trade Mark with the Opponent’s Trade Marks.”
The section 42 ground failed for the same reason as the s 60 ground: “In the present matter the Opponent has failed to establish a ground of opposition under section 60 of the Act. As the test for misleading or deceptive conduct under section 18 of the Australian Consumer Law (‘ACL’) is a more stringent test (at the standard ‘mislead or deceive’) than that for ‘deception or confusion’ under section 60, I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to section 18 of the ACL.”