FEDERAL COURT OF AUSTRALIA

Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCA 406

TRADE PRACTICES - misleading and deceptive conduct - where applicant sells and promotes energy drink overseas using certain mark - where respondent commences using that mark without licence to sell energy drink in Australia - where applicant does not conduct business in Australia but alleges that it has reputation amongst target market in Australia on basis of exposure of its mark and that consumers would be misled or deceived - cross-claim by respondent that it has established requisite reputation - whether either party has established sufficient reputation - establishment of date at which reputation should be assessed

TORT - passing off - where applicant sells and promotes energy drink overseas using certain mark - where respondent commences using that mark without licence to sell energy drink in Australia - where applicant does not conduct business in Australia but alleges that it has reputation among target market in Australia on basis of exposure of its mark - whether sufficient reputation established

EVIDENCE - hearsay - business records exception - where television ratings data is sought to be tendered - where data is produced by computer extrapolating human representation - whether data is hearsay - where data is produced by third party as a product of its business - whether data falls within business records exception - whether data should be otherwise admitted under discretion in s 190(3) of Evidence Act 1995 (Cth)

Evidence Act 1995 (Cth) ss 59(1), 69, 76, 79, 146, 190(3)

Trade Marks Act 1995 (Cth) s 27(1)(b)(i)

Trade Practices Act 1974 (Cth) s 52

10th Cantanae Pty Ltd v Shoshana Pty Ltd (Sue Smith Case) (1987) 79 ALR 299 followed

Arnotts Ltd v Trade Practices Commission (1990) 97 ALR 555 discussed

ASIC v Rich (2005) 216 ALR 320 applied

.au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 207 ALR 521 not followed

Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 239 ALR 662 followed

Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 32 ALR 387 followed

Colorado Group Ltd v Strandbags Group Pty Ltd (2006) 67 IPR 628 distinguished

Compafina Bank v ANZ Banking Group Ltd [1982] 1 NSWLR 409 cited

ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 followed

McCormick & Company Inc v McCormick (2000) 51 IPR 102 cited

National Exchange Pty Ltd v Australian Securities & Investments Commission (2004) 61 IPR 420 cited

Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Limited (2007) 71 IPR 571 cited

R v Wood (1982) 76 Cr App Rep 23 distinguished

Roach v Page (No 15) [2003] NSWSC 939 applied

Rook v Maynard (1993) 126 ALR 150 distinguished

R W Miller & Co Pty Ltd v Krupp (Australia) Pty Ltd (1991) 32 NSWLR 152 cited

Shoshana Pty Ltd v 10^th Cantanae Pty Ltd (1987) 11 IPR 249 cited

Supetina Pty Ltd v Lombok Pty Ltd (1984) 5 FCR 439 not followed

Trade Practices Commission v Arnotts Ltd (1990) 93 ALR 657 cited

Walton v R (1989) 166 CLR 283 cited

HANSEN BEVERAGE COMPANY v BICKFORDS (AUSTRALIA) PTY LTD (ACN 053 240 261), MEAK PTY LTD (ACN 088 219 363), BICKFORDS (AUSTRALIA) PTY LTD AND MEAK PTY LTD AND HANSEN BEVERAGE COMPANY

VID 908 OF 2006

MIDDLETON J

31 mARCH 2008

MELBOURNE

THE COURT ORDERS THAT:

1.         The application and cross-claim be dismissed.

2.         The parties confer and thereafter file and serve any agreed order as to costs, and in the event of no agreement, any submissions as to costs, within 14 days.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

Introduction

1                     The principal issue in this proceeding is whether the applicant (‘Hansen’) has shown a sufficient reputation in Australia in the mark MONSTER ENERGY, at the relevant date, in relation to energy drinks, such that the adoption of that mark, or its contraction MONSTER, for energy drinks by the respondents (‘Bickfords’) conveys a misrepresentation that the Bickfords product is the product of Hansen or is associated with Hansen.  If not, by reason of the cross-claim in this proceeding, the issue then arises as to whether Bickfords has itself established a sufficient reputation in Australia in the mark MONSTER ENERGY, or its contraction MONSTER.  Both issues arise in the context of deciding whether there has been a passing off or a contravention of the Trade Practices Act 1974 (Cth) (‘TPA’).

2                     It is accepted by the parties that if Hansen is successful in its claim, then the cross-claim should be dismissed.  However, it is not accepted that if Hansen is unsuccessful, the claim in the cross-claim will necessarily be successful, as the issue of sufficient reputation in support of that claim is in dispute.  The parties accept that if sufficient reputation is established in either the claim of Hansen or Bickfords, then the successful party would be entitled to relief, although the extent of the relief in the case of Hansen being successful would depend upon some factual findings the Court may need to make in relation to Bickfords’ conduct.

3                     I have decided that neither Hansen nor Bickfords has established upon the evidence before the Court the reputation required by law to succeed in their respective claims, and I propose to dismiss the claim and cross-claim making no restraining orders.  This may admit of the risk of confusion or possibility of blunders by some members of the public in their choice of the energy drinks that are or may be made available by either Hansen or Bickfords, but such risk or possibility the law accepts.  In essence, I have come to the conclusion that both Hansen and Bickfords, to a lesser or greater degree, have only just commenced the development of a reputation in Australia, and neither has reached the stage of development such that the Court should make the orders sought in this proceeding.

4                     I make one further introductory remark.  Hansen has led evidence (which was uncontested) that it definitely intends to sell MONSTER ENERGY drinks in Australia.  However, no evidence was led of any definite business plan or of any intended sales in Australia in the near or immediate future.  Nevertheless, the issue of Hansen’s present intention was not raised in this proceeding, and I proceed on the basis that Hansen intends to sell MONSTER ENERGY drinks in Australia, and the principal issue in this proceeding is as I have described it above.

BACKGROUND

Hansen and MONSTER ENERGY

5                     Hansen has, since 1992, developed, marketed, sold and distributed non-alcoholic beverages, including carbonated drinks, energy drinks, fruit juice smoothies, lemonades and juice cocktails in the United States.  As at November 2006, Hansen had over 700 employees, with the annual revenue for the 2005 financial year being US$415,417,282.

6                     In 1996, in response to the success of energy drinks in the United Kingdom, Hansen began consumer testing of its own energy drink, Hansen’s Energy Smoothie.  The primary demographic for Hansen’s energy drinks was, and remains, 18 to 30 year old males.  This is to be contrasted with the primary demographic for its natural soft drinks and juice products, being 25 to 40 year old affluent college educated females.  Hansen’s management, in 2002, decided to launch a new energy drink which would be targeted to the 18 to 30 year old male demographic, to compete with Red Bull, the leading energy drink in the world at the time.  Hansen created, in conjunction with an independent design firm, the MONSTER ENERGY brand name, and decided to sell the drink in 16 oz (473 mL) cans.  Hansen’s intention was to create, by using MONSTER ENERGY, a completely separate ‘identity’ and ‘personality’ from the Hansen brand, thus enabling it to focus on the young male target market.  To this end, Hansen developed a website at www.monsterenergy.com, which was separate from, and contained no reference to, Hansen.

7                     The official United States launch of MONSTER ENERGY drinks by Hansen was in April 2002.  In 2003, Hansen introduced a low carbohydrate version of the energy drink, and in 2004 it began selling MONSTER ENERGY in 4-packs.  During 2005 other variations of the MONSTER ENERGY drink and packing were introduced, which included Khaos (with 70% juice) and Assault.

8                     Hansen attempts to distinguish its MONSTER ENERGY drinks by, among other things, using ingredients such as taurine, L-carnitine, panax ginseng, guarana, B vitamins, inositol, glucuronolactone, sodium, glucose and caffeine.  All varieties of the MONSTER ENERGY drinks contain these ingredients and are carbonated.  Further, all varieties of the drinks are sold in 16 oz (473 mL) cans which:

·                    are predominantly black, with an ‘M’ claw design;

·                    refer to the www.monsterenergy.com website;

·                    include the MONSTER ENERGY slogan ‘Unleash the Beast!’, which is a registered trademark of Hansen;

·                    list certain of the ingredients around the top of the can; and

·                    emphasise the ‘O’ in MONSTER and MONSTER ENERGY.

9                     In addition, there are variations between the cans for the different varieties of MONSTER ENERGY drink as follows:

·                    The low carbohydrate version is sold in a predominantly black can with a blue ‘M’ claw design;

·                    The Khaos version is sold in a predominantly black and grey can with an orange ‘M’ claw design;

·                    The Assault version is sold in a predominantly black and grey can with a camouflage design and a red ‘M’ claw design.

10                  The MONSTER ENERGY mark, along with the ‘M’ claw design, is shown below:

11                  Hansen sells its MONSTER ENERGY drinks throughout the United States, Canada, Mexico, Uruguay, Suriname, Peru, Paraguay, Ecuador, Chile, Brazil, Bolivia, Argentina, Panama, Honduras, Guatemala, El Salvador, Costa Rica, Belize, Virgin Islands, St Maarten, Puerto Rico, Haiti, Dominican Republic, Curacao, Barbados, Bahamas, Antigua and Hong Kong.  MONSTER ENERGY is sold in all 50 states of the United States in more than 100,000 retail stores, and is sold in thousands of stores internationally, including in convenience stores, gas stations and grocery stores.  MONSTER ENERGY is sold in these stores because they are the ‘natural habitat’ of Hansen’s target demographic, namely 18 to 30 year old males.  MONSTER ENERGY is the second biggest selling energy drink in the world, behind Red Bull.

12                  In keeping with its aim of promoting MONSTER ENERGY to the 18 to 30 year old male market, Hansen has adopted the strategy of marketing the brand, inter alia, through the sponsorship of athletes and athletic competitions (which receive media and internet coverage), clothing and merchandise bearing the MONSTER ENERGY marks, in magazines, on the internet, and through sponsoring music festivals and musicians.  The athletes and athletic competitions which MONSTER ENERGY sponsors are generally in the extreme sports fields and are, according to Hansen’s Chief Executive Officer, ‘edgy and aggressive’.  By being associated with these athletes and events, Hansen attempts to make MONSTER ENERGY attractive, and ‘cool’ to its target market.

13                  Between 2002 and 2006, Hansen spent over US$150 million in advertising, marketing and promoting its MONSTER ENERGY brand.

14                  The MONSTER ENERGY brand product has not been sold in Australia (although it has been obtained on eBay in Australia), and Hansen does not rely upon sales or direct promotions in Australia of its product.  Rather, as is described in more detail later, Hansen relies in this proceeding to establish reputation upon the implementation of a strategy which is designed to make the target demographic in a country (like Australia) familiar with MONSTER ENERGY before it is ‘launched in the country’, and which ‘helps lay a foundation’ before the product is launched.

Bickfords

15                  Bickfords is a manufacturer and distributor of beverages based in Adelaide, with a history dating back to the mid-nineteenth century when William Bickford was a major manufacturer and supplier of pharmaceutical and chemical products.  Bickfords’ range of products has grown significantly since 1991, and Bickfords now sells certain of its beverages throughout Australia, New Zealand and some Asian countries.  Bickfords’ products are distributed nationally through retailers Coles, Woolworths, Metcash/Foodland, Franklins and other supermarkets, as well as through convenience stores, petrol stations, cafes, restaurants and delicatessens.

16                  Bickfords has recently built a ‘state of the art’ manufacturing plant in Salisbury South, South Australia.  The plant has four bottling lines in operation, and currently produces, among others, the following ranges of beverages:

·                    ‘Apple Maid’ juices, sold in 750 mL glass bottles;

·                    ‘Aqua Pura’, water sold in 600 mL, 1.25 litre and 5 litre plastic and PET containers;

·                    ‘Classic Juice’ fruit drinks in five flavours, packaged in 300 mL glass bottles;

·                    ‘Bickfords Cordial’ in 750 mL bottles, which includes the ‘Bickfords Lime Juice’ product;

·                    ‘Esprit’, a premium adult soft drink with all natural ingredients, and Bickfords widest-ranging exported product;

·                    ‘Iced Coffee Mix’ packaged in 1 litre plastic bottles and 300 mL and 600 mL glass bottles; and

·                    ‘Old Style Soda’ drinks, including creamy soda, lemon lime and bitters, ginger beer, original kola and sarsaparilla flavours, in 275 mL glass bottles.

17                  The second respondent, Meak, is a related entity used by Bickfords primarily for export purposes but also to distribute certain products locally, including the MONSTER ENERGY drinks the subject of this proceeding.

18                  The Managing Director of Bickfords, Angelo Kotses, deposed that he noticed in late 2004 and early 2005 that the energy drink market in Australia was expanding.  Mr Kotses felt that Bickfords was in a good position to launch its own energy drink.  He deposed that there were no super-sized energy drinks in Australia ‘readily available’, with most canned energy drinks being sold in a 250 mL to 300 mL can size, and that he thought a larger sized can would be well supported in Australia.  

19                  During a trip to the United States in February 2005, Mr Kotses became aware that the MONSTER brand was selling well and that the super-sized energy drink market was growing.  Mr Kotses said that one of the reasons for wanting to use the larger sized can was that it would distinguish the Bickfords product from the energy drinks already available in the Australian market.

20                  Mr Kotses deposed that Bickfords owns a trademark called ‘Hi NRG’ which it used in connection with an energy drink in about 1998.  The drink was sold in 330 mL glass bottles but did poorly.  Mr Kotses said that he was, between 1998 and 2005, considering resurrecting the ‘Hi NRG’ brand given that competitors were doing well with a 250 mL canned energy drink but that he ultimately decided that the brand had become outdated.

21                  In the summer of 2004/2005, Mr Kotses asked Bickfords’ Marketing Manager, Andrew Bell, to consider a brand for a new energy drink, and mentioned the possibility of introducing a super-sized can.  After receiving a marketing brief from Mr Bell containing various possible names for Bickfords new energy drink, Mr Kotses discussed the possibilities with Evie Kotses, his daughter.  Mr Kotses also mentioned that he had seen Hansen’s MONSTER brand.

22                  At this time Mr Kotses was aware that Hansen’s MONSTER drinks were not available in Australia but thought that Bickfords may be able to negotiate with Hansen for a license to manufacture the MONSTER product, using the super-sized can, in Australia.  Bickfords conducted trademark searches for MONSTER and MONSTER ENERGY, and found that there were no actual or pending registrations for those names in the drinks category.  Bickfords then lodged the first application for MONSTER (in class 32) on 5 September 2005.

23                  Bickfords used, in a focus group for its new product, some of the Hansen MONSTER cans.  The focus group indicated that the MONSTER brand and super-sized can had been well received, and Bickfords then made contact with Hansen in the United States to discuss a possible license agreement.  No such agreement was made.

24                  Mr Kotses deposed that Bickfords proceeded to use the MONSTER mark for its energy drinks because there was ‘no indication’ that Hansen was promoting its product or the MONSTER ENERGY brand in Australia, and because members of the public in Australia seemed to have no knowledge of Hansen’s product.  Mr Kotses deposed that the graphics for the can and the recipe for the drink were devised by Bickfords independently of the applicant’s product.  The graphics and recipe were left to Bickfords’ marketing department, Mr Kotses himself keen to use the MONSTER mark.  I will return generally to these matters later.  In addition, as set out above, Bickfords was aware that that the applicant had not applied for registration of the MONSTER or MONSTER ENERGY marks in Australia.

25                  Bickfords, from about January 2006, then began developing its MONSTER energy drink concept, targeting it towards young male consumers.  The first production of Bickfords’ MONSTER ENERGY drink took place on 10 April 2006 and it was distributed from 18 April 2006.

26                  The similarities between the two products, which Hansen alleges will mislead or deceive a consumer for the purposes of s 52 of the TPA and the tort of passing off, are as follows:

27                  In 2004, Hansen launched a new carbonated energy drink in 473 mL cans under the brand name ‘Lost’.  Hansen notes the following similarities in phrases used on the packaging of the Lost product and Bickfords’ product:

28                  There is no dispute that the similarities between the products could relevantly mislead or deceive for the purposes of the TPA and the tort of passing off.

The Full court decision in ConAgra v McCain

29                  In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 the Full Court considered a case having some similarities with the present proceeding. 

30                  Both parties rely on the Full Court authority of ConAgra.  It is useful to first refer to the salient facts of that case:

·                    the applicant ConAgra had marketed its HEALTHY CHOICE frozen dinner product in the United States from January 1989 and had achieved sales of HEALTHY CHOICE products from January 1989 to March 1991 amounting to $US458,210,000, accounting for 7.6% of the overall frozen food, dinner and entrée market in the United States;

·                    ConAgra had obtained trade mark registration of HEALTHY CHOICE in the United States;

·                    ConAgra had spent very substantial sums of money on advertising its HEALTHY CHOICE product in the United States;

·                    ConAgra had not manufactured its HEALTHY CHOICE products other than in the United States, but had sold the products in Canada and Central America;

·                    McCain had been manufacturing and marketing frozen food dinners in Australia;

·                    in October 1989, the Australian marketing director of McCain travelled to the United States and Canada and noticed ConAgra’s HEALTHY CHOICE product in supermarkets, obtained five examples of the packaging, took them back to Australia and reported to McCain senior management that ‘The … product ‘Healthy Choice’ (low cholesterol) is getting very favourable comments in the US.  We should look closely at this one.’;

·                    from May 1990, McCain conducted market research and product development for its own HEALTHY CHOICE product;

·                    in July 1990, McCain applied for trade mark registration in Australia for HEALTHY CHOICE together with the McCain logo;

·                    in February 1991, McCain launched three varieties of its HEALTHY CHOICE product in Australia; and

·                    on 8 April 1991, ConAgra commenced proceedings against McCain in the Federal Court claiming that McCain’s adoption of the name and get-up of ConAgra’s products amounted to passing off or breach of ss 52 or 53(c) of the TPA.

31                  At first instance Hill J found that McCain’s packaging suggested, to a person familiar with the ConAgra product, that there is a relationship of some kind between ConAgra and McCain or their respective products.  However, both at first instance and on appeal to the Full Court, ConAgra failed to establish that McCain’s sale of its HEALTHY CHOICE product in Australia amounted to passing off or breach of s 52 or s 53(c) of the TPA because ConAgra was unable to establish that there was a substantial or sufficiently substantial number of persons in Australia who were aware of ConAgra’s products and for whom HEALTHY CHOICE would have signified ConAgra’s product.

32                  ConAgra’s evidence of reputation included affidavits from ten people who had some recent connection with the United States.  Some were United States citizens visiting or residing in Australia and others were Australian citizens who had spent time in the United States.  To varying degrees, each deponent recognised ConAgra’s HEALTHY CHOICE product.  It was ultimately found that no extrapolation of any value could be made from those deponents to the Australian population in general (including foreign citizens in Australia) whether as likely buyers of frozen foods or as likely to be aware of ConAgra’s product in the United States.

33                  Other evidence upon which ConAgra had unsuccessfully attempted to prove its reputation for HEALTHY CHOICE in Australia included:

·                    advertisements for ConAgra’s HEALTHY CHOICE product in five magazines published in the United States and sold in Australia in small numbers; and

·                    official figures as to the movement of people between Australia and the United States.

34                  It was submitted by Bickfords that in the present case a proper analysis of the admissible evidence leads to a similar conclusion as reached by the trial judge and Full Court in ConAgra, to the effect that, at the time Bickfords launched its MONSTER ENERGY product:

·                    there was not a sufficiently substantial number of persons in Australia who were aware of Hansen’s MONSTER ENERGY product and for whom MONSTER would have signified Hansen’s product;

·                    what Bickfords really set out to do was to adopt the name and get-up of Hansen’s MONSTER ENERGY product, without contravening the law, not because it wanted to have its product confused with that of Hansen, but because it was most impressed by the striking success of Hansen’s product in the United States and sought to adopt it for its own products in Australia as a good idea and one likely to succeed here; and

·                    such conduct does not amount to fraud but, in any event, a finding of fraud cannot improve Hansen’s case if it cannot prove its claimed reputation.

35                  On the other hand, Hansen submitted that the Court ought to find that the exposure relied upon in fact generated a substantial reputation in the MONSTER ENERGY mark in Australia.  Hansen submits that the Court ought to so find on the basis:

·                    of the extent of the exposure apparent from the evidence summarised in the form of the Schedules of Exposure before the Court;

·                    that the strategy referred to above was in fact successfully implemented;

·                    of evidence of the state of knowledge of members of the public;

·                    of evidence of the efforts made by persons other than Bickfords to become involved in the distribution of the Hansen product in Australia; and

·                    of Bickfords’ own conduct and research.

36                  It is clear from the principles stated in ConAgra that it is not necessary in a passing off case for an applicant to establish actual trade in the jurisdiction but, rather, it is sufficient if the applicant establishes a reputation in the jurisdiction. 

37                  Justice Lockhart stated in ConAgra 33 FCR at 343 that:

… it is still necessary for a plaintiff to establish that his goods have the requisite reputation in the particular jurisdiction, that there is a likelihood of deception among consumers and a likelihood of damage to his reputation. But reputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …

Certainly the law of passing off does not confer protection on the owners of goods who have no reputation in a particular jurisdiction, otherwise they would have an international monopoly with respect to the name, get-up or mark applied to their goods (and services) and may never intend to exploit it in the particular jurisdiction. It is the likelihood of deception among consumers and of damage to reputation that are the critical requirements to establish a case of passing off and they prevent any such unauthorised international monopoly being granted to a plaintiff. A quia timet injunction is a good illustration of this point for, in most cases, while such an injunction will be granted where the plaintiff has at the time of action no relevant business connection with the particular jurisdiction but has a reputation there and has established a likelihood of deception amongst consumers, he must go on to establish a likelihood of damage to his reputation and that he intends to establish in some way his business or sell his goods in that jurisdiction.

38                  Justice Lockhart considered the existence of modern mass advertising, commenting at 342:

It is no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on. Modern mass advertising through television (which reaches by satellite every corner of the globe instantaneously), radio, newspapers and magazines reaches people in many countries of the world. The international mobility of the world population increasingly brings human beings, and therefore potential consumers of goods and services, closer together and engenders an increasing and more instantaneous awareness of international commodities. This is an age of enormous commercial enterprises, some with budgets larger than sovereign states, who advertise their products by sophisticated means involving huge financial outlay. Goods and services are often preceded by their reputation abroad. They may not be physically present in the market of a particular country, but are well known there because of the sophistication of communications which are increasingly less limited by national boundaries, and the frequent travel of residents of many countries for reasons of business, pleasure or study.

39                  As to the extent of the reputation required, his Honour said at 346:

I said earlier that if a plaintiff establishes that it has a reputation in the jurisdiction then that would be sufficient to allow it to maintain an action in passing off. I have already discussed the various ways by which that reputation may be achieved, but it remains to define the extent or scope of reputation required. In my opinion the plaintiff must prove that there are within the jurisdiction in which the defendant is carrying on business a substantial number of persons who are aware of the plaintiff's product … This was the test adopted by the primary judge (at 485–6) and in my opinion correctly. Further, it does not matter whether the persons within the relevant jurisdiction who are aware of the plaintiff's product, are resident or visitors from anywhere in the world.

The reason for the requirement of a substantial number of persons is in my opinion that the reputation of a plaintiff in the forum is the source of his potential business there; his goods are known to people there who are his potential customers. For him to have in a practical and business sense a sufficient reputation in the forum requires something more than a reputation among a small number of persons, although the size and extent of the class may vary according to the circumstances of the case. Also, the law seeks to promote local competition and innovation and does not extend its protection to persons whose goods are not sufficiently known in the forum.

40                  Justice French, at 377, said that:

It is essential to the cause of action in passing off that the applicant's goods or services have a reputation with a substantial number of persons who would be potential customers were those goods or services to be marketed within the jurisdiction.

41                  As to what is meant by the term ‘substantial’, his Honour said at 380:

The term “substantial” is evaluative and relative to such factors as the size and distribution of the population of prospective consumers.

42                  In relation to the operation of the TPA, Lockhart J (at 353) referred to the observation of Hill J that the threshold under the TPA may well be lower than it is for passing off, namely that a not insignificant number of persons could be misled.  Justice Lockhart did not need to determine whether the threshold was different.  Justice Gummow referred (at 372) to ‘a reputation with a substantial number of persons who would be potential customers’, but did not separately discuss the position under the TPA.

43                  Justice French observed at 377 that the trial judge had used the term ‘a not insignificant number of persons’ to identify the threshold of public awareness of the applicant’s mark or get up which, under the TPA, was required for the applicant to succeed.  His Honour said (at 381) of the word ‘insignificant’:

That word is normative but not for that reason inappropriate. Attention must be paid to the policy of the relevant provision which, as the heading to Pt V and many of its provisions indicate, is one of consumer protection. If the similarity complained of is commercially irrelevant having regard to the number of people who know of it, then it can be concluded that the use of the name and/or get-up complained of is not misleading or deceptive.

44                  In 10th Cantanae Pty Ltd v Shoshana Pty Ltd (Sue Smith Case) (1987) 79 ALR 299, the Full Court adopted the approach that for an applicant to establish a case for contravention of s 52 of the TPA, it must prove a ‘significant’ or ‘substantial’ proportion of persons within the relevant market would likely be misled or deceived.  This was adopted in National Exchange Pty Ltd v Australian Securities & Investments Commission (2004) 61 IPR 420 (per Jacobson and Bennett JJ at [70]-[71]).  Whilst there may be some view to the contrary (see .au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 207 ALR 521, [25]-[26] per Finkelstein J), I will proceed to approach the question of the operation of the TPA by requiring it to be established that a significant or substantial proportion of persons who would be potential customers within Australia would be likely to be misled.  Whilst some may consider this approach puts a greater burden than that considered by Hill J to be required, I am inclined to consider that the difference in approach is a matter of expression and not one of quantitative substance.

45                  I make one further observation in relation to legal principle to be derived from ConAgra.  In the absence of the establishment of reputation in Australia, fraud will not avail Hansen in its attempt to prove a case of passing off.  Fraud may well be relevant in determining the relief Hansen would be entitled to, if reputation were otherwise established, or as an element in establishing the requisite misrepresentation (see ConAgra 33 FCR at 345 per Lockhart J).

46                  Nevertheless, relevantly to this proceeding, deliberate copying may not always evidence an intention to deceive so as to constitute fraud in the relevant sense.

47                  Justice Lockhart took the following view of McCain’s deliberate adoption of the name and get-up of ConAgra’s product, at 352:

Merely to imitate the name of another trader or his product or his get-up does not establish a case of fraud. That appears clearly from the Pub Squash case. I have the distinct impression from my reading of the evidence in this case that what the respondent really set out to do was to apply to its own product and packaging so much of the name of the appellant’s product “Healthy Choice” and get-up of its packaging as it could do, without contravening the law, not because it wanted to have its product confused with that of the appellant, but because it was most impressed by the striking success of the appellant’s frozen food products in the United States and sought to adopt it for its own products in Australia as a good idea and one likely to succeed here. Nevertheless it seems the respondent wanted to sell its own product as a distinctive McCain product. … As reputation in Australia has not been established by the appellant, for the reasons I gave earlier, the finding of fraud does not ultimately avail the appellant.

48                  Justice Gummow viewed McCain’s conduct similarly, at 374:

… like Lockhart J, my impression from the evidence is that there is much to be said for the view that [McCain] acted as it did, not to filch [ConAgra’s] market or prospective market in Australia, but because it was impressed by the success of [ConAgra’s] product in the United States and thought that a similar product was likely to succeed here. That would not amount to fraud in the required sense. Deliberate copying does not necessarily indicate fraud.

Date of reputation

49                  There was some dispute between the parties as to the relevant date at which Hansen’s reputation should be assessed.  Bickfords contented that the relevant date is when the impugned conduct commenced, or whenever the passing off was first threatened, whichever is earlier.  Bickfords relied on the decision of Finkelstein J in Colorado Group Ltd v Strandbags Group Pty Ltd (2006) 67 IPR 628, and argued that the impugned conduct commenced no later than 29 November 2005, being the date when Mr Hukowskyj of Bickfords met with Jessica Brown of Coles and first raised the concept of supplying a 440 mL energy drink product to Coles.  At that time, Bickfords had lodged applications for registration of the MONSTER and MONSTER ENERGY names.

50                  Alternatively, Bickfords argued that the relevant date should be at least 12 January 2006, by which time Bickfords had presented mock up cans to Coles and the Trade Marks Office had publicly advertised the acceptance of Bickfords’ MONSTER ENERGY trade mark application.

51                  Hansen, on the other hand, looks to the date on which the Bickfords products were available to consumers, namely late April or early May 2006, arguing that consumers could not be misled or deceived until the Bickfords product was available for purchase.  Hansen also submitted that, in any event, Bickfords may not now retract from its defence, in which the earliest date pleaded was April 2006.  Hansen dismissed Bickfords’ argument concerning the publication of the acceptance of Bickfords’ MONSTER ENERGY trade mark application on the basis that there was no evidence that Bickfords was proposing to use those marks other than in accordance with its plan to obtain a licence from Hansen.

52                  I am of the view that the correct date at which Hansen’s reputation should be assessed is the point at which the relevant Bickfords’ product became available to consumers: in April/May 2006.  Before this date, there was no possibility that a consumer could be misled or deceived under s 52 of the TPA.  In relation to the passing off claim, Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 32 ALR 387 established that the relevant date is the date of commencement by the respondent of the conduct complained of – again, April/May 2006.  No importance in this proceeding attaches to whether the month of April or May 2006 is specifically nominated as the relevant date.

53                  Even if the correct date is the date when the impugned conduct was threatened, the relevant date would still be April/May 2006 in the circumstances of this case.

54                  The meeting between Mr Hukowskyj of Bickfords and Jessica Brown of Coles on 29 November 2005 involved no threat of passing off or contravention of the TPA because Bickfords was still considering its options, and if Bickfords were to proceed with the MONSTER branding its intention was then ‘to secure licensed rights to the MONSTER brand in Australasia’.  That is to say, rather than threatening to pass off its product as Hansen’s in November 2005, Bickfords had in mind to sell its product under licence from Hansen.

55                  As to the proposed 12 January 2006 date, Bickfords relies upon an advertisement in the Australian Trade Marks Journal of acceptance of Bickfords’ MONSTER ENERGY trade mark application and Mr Hukowskyj’s presentation to Ms Brown of Coles. 

56                  In Bickfords’ submissions in relation to the trade mark application it was stated:

It is to be noted that it is a requirement of a valid trade mark application for an unused mark that it be based on a definite and present intention to use the mark as a trade mark in the immediate future.

57                  Immediacy of the proposed use is not a requirement (s 27(1)(b)(i) Trade Marks Act 1995 (Cth)).  Therefore, all that can be said on the basis of Bickfords’ trade mark application and the acceptance of it is that at the time the application was made Bickfords represented to the Registrar that it had the aforementioned intention.  The proposed date of its use was not addressed.

58                  Moreover, Bickfords lodged its trade mark applications in September 2005 but there is no evidence that it was proposing to use those trade marks other than in accordance with its plan to obtain a licence from Hansen.  Mr Kotses gave evidence that the applications were expected to assist in its negotiations for such a licence.  Accordingly, the trade mark applications do not evidence a threat of the impugned conduct.  The 12 January 2006 meeting between Mr Hukowskyj and Ms Brown of Coles does not amount to the impugned conduct or any threat of it made to Hansen.  At that time the seeking a licence from Hansen was still an option.

59                  As at 12 January 2006, it is not true to say, as does Bickfords, that:

[Bickfords’] intentions to sell a MONSTER/MONSTER ENERGY drink in Australia in the immediate future had been drawn to Hansen’s attention by the communications between Mr Bell and Mr Maggi in December 2005.

60                  In the communications referred to, Mr Bell was seeking permission to sell the MONSTER ENERGY drink under licence from Hansen.  Therefore, there is no evidence of any threat of the impugned conduct or impugned conduct itself.

61                  As to whether Bickfords should now be able to retract from its defence (where the April 2006 date is relied upon), I do need to consider that matter in view of the conclusion I have reached above.

62                  Finally, whilst the issue of the relevant date was raised by the parties, in my view choosing between each of the dates suggested is immaterial, insofar as this decision is concerned at least.  I would, on the evidence, have come to the same decision irrespective of the date adopted. 

63                  However, it is clear that in dealing with Hansen’s claim and assessing the evidence of reputation, I should not take, and have not taken, into account evidence of reputation after April/May 2006. 

Hansen’s market strategy, and court’s general view of and approach to the evidence

64                  It is helpful, in addition to describing Hansen’s market strategy, to outline my general view of and approach to the evidence.

65                  Mr Rodney Sacks, the Chief Executive Officer of Hansen, gave uncontested evidence about Hansen’s market strategy, the target market for the MONSTER ENERGY product and the way in which the product was to be brought to the attention of that market.  I accept this aspect of his evidence. 

66                  The evidence set out below of Mr Sacks details the way in which the Hansen product was to be brought to the attention of young male adults in Australia. 

67                  As I have indicated, Hansen described its target market as males between the ages 18 to 30.  Bickfords described its target market as males between the ages of 18 to 24.  The parties accepted that it was convenient to refer to the target market as young adult males in Australia.  Whilst the focus of the parties and of my review of the evidence has been upon this target market, the reputation that is sought to be established is a reputation to potential customers in Australia.  This may include persons outside the target market.  However, I have proceeded on the basis that unless Hansen establishes the required reputation amongst the target market, it cannot and does not demonstrate sufficient persons outside that target market (being other potential customers) have been sufficiently exposed to or are sufficiently aware of the mark MONSTER ENERGY or MONSTER.

68                  Whilst the evidence given by Mr Sacks talks in terms of market strategy, it says nothing about, in my view, whether that strategy was in fact successful, or if successful, the extent of its success in Australia.  I do not consider that I can infer (nor do I) that just because the marketing strategy was put in place globally, even if a strategy adopted by others (including Bickfords) as being a good and appropriate strategy, this in itself proves the implementation of that strategy and more importantly in this case, the extent of its success in Australia.  This is particularly so considering that the strategy is of relatively recent origin insofar as its connection to Australia is concerned, when viewed in light of the relevant date (April/May 2006), its ‘word of mouth’ and indirect nature, and where there are no actual sales or direct advertising in Australia of the Hansen product. 

69                  One must recall that the strategy being adopted is to sponsor athletes and events, so as to create the required image of MONSTER ENERGY, and render it attractive to the target demographic.  In this way, the target demographic over some period become familiar with the product before it is in fact launched.  The strategy itself recognises that public recognition is a staged process and may take some time to be implemented successfully. 

70                  Nonetheless, the evidence of Mr Sacks can be used to evaluate the other evidence presented in this proceeding as to the actual exposure of the products in Australia.  For instance, through this evidence of Mr Sacks, the Court has an appreciation of the reach of the sponsorship of athletes and events, and the impact that sponsorship may have upon the target audience.

71                  Mr Sacks made the following observations:

… Hansen allocates the majority of its marketing, advertising and promotional budget on athlete endorsements and sponsoring events.  In particular, Hansen’s marketing focus includes focus on international events, including but not limited to events which are webcast on the internet.  …

There are a number of reasons why we spend the majority of our advertising, marketing and promotions budget on the sponsoring of athletes and events.  The first is (and these reasons are not in any particular order of importance) because [we intend that] the advertising, marketing and promotions that we carry out in relation to MONSTER ENERGY are all about image.  The image of MONSTER ENERGY needs to be attractive to the product’s target demographic, namely males aged between 18 and 30 years.  [We intend that] (t)he image of the MONSTER ENERGY beverages is therefore edgy and aggressive.  The athletes and events MONSTER ENERGY sponsors tend to be edgy and aggressive, or extreme.  By having this image, the product is attractive to our target demographic.

Secondly, our approach to marketing proceeds on the following basis.  This 18 to 30 year old demographic is not typically the targeted market of mainstream print media.  Rather it is the in-direct and non-traditional forms of advertising, such as sponsorships and product placement, which are instrumental in reaching this demographic.  This demographic, which consists primarily of the so called “Y generation”, is more likely to dismiss and not give credibility to an advertisement that has obviously been paid for and which they see, for example, on mainstream television.  This is because the Y generation tends to be sceptical of mainstream advertising and media.  It is a far more credible and effective advertisement if this demographic sees, for example, someone competing in a sports event that is meaningful to that demographic wearing a MONSTER ENERGY helmet and/or sports gear.  The demographic thinks the brand is acceptable and legitimate because an athlete, that is, a credible peer who they look up to is endorsing the product by wearing the helmet and/or sports gear.  They may have never seen the product or tasted it, but immediately relate to the product as legitimate.  This contributes to making the brand “cool”.  For this reason, the sponsorship of athletes is more important than the sponsorship of events.  We obviously sponsor events as well.  But with the latter, the target demographic is more likely to associate the title sponsors of the event with large corporations and may be more sceptical about the product.  The sponsorship of credible athletes who compete in events is the most effective marketing tool.  This is what appeals to the “Y generation”.  Also for this reason, we have approved, in countries such as Australia, the distribution of specific MONSTER ENERGY apparel and merchandise (which I explain in further detail later in this affidavit).  …

Thirdly, by sponsoring athletes and events, MONSTER ENERGY receives an enormous amount of unsolicited press coverage.  The vast majority of references to MONSTER ENERGY one reads in magazines or newspapers, reads or views on the internet, or views on television, are unsolicited.  Again, because we are appealing to the X [sic] generation, an unsolicited article or web cast is much more meaningful and credible than a solicited article or web cast.

The fourth reason is that by sponsoring athletes and events, widespread and global exposure is created.  The athletes’ exploits are followed avidly by those attending the events, and by many more viewers that watch the television and webcast broadcast of these events and follow the sports.  The athletes create enormous public exposure and awareness of the MONSTER ENERGY product.  This way, our target demographic in a country becomes familiar with MONSTER ENERGY before it is launched in the country.  Further, the focus on international events, and events which are popular internationally, helps to attract distributors in other countries and so helps to lay a foundation in other countries before MONSTER ENERGY is launched in those countries”. 

[Emphasis added].

72                  There is nothing unusual in this strategy of sponsorship and promotion.  It involves the brand becoming part of the popular culture.  The consumers are themselves lured into spreading the message.  Each recipient of the brand message becomes a messenger spreading the word to yet more messengers who tell a few more and so on.  The aim is to find the trendsetters and encourage them to talk about their product to their own friends and admirers.  Nor is this ‘word of mouth’ or ‘viral’ marketing really new – what is perhaps new is the recent advancement in the variety and sophistication of techniques used in its implementation; these include the building of web communications so customers can chat about their product experiences online, and using prominent men and women to display or talk up a brand in public places.  Such celebrities are now shown worldwide through the use of modern communication networks. 

73                  For many years marketers have used involvement with sports as a way to promote goods and services.  Events and tie-ins to sports have proven an effective way to reach potential customers.  Spectators are attracted to extreme sports, such as skateboarding, snowboarding and BMX biking, which are often dangerous and creative.  Such sports have become more popular and are shown through all forms of communication world wide.  Extreme sports are about a particular lifestyle, which some younger people respond to and enjoy.  Here, Hansen’s intention is to make the brand have an authentic connection with and become part of the extreme sports community and then to have it become better known from there to the target audience.  From a marketing perspective, the key is the promotional opportunities associated with sporting events and celebrities.

74                  However, accepting all this as the approach taken, and accepting that we are in the age of global communications and the extensive use of the internet, the first principal question is whether the evidence establishes that the necessary proportion of potential customers in Australia have became aware of Hansen’s product so that Hansen has a sufficient reputation in the mark MONSTER ENERGY or MONSTER.  In my view it does not.

75                  It is not (without more) sufficient to point to extreme sports enthusiasts or participants exposed to Hansen’s product, or merely to show isolated or fleeting references to MONSTER, MONSTER ENERGY or to some other indicium that may be associated with the product without showing, or it being appropriate to infer, the impact such references may have on those exposed to such indicia. 

76                  The awareness of the target audience must be one which in a practical and business sense is such that it can be said that the Hansen product is known to the people who are the potential customers, mainly but not exclusively, young male adults.  The awareness must be of a sufficient level to demonstrate sufficient knowledge in Australia of the mark MONSTER and MONSTER ENERGY as associated with the Hansen product. 

77                  This can only be done through appropriate evidence.  The Court must be satisfied, on the balance of probabilities, as to the existing reputation.  As Gummow J reminded us, caution must be taken in treating findings found at an interlocutory level as if they would be findings which would suffice to establish reputation at trial (see ConAgra 33 FCR at 354).

78                  The evidence necessary or sufficient to establish reputation to found a case for passing off and contravention of the TPA will depend upon various factors (see eg Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Limited (2007) 71 IPR 571 at [58]-[59]).  Reputation may be inferred from a high volume of sales and extensive advertising, without any other direct evidence (see in a different context, Kenny J in McCormick & Company Inc v McCormick (2000) 51 IPR 102 at [86]-[88].  In this proceeding, there are no sales or direct advertising or promotion of Hansen’s product in Australia.  Rather, the evidence relied upon is that of exposure to persons in Australia through the marketing strategy adopted by Hansen to reach its target demographic primarily in other countries. 

79                  No expert evidence concerning the reputation of Hansen’s product in Australia, nor any survey evidence as to the reputation in and public recognition of the Hansen product in Australia, was sought to be led by any party, although such evidence would be potentially admissible: see Natural Waters (2007) 71 IPR at [30].

80                  As I have said, reliance has been placed by Hansen upon a strategy ‘to lay a foundation’ in Australia (for instance) before the Hansen product is launched.  Whilst the young male adult is accepted as the target market or the main potential customer, the initial focus of the strategy is upon those who are involved in or watch extreme sports, which sports have an international focus and appeal.  No direct evidence has been led as to the number of persons who fall within the potential extreme sports target customers, nor as to the number of persons who fall within the potential young male adult target customers, although there is some indication on the evidence tendered by Bickfords that there were some 1.01 million males in Australia aged between 18 and 24 over the relevant period.  The Court has been asked not only to accept that the strategy of targeting extreme sports has been successful but, more importantly, has extended to the potential young male adult customers that are the potential target market through the technique of ‘word of mouth’ marketing described previously.  I am not persuaded on the evidence that over the relevant period the foundation laid has reached the level of establishing the required reputation in the Hansen mark in Australia.

81                  In this proceeding, I have taken into account not only the number of references to the get-up of Hansen’s product, but also the context in which they appear, so as to evaluate properly the evidence presented and the effect it may have on the potential customers targeted, namely young male adults.  Where, as in this proceeding, the get-up is striking and distinct, a reputation may be more readily and quickly obtained, but the Court cannot assume this has occurred in a market where the product has not been sold or directly advertised.  It may be that in these circumstances potential customers will not necessarily associate any get-up, packaging, or design with the Hansen product.  It will all depend upon the extent of the customers’ own interests (say in a particular extreme sport) and his or her own previous exposure to the product.

82                  The Court has also been provided with evidence of multiple exposures, which must be considered as a whole.  However, one is confronted with the question of whether the same people see each and every example of the exposures, and observe similar parts or aspects of the get-up, and whether the exposures have in fact yet reached the target demographic, as distinct from just the extreme sports enthusiasts.  It is accepted by Hansen that the strategy that has been adopted is to pave the way for the expansion into new territory (such as Australia), and is to give ‘credibility’ in the eyes of its target demographic.  However, this Court needs to determine whether the strategy has at the relevant date been developed to such a stage as to give the exposure that is required by law.  After all, the law promotes innovation and local competition, and the Court must be mindful not to make orders to protect persons who do not establish on the evidence that their brand is sufficiently well known in Australia.

83                  To give an example of the development of the marketing strategy that is anticipated, one need only look to the strategy in respect of the website.  The concept is to develop an interactive and compelling website that represents the product and builds the product image for a relatively new product.  The aim of the website is to develop an emotional response between the consumer and the product.  This will take time, and the development of the emotional connection will not (by definition) occur with a substantial number of people or, necessarily, any one person immediately.  In my view, the website concept, accepting it to involve a good marketing strategy, has not been demonstrated to reach the stage of development to indicate sufficient exposure to the Hansen product to potential customers in Australia.

84                  There is some direct evidence of customers in the relevant demographic being actually misled as to the source of a product; the Court should give great weight to such evidence when considering whether a representation or conduct is potentially misleading or actually misleading.  However, the principal issue in this case is that of reputation; the Court must make its own assessment and evaluation of the evidence in considering whether there is a sufficient reputation established.  In weighing up the direct evidence of the customers presented in this proceeding, the Court needs to consider the circumstances of each witness, and to determine to what extent that witness is part of the target demographic, which is not just the extreme sports follower, but the young male adult.  It may well be that extreme sports followers, having seen the material relied upon by Hansen, were aware of the Hansen energy drink and mark, but, even then, this does not necessarily mean that the potential young male adult customer, a wider group of consumers than the extreme sports follower, would have the same awareness or knowledge as the extreme sports followers.

85                  Further, the Court should be careful in drawing upon the advertising strategy of other companies and their experiences, as each strategy will be adopted to the specific product and will depend upon the extent to which the product advertised is already known, along with other considerations.  To say, as does Hansen, that one or two minutes of exposure of the Carlton Draught brand of beer during 120 minutes of a football match would be regarded as very helpful advertising by Foster’s (which I accept) does not assist in answering the question for determination in this proceeding.  Everything will depend upon the recognition already in the brand name, and there is a difference between building that recognition from scratch, and reinforcing recognition of an already well-known brand.  Similarly, the position in the United States, where there have been substantial direct sales and substantial advertising of the MONSTER ENERGY drink, is quite different from the position in Australia, where such sales and advertising do not exist.  Further, any reliance upon Billabong’s marketing strategy and its success, whilst demonstrating that the marketing strategy may be a good one, does not demonstrate (in itself) that the Hansen marketing strategy as adopted in Australia has achieved the same results as the Billabong strategy.  As I have said, the success or otherwise of the strategy in each case will depend upon many influencing factors, including the extent to which a product is already or becomes well known.

86                  Take for instance the exposure in the form of the words MONSTER and MONSTER ENERGY and the ‘M’ claw device appearing on athletes’ clothing or headgear and on various signage (including giant cans, barriers, banners and tents) at a particular event, with the exposure in Australiabeing through television, assuming by way of example only that it was occurring every minute or two throughout the 90 minute programme, with the one minute reach of viewers being 26,000 and 30 minute reach being 6,000.

87                  Undoubtedly, I could conclude that a certain number of persons would immediately know of and recognise the get up and product of the Hansen product by reference to the words MONSTER or MONSTER ENERGY.  This may be because they had seen it elsewhere, possibly in other countries or in magazines, and knew of its existence.  Others may have been exposed by the broadcast of the sports event for the first time, and have no real appreciation of the significance of, or attach any importance to, the get-up or product.  These people may, however, gain a greater appreciation and knowledge if they had further exposure.  I do not know and cannot infer how many of the target demographic watchedthe program, or who becamesufficiently familiar with the product.  It could be that within the numbers viewing some werefemale, younger than 18, or over 30.  If I assumed that mainly extreme sports enthusiasts watched the programme, I could not extrapolate how many young adult males may have come to know or recognise the product, yet alone how many of the wider number of potential customers.

88                  Further, in this proceeding, exposure comes in varying forms and not always by reference to the combination of all three elements – the words MONSTER, MONSTER ENERGY and the ‘M’ claw device - or even by reference to the fact that such relate to an energy drink.  This makes it all the more difficult to assess the impact upon those viewers who are watching the events on television and who are not at the event itself.  The AMA motocross programs relied upon by Hansen (depicting motocross events in the United States), had only a few seconds of legible exposure of the words MONSTER ENERGY on banners.  The words MONSTER ENERGY were otherwise not visible or only fleetingly so.  The television programs must be viewed with this in mind when considering the question of reputation.

89                  I deal with one other matter before considering some of the specific instances of exposure relied upon by Hansen. 

90                  Hansen relied upon the evidence of third parties wanting to become involved in the distribution of the Hansen product in Australia, along with Bickfords’ own conduct and research, in support of its case to establish reputation in Australia. 

91                  There is no doubt that there was an interest in developing the new energy drink product in Australia by other companies; they approached Hansen to this end.  However, the interest of other parties in Hansen’s product shows that they were aware of the product, and probably considered it would market well in Australia, but does not in itself, or in combination with the other evidence presented on behalf of Hansen, show a sufficient reputation in the young male adult market or in other potential customers in Australia.  In my view, such evidence of the interest of third parties does not show the extent to which the Hansen mark MONSTER ENERGY had a reputation in Australia.

92                  Bickfords’ own conduct does not advance the matter any further.  There is no doubt that Bickfords’ campaign was similar, very similar in fact, to that of Hansen.  The strategy as described by Mr Sacks of Hansen could equally describe the strategy of Bickfords.  However, this does not mean that the strategy of either Hansen or Bickfords had been implemented to the stage necessary to have the sufficient market exposure. 

93                  Hansen also specifically relies upon favourable survey evidence of Bickfords in support of Hansen’s own case to help demonstrate the success of the Hansen strategy and particularly exposure through the web.  There are a number of problems with this approach: the survey relied upon was conducted between 25 July to 8 August 2006 (after the relevant date of April/May 2006), there were only 264 respondents to the survey, and the question ‘where have you heard/seen MONSTER ENERGY drink advertising’ was responded to after Bickfords had entered into the market with its own energy drink product.  Whilst I do not consider that the Bickfords exposure was at all substantial, there is the real possibility that those surveyed may have been influenced by the two ‘competing’ products and mistakenly answered the survey as to where they had seen a brand of the product enquired about.  For these reasons, I regard this material to have little or no weight in assisting Hansen to prove its reputation. 

94                  In relation to the specific evidence of exposure which I summarise later, I make the following conclusions.

95                  Many extracts showing exposure only show Hansen’s ‘M’ claw device and do not show visibly the words MONSTER or MONSTER ENERGY.  Hansen’s claim is not that the claw device or any similar device was distinctive in Australia of Hansen or its products.  Hansen’s claim is based on the names MONSTER and MONSTER ENERGY.  The present proceedings must therefore turn on evidence demonstrating a reputation amongst Australian customers by reference to the names MONSTER or MONSTER ENERGY.  The fact that Bickfords opposes Hansen’s application for registration as a trade mark of the ‘M’ claw on the ground that the claw brought to mind the marks MONSTER or MONSTER ENERGY does not, in my view, assist Hansen in overcoming the way it has pleaded its case, nor does it demonstrate as a matter of evidence, that Hansen has in fact generated a sufficient reputation in Australia.  At best, the ground of opposition reflects an argument being put forward by Bickfords, after receiving legal advice, that Australians are familiar with the ‘M’ claw and its use in association with the marks MONSTER and MONSTER ENERGY.  Whether this is so or not will depend upon the evidence. 

96                  Nevertheless, the evidence in this proceeding demonstrating use of the claw device without MONSTER or MONSTER ENERGY does not in my view take the case of Hansen any further.  The exposures of the ‘M’ claw on its own suffer from the same deficiency as do some of the exposures of the words MONSTER or MONSTER ENERGY; the references are fleeting, sometimes isolated, and not necessarily referable to the product itself. 

97                  As to the television and DVD evidence, my evaluation is that the potential customer (other than perhaps some of the extreme sports enthusiasts) would have only observed occasional fleeting and background references to Hansen’s brand, which made up a relatively small part of each program, and were shown amongst many other words, names and brands.  For example, I am not persuaded that whoever in Australia may have been watching the program ‘AMA Motocross Mt Morris 2005’ on FoxSports 1 at 1pm on Wednesday 7 September 2005 necessarily paid much attention to the scattered portions cumulatively making up the 3 minutes and 15 seconds of Hansen’s footage which occurred within that 90 minute program.  Further, during that 90 minute program, other brands competed with Hansen’s MONSTER ENERGY for the attention and memory of any such Australian viewers, including brands which may have been more readily recognised and remembered by Australian viewers than Hansen’s brand.

98                  By way of example of the fleeting, occasional and incidental references in magazines to the mark MONSTER ENERGY, I refer to two specific magazine exposures.  One is an article in the magazine ‘Australasian Dirt Bike’ (November 2005 Edition) (which copy article is Schedule A to this judgment) about Ricky Carmichael, a motocross rider, which visually depicts a motocross rider (presumably Ricky Carmichael), and giant MONSTER ENERGY cans with the ‘M’ claw.  This is an example of a specific reference to the MONSTER ENERGY drink, and is the most pronounced and explicit of the magazine exposures.  However, this is an isolated example.

99                  The other, more typical, magazine exposure in ‘Australasian Dirt Bike’ (August 2005 Edition) is as shown in the copy advertisement which is Schedule B to this judgment; it displays a motocross rider (presumably Sean Hamblin) with the MONSTER ENERGY mark shown with the claw, but in an advertisement for riding accessories, and involving many other visual references.  The object of the advertisement is not to sell or necessarily display MONSTER ENERGY, but to advertise riding accessories.  Even assuming the same people subscribe to or purchase the magazine every month over a period of, say, three years, the awareness of those people of this type of exposure will be insufficient for a reputation in Australia to arise in relation to MONSTER ENERGY.  The advertisement is directed to something other than the energy drink, the MONSTER ENERGY mark and claw (whilst in this case clearly depicted) are amongst other displayed brands, and the advertisement itself is just one page amongst many in the magazine devoted to an ‘extreme sport’.  Whilst the same readers of the magazine will presumably follow their chosen extreme sport through websites, DVDs and television, the references to MONSTER ENERGY in these media are in the main of the same quality as in this advertisement.  In some instances on the television programs, there is only a reference to the ‘M’ claw and, in the case of moving pictures, the depiction of the mark MONSTER ENERGY or MONSTER is even more fleeting and could go unnoticed.  Whilst the extreme sport takes place before the live audience, it is primarily televised or shown through a DVD to the Australian viewer.

100               I accept the submission of Bickfords that the proper analysis of any material is to consider the position of actual viewers or readers, who are likely to have been primarily focused on the extreme sports in question, without any real perception of the advertising for all the various brands in the background to the action.  This is not to say that some or all of the exposure of the mark MONSTER ENERGY is not perceived by some or all of the viewing public, but I must be persuaded that the relevant Australian young male market did the perceiving, or at least came to know later of the brand through word of mouth, and that the extent of the reputation amongst potential customers in Australia is at such a level to justify the Court’s intervention.

101               With regard to both the television and magazine evidence, I draw a distinction between the exposure of images of Hansen’s brand in the United States, where many may have purchased and consumed Hansen’s product, and of television viewers and magazine readers in Australia who have not had any other exposure to Hansen’s product.  In my view, because of the quality of the exposure in Australia, viewers and readers would not have a level of awareness or appreciation to give rise to the reputation arising as contended for by Hansen.  In the United States the position in all probability would be quite different.

102               In the end, I accept Bickfords’ submission that any exposure of Hansen’s brand in Australia is a by-product of its targeting of the United States and other markets where its product is actually sold, and only the beginning of its strategy to lay a foundation in Australia.  Such incidental exposure of Hansen’s brand does not provide a proper basis for the reputation Hansen now claims in Australia, at least on the evidence presented to this Court.

specific evidence of Hansen’s reputation

103               The evidence which was tendered or sought to be tendered by Hansen to prove its reputation in Australia was ultimately summarised in Schedules of Exposure at the direction of the Court.  It was accepted that the Schedules of Exposure described the relevant exposure, although it was for the Court to carry out the evaluative process of looking at the exposures in their context.  Each Schedule refers to a different type of evidence; for example evidence of exposure to the MONSTER or MONSTER ENERGY marks via television, or evidence of exposure through websites.  I will be referring to each of the types of exposure in turn.

104               However, in setting out the exposure evidence, it must necessarily be summarised.  The Schedules of Exposure before the Court set out the extent of exposure, but it is the quality of the exposure that has been the major influence in the reaching of my decision.  In fact, whilst in this proceeding Hansen has tendered much material to show references to the MONSTER or MONSTER ENERGY marks, via many media, this should not beguile one into thinking the marks are necessarily, on this basis alone, known to the required proportion of potential customers.  In a case where there is no direct advertising, where there are no sales in Australia, and where the marketing strategy is for laying the foundation for a subsequent launch, the context of the exposure is all important in the evaluation task to be undertaken by the Court.

105               There was a great deal of evidentiary material sought to be tendered by Hansen which was objected to by Bickfords.  Many objections were dealt with at trial; some were not pressed, and others were to be treated as subject to relevance or weight.  One matter which was left for a specific ruling concerned the admissibility of television ratings data, which I deal with later. 

106               As to the debate about relevance, other than rejecting any evidence of reputation of Hansen after April/May 2006 insofar as it concerns Hansen’s claim, I have treated the other disputed evidence relied upon by Hansen as relevant, accepting the submissions of Hansen.  I should indicate that evidence relating to the reputation of Hansen after April/May 2006, whilst not relevant to Hansen’s claim, is relevant to the cross-claim, where the ‘competing’ reputation of each party is put in issue. 

107               In relation to the evidence of the witnesses called by Hansen who were not required to attend for cross-examination, I have accepted their evidence, but have taken into account their own experiences and awareness of the MONSTER ENERGY mark. 

108               There were some other specific matters raised by Bickfords in relation to certain of the evidence, and it is convenient to set out my conclusions here and indicate the basis upon which I have approached this disputed evidence.

·                    I accept that by a combination of the oral testimony led by Hansen and the description of Hansen’s website, there is evidence describing the Hansen website over the relevant period, and that on that website there was an exposure of the mark MONSTER ENERGY and MONSTER. 

·                    I have accepted (as estimates only) the number of spectators at an event, where an estimate is given by a witness who actually attended the event.  In my view, each such witness was in a position to provide at least an estimate of the number of spectators from the witness’ observation on the day.  If no estimate is given by a witness, I draw no conclusion other than that there was an exposure at the event to at least some potential customers.

·                    In relation to website visits, I have accepted the figures set out in the Schedules of Exposure.  Where no evidence is specifically given in relation to a website for the relevant period, I have inferred that some potential customers did visit the website, but I cannot conclude how many.  I consider that even accepting the number of visits to any website, the evidence does not reveal any profile about the visitors themselves, the purpose of the visit, what pages were seen, or what the focus of the visit was.  These are matters I do not speculate upon for the purposes of this proceeding.  Nevertheless, I can infer that some potential customers did visit the website and became aware of all the material contained therein in one way or another.

·                    In the absence of specific evidence in relation to the distribution of Australian magazines and DVDs said to be available in Australia, I have inferred that if such magazines and DVDs have been available in Australia at a retail level, some potential customers will have purchased or seen such magazines and DVDs.  This seems an appropriate inference to draw where there is evidence that the magazines or DVDs have been made available and seen by a number of people in Australia.

·                    Importantly, where a witness has a particular interest in the business of, participation in, or spectating of, various extreme sports, in accepting their evidence I do not necessarily extrapolate their awareness or knowledge more broadly to the wider community or to potential customers, or even the target market.  I return later to some specific examples of such witnesses.  Nevertheless, some of these witnesses are members of the target market, or are members of potential customer groups and as such their experiences and awareness are of great significance.  In the case of direct advertising in magazines (for instance) the fact that such are only read by a subset of the target market may in appropriate circumstances be sufficient evidence of the required reputation that is sought to be shown in this proceeding.  However, everything will depend upon the nature of the advertising, and the distribution and period of distribution of the magazines.  In this case there is no direct advertising, and a careful evaluation of the impact of the references to MONSTER ENERGY or MONSTER is required.  In my view, an evaluation of the references to MONSTER ENERGY or MONSTER in the magazines (for example) is such that the references do not lead to the level of awareness, even amongst the readers of the specific interest magazines, required to conclude that the requisite level of reputation amongst potential customers in Australia has been reached.

·                    Where no evidence is available to show that the exposure occurred before the relevant date (such as in the case of the photographs or website exposure of Aaron Gobert, a 26 year old professional superbike racer), I have not had regard to that evidence, which was provisionally admitted subject to establishing relevance by reference to the relevant date.

109               I now turn to the various types of exposure in turn.

Television exposure

Approach generally to television exposure evidence

110               Hansen, as part of its evidence going to the extent of television exposure of its mark in Australia, tendered an affidavit of Mr Geoff Alford sworn on 6 December 2006 and another of Ms Kate Inglis-Clark sworn 21 February 2007.  Objection was taken by Bickfords to the reception of both affidavits, principally to that of Mr Alford, to which I focus my attention.  Mr Alford deposed to various experience and knowledge in relation to the ‘collection of data and its combination with demographic information for the purposes of statistical analysis, in particular those applicable to the estimation of relative audience sizes in respect of television programs, referred to as “ratings”’. 

111               It is convenient now to deal with the objection taken by Bickfords.  I should say that even if this affidavit evidence were accepted, it would not alter the view I have reached in this proceeding, or my evaluation of the quality of the television exposure, assuming the number of viewers contended by Hansen in fact saw the relevant programs.  This is because even if this number ofviewers saw the programs, the extent of the exposure, in my evaluation, would not give rise to the awareness of the marks as contended by Hansen by reason of the quality of the exposure as explained in these reasons.

112               I return then to the objections to the evidence.  In my view, Mr Alford’s evidence is evidence of an opinion, based upon his expertise, which opinion is constituted by his conclusions reached upon collected data of the relevant television ratings estimates.  Therefore, by reason of s 76 of the Evidence Act 1995 (Cth) (‘Evidence Act’) such evidence would not be admissible in this case without reliance on s 79.

113               I say at the out-set that in relation to the application of s 79, insofar as Mr Alford’s area of knowledge is concerned, I accept that Mr Alford has ‘specialised knowledge’.  The question which I will deal with later is whether or not the affidavit otherwise complies with the requirements of s 79.

114               Mr Alford’s company, Geoff Alford Research Services Pty Ltd, is a consultant to OzTAM Pty Ltd (‘OzTAM’) and is a Statistical Auditor of OzTAM.  He is responsible for ensuring that OzTAM is using statistically reliable methods of data collection and analysis for the purposes of reporting ratings information.  OzTAM, which is owned by the Australian commercial television broadcasters, provides information about audience sizes in relevant markets to free-to-air and subscription television providers.  It provides, as a commercial service, television ratings data on both a subscription and an ad hoc, customisedbasis.  In this proceeding, the data was provided on an ad hoc basis to Hansen, and such data was then sought to be tendered and relied upon by Hansen.  The documents sought to be tendered, through Mr Alford, are extracts purchased by Hansen’s solicitors  from the existing available data in the possession of OzTAM and were sought to be tendered as the three exhibits to the affidavit of Mr Alford. 

115               The data which forms the basis of the television ratings figures is collected from a minimum sample of 3,035 homes in Sydney, Melbourne, Adelaide and Perth.  The working television sets in those homes are monitored by a meter system that records when people in the homes register their presence by pressing a button when in a room where a television is on.  That data is uploaded daily and is ‘processed, checked for quality and validated for use in the final television ratings database’.

116               Bickfords contends that the three printouts of data which constitute the three exhibits of Mr Alford’s affidavit, given that they originate from human input, are hearsay, do not fall into any exception to hearsay rule in the Evidence Act, and are therefore inadmissible.  Bickfords also contends that the affidavit of Mr Alford (and for that matter of Ms Inglis-Clarke) does not comply with s 79 of the Evidence Act to the extent that the evidence of Mr Alford is opinion evidence. 

117               Hansen, in response, made four submissions:

·                    First, that the data contained in the printouts is not hearsay, but original evidence.

·                    Secondly, if it is hearsay, the documents sought to be tendered fall within the business records exception under s 69 of the Evidence Act.

·                    Thirdly, the affidavit of Mr Alford (and Ms Inglis-Clark) does comply with ss 76 and 79 of the Evidence Act.

·                    Fourthly, if the documents sought to be tendered are not business records as defined or there is non-compliance with ss 76 and 79, the data and affidavit should nevertheless be admitted in the exercise of the Court’s discretion under s 190(3) of the Evidence Act.

118               It is convenient to deal with each of those arguments in turn, focusing upon the affidavit of Mr Alford. 

119               Before doing so, I observe as a threshold matter that s 146 of the Evidence Act does not relieve compliance with the hearsay and opinion evidence provisions of the Evidence Act, s 146 being simply a provision for facilitating a mode of proof.  To the extent it was otherwise contended by Hansen, I do not accept such submission.

Is the data hearsay or original evidence?

120               Hansen submitted that the data contained in the three exhibits is not hearsay on the basis that the OzTAM system operates as an automatic recording of the information displayed on a television and available to a user who has ‘logged on’ to the system by pressing an assigned button to register their presence in a room.  It was argued that there was no ‘previous representation made by a person’ as required by s 59(1) of the Evidence Act. 

121               Hansen relied on Rook v Maynard (1993) 126 ALR 150, a case dealing with the common law rules of evidence, where Wright J considered the admissibility of data obtained from a computer program which traced the user’s identification number, stating at 157 that:

once the trace was applied to the respondent’s log-on identification, the process then undertaken by the trace was entirely mechanical in that the peregrinations through the data base by that computer user were automatically traced throughout the system and were recorded and stored for retrieval in report form as soon as the trace print-out was called for.

122               His Honour found that the computer output from this process was not hearsay as it did not contain a human element.

123               In R v Wood (1982) 76 Cr App Rep 23, the Lord Chief Justice rejected an argument that where a computer is used in the course of the production of final figures, those figures were hearsay, finding at 27 that:

This computer was rightly described as a tool. It did not contribute its own knowledge. It merely did a sophisticated which could have been done manually by the chemist and was in fact done by the chemists using the computer programmed by Mr Kellie whom the Crown called as a witness.

124               The evidence which was being considered in these cases was data which had meaning only by virtue of its analysis or recording by a computer; that is, the computer was performing a function which produced data helpful to the court.  Although, in Rook, the user had to log on before the computer would begin its tracing function, it was not this logging on which was the fact sought to be proved in that case.  Rather, it was that the computer had undertaken certain functions, which were able to be proved by data resulting from the computer program itself. 

125               In the present case what Hansen is ultimately seeking to prove by the tenderis the audience reach, but derived from some datathat a certain number of people in the sample homes pressed the button when near the television, thereby representing that they were ‘in the room where the television was on’.  I do not accept that Hansen can avoid this conclusion by asserting that it does not rely on the OzTAM data for the purpose of showing certain people were in the room at the relevant time.  Undoubtedly, Hansen seeks to prove the estimated audience sizes for a particular program derived by statistical methods from the data, but such data is not automatically recorded by the meters without the human intervention of deliberately pressing the button to show a person or persons are in the room where the television is on.  When the people are in the room they intend to, and do, make the representation to assert the existence of this fact, the existence of which needs to be proved to form the basis of the statistical analysis.  It seems to me that the necessaryreliance by Hansen on the data derived from the sample homesmust involve the representation (as defined broadly in s 3 and the dictionary in the Schedule to the Evidence Act) by a person that the person was in the room on the relevant occasion,namely when the television is operating. 

126               This is the previous representation (as broadly defined) which, under s 59 of the Evidence Act, makes the sourcedata hearsay which is then used to calculate the audience reach.  It is not because the OzTAM computer processes the information that the data is hearsay, it is because the original makers of the representation (the people pressing the buttons) are not giving the evidence themselves.  The fact that the sourcedata which is fed into the OzTAM system by the users is then processed using a computer program is not germane to the question of whether the underlying evidence which has been put to the Court in this instance is hearsay or not. 

Is the data subject to the business records exception to the hearsay rule?

127               Hansen submitted that, in the event I found that the OzTAM data was hearsay, the evidence forms part of the business records of OzTAM because the reports in question are ‘the very things constituting the business activities of OzTAM’ and are therefore admissible in any event.  Hansen pointed to various authorities, including a number concerning market survey evidence, to support its proposition.

128               It is important to recall that I am considering the documents in the three exhibits, which are extracts, specially obtained by Hansen for the purpose of the proceeding, of the statistical analysisthat is generated on an ongoing basis by OzTAM. 

129               Bickfords contended that the documents in the three exhibits do not fall under the business records exception on the basis that they are not business records, but rather products of the business, in the sense considered by Sperling J in Roach v Page (No 15) [2003] NSWSC 939.  Similarly, Bickfords submitted that the records were not internal ones and as such, as set out in ASIC v Rich (2005) 216 ALR 320, they could not be regarded as business records under s 69.  Additionally, Bickfords argued, the representations were prepared in contemplation of litigation and did not therefore fall within the business records exception. 

130               Section 69 of the Evidence Act provides, relevantly, as follows:

(1)       This section applies to a document that:

            (a)        either:

              (i)         is or forms part of the records belonging to or kept by a person, body or organisation in the course of, or for the purposes of, a business; or

          (ii)        at any time was or formed part of such a record; and

              (b)        contains a previous representation made or recorded in the document in the course of, or for the purposes of, the business.

(2)       The hearsay rule does not apply to the document (so far as it contains the representation) if the representation was made:

           (a)      by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact; or

     (b)      on the basis of information directly or indirectly supplied by a person who had or might reasonably be supposed to have had personal knowledge of the asserted fact.

(3)       Subsection (2) does not apply if the representation:

            (a)        was prepared or obtained for the purpose of conducting, or for or in contemplation of or in connection with, an Australian or overseas proceeding; or

            (b)        was made in connection with an investigation relating or leading to a criminal proceeding.

131               In my view, s 69(1) was drafted deliberately broadly, with the rationale being to allow as an exception to the hearsay rule the tender of documents which, by virtue of the fact they are kept as records of the business, should be assumed to be accurate.  However, a document created to be sold as part of a business should not be considered to be a record kept in the course of or for the purposes of the business, just because there is reason to believe that the document is to be regarded as reliable and accurate.  One has to determine whether the document is in truth a record of the type described in s 69(1). 

132               In my view the documents sought to be tendered as the three exhibits are not to be regarded as documents which are or form part of the ‘records’ of OzTAM.  Merely describing the documents as the ordinary stock in trade of a business, or the produce of the core business activities of a business, does not necessarily mean that such documents form part of the records of a company in the course of, or for the purposes of its business within the meaning of s 69(1). 

133               The records referred to in s 69(1) of the Evidence Act are the documents a business generates in the course of, or for the purpose of the business, not documents which it may have or keep as the product of that business.  The concept of a business record is an internal record, kept in an organised form accessible in the usual course of business, actually recording the business activities themselves and does not include the product of the business itself: see Sperling J in Roach v Page [2003] NSWSC 939; ASIC v Rich (2005) 216 ALR 320 at [180]-[182] per Austin J. 

134               To the extent that Spender J decided in Supetina Pty Ltd v Lombok Pty Ltd (1984) 5 FCR 439a principleto the contrary, with respect, I do not regard that view to be correct.  His Honour did not have had the advantage of the analysis undertaken in the authorities to which I have just referred. 

135               Other authorities were relied upon by Hansen, but I do not consider they take the matter any further or specifically address the issue of the tender of the documents in the three exhibits, being extracts obtained by Hansen effectively of statistical information produced and created by andin the possession of OzTAM: see for example Compafina Bank v ANZ Banking Group Ltd [1982] 1 NSWLR 409; R W Miller & Co Pty Ltd v Krupp (Australia) Pty Ltd (1991) 32 NSWLR 152; Shoshana Pty Ltd v 10^th Cantanae Pty Ltd (1987) 11 IPR 249; and Trade Practices Commission v Arnotts Ltd (1990) 93 ALR 657.

136               Hansen contended that the contrast between the OzTAM reports and publications considered by Sperling J in Roach v Page was ‘stark’.  Hansen contended that it was not the function of OzTAM business to publish books, newspapers or other publications for wider dissemination for advertising or promotional purposes. 

137               However, the fact is that the actual documents sought to be tendered in the three exhibits are the very documents the OzTAM business is providing as part of the product of its business to third parties.  They were in fact purchased by Hansen’s solicitors for the purposes of tendering in this proceeding.  The fact that these documents may not be widely disseminated, or that their purpose is not to advertise, does not mean that the principle expressed by Sperling J does not apply to the tender of the documents in question. 

138               Accordingly, I consider that the documents in the three exhibits are not admissible as business records.  I do not need to consider whether the representations relied upon were prepared in contemplation of litigation.

139               Without reliance on the documents in the three exhibits, the evidence of Mr Alford would not assist Hansen.  I would not then need to deal with the question of compliance with s 79 of the Evidence Act.  Nevertheless, it may be that if the data sought to be relied uponwere not admissible, but the affidavit otherwise complied with s 79 of the Evidence Act, I would exercise my discretion to admit the evidence sought to be adduced.  However, I have come to the view that the affidavit of Mr Alford does not comply with s 79 of the Evidence Act, and that I should not exercise my discretion to admit the affidavit of Mr Alford (or the three exhibits thereto).

140               It is important that opinion evidence sets out the process of reasoning so that the opinion satisfies the requirements of s 79.  As the Full Court said in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 239 ALR 662 at [108] – [109]:

Further, unless a witness states in his or her evidence in chief the grounds and reasoning that have led to the opinion, the opinion is valueless.  Before the Court can assess the value of an opinion, it must know the facts on which it is based.  If the opinion is based on irrelevant facts or facts that are clearly not going to be proved, the opinion is likely to be valueless.  It should not be for a cross-examiner to endeavour to elicit the facts or assumptions upon which an opinion is expressed, and it would be unfair to leave such matters to the cross-examiner.  Except in a straightforward, uncomplicated case, where the facts are admitted or otherwise readily identified, opinion evidence would normally be rejected under s 135 if the facts or assumptions upon which the opinion is based are not expressly stated. 

It is for the Court to judge the reliability of, and the weight to be given to, particular evidence.  Opinion evidence, like any other evidence, must be comprehensible and reach conclusions that are rationally based.  The process of inference or reasoning that leads to conclusions ought to be stated or revealed in a way that enables the conclusions to be tested and a judgment to be made about their reliability and the weight that should be given to them.  If not, the opinion evidence would normally be rejected under s 135. 

141               Apart from the information contained in the exhibitsto the affidavit, Mr Alford’s opinion evidence was significant in that it purported to give evidence as to the processing, checking for quality and validating the use of the data in the final television ratings database.  There was no evidence as to who did this, or how various ‘standard statistical methods’ were adopted by him or the nature of the ‘publicity and reliable demographic information’ referred to by him.  Ms Inglis-Clark did not provide this information, even if this could be relied upon to support Mr Alford’s material.  Mr Alford’s evidence is more than a view expressed about business or professional practice, and cannot be equated to that, of say, a valuer who relies upon his own experience and observation in the giving of evidence. 

142               In the case of Mr Alford’s evidence, it being opinion evidence, the requirements of s 79 of the Evidence Act needed to be complied with and, in my view, they have not been.

143               I am then left with evidence which is sought to be tendered which does not comply with the Evidence Act. 

Discretion to admit the evidence under s 190(3) of the Evidence Act

144               The question then arises as to whether I should exercise my discretion to admit the affidavit of Mr Alford or the three exhibits in these circumstances.  It was suggested that there may have been a failure to comply with the Guidelines for Expert Witnesses, but in the circumstances of this proceedings, I am not prepared to assume there has been such a failure, and do not take such into account in exercising my discretion one way or the other.

145               I am not persuaded that I should now exercise my discretion under s 190(3) of the Evidence Act to admit the affidavit material.  If the question of data which could stand on its own and be relied upon, and the hearsay rule only were involved, I may have taken a different view. 

146               I appreciate that the hearsay rule is not to be applied inflexibly.  Chief Justice Mason, in Walton v R (1989) 166 CLR 283, in so regarding the hearsay rule stated that:

(w)hen the dangers which the [hearsay] rule seeks to prevent are not present or are negligible in the circumstances of a given case there is no basis for a strict application of the rule.

Justice Deane made similar comments. 

147               In Arnotts Ltd v Trade Practices Commission (1990) 97 ALR 555, Lockhart, Wilcox and Gummow JJ stated at 604 that:

…it is not very profitable - at least in this court – to spend time in determining whether a particular survey is hearsay evidence. Even if it is, ordinarily the court will have a discretion under O 33, r 3 [a substantially equivalent provision to s 190(3)] to permit the evidence to be adduced. To call the persons who responded to the survey will almost always result in appreciable expense and delay. Given the existence of a discretion, it seems more sensible to concentrate attention upon the necessity for, and reliability of, the survey evidence, rather than to worry about its compliance with rules regarding hearsay evidence which were developed before this type of problem arose.

148               Their Honours went on in Arnotts 97 ALR 555 to point out that modern market survey techniques, if undertaken by experienced and professional people, are highly likely to be accurate.  That approach is a sensible one, and allows a trial judge to assess for herself or himself whether the strict application of the hearsay rule would undermine common sense or justice. 

149               However, in the present circumstances, the evidence of Mr Alford is effectively required, as opinion evidence, to validate the statistical approach.  I do not consider that in the circumstances, where the issue of exposure of a television audience is and has always been a matter that is or could be expected to be in issue, proper opinion evidence should not be before the Court.  It is not for Bickfords to cross-examine Mr Alford to test his approach or his basis of opinion – Mr Alford needed to prepare this himself for the Court. 

150               I do accept that Mr Alford was sufficiently expert and professional in the collection of the relevant ratings data.  I am not saying that Mr Alford’s sampling methods are necessarily flawed.  However, the issue in this case of the number of viewers of the television shows is one which (along with other exposures) has been in contention since the beginning of the proceeding.  Hansen has had ample opportunity to comply with the Evidence Act, and without this compliance, I cannot be satisfied as to the probative value of the opinion evidence in its current form. 

151               The matter to which the evidence relates is genuinely in dispute, namely the specific number of people watching a particular television show or the reach or exposure of the particular television show.  In view of the potential importance of the issue and of the evidence, I do not consider that there would be unnecessary expense or delay involved in requiring adherence to the Evidence Act.  The central issue in this case is reputation, and exposure of the MONSTER ENERGY mark to young male adults and other potential customers in Australia. 

152               When one looks at the matter from this point of view, and specifically in light of the nature of the opinion evidence that must necessarily be relied upon, and not just raw data, I do not consider I should receive such evidence in the exercise of my discretion under s 190(3).

153               In any event, as I have said, even accepting the reach of the television programs as contended for by Hansen, I do not consider that their impact has been such to give rise to the awareness necessary in the target market or any other potential customers in Australia. 

154               Whilst then there is no specific evidence as to the exact extentof television exposures, I do accept that there must be some exposure to extreme sports followers within the target demographic and to potential customers in Australia, although this cannot be quantified.  However, I would be prepared to infer that many people, particularly those with an interest in a particular sport, would view these television programs in Australia.

155               Thesummary of the television exposuresis undertaken by reference to various events occurring outside Australia, although it is to be evaluated in light of my previous observations and views as to quality and impression. 

Motocross/Supercross

156               I turn first to motocross and supercross events.  Hansen gave evidence that it has sponsored motocross/supercross athletes since 2003.  Some of these athletes competed in the AMA supercross championships, which consist of weekly races between January and May each year held at different locations around the US.  Hansen set out each occurrence of broadcasting of these championships in Australia. In summary, the evidence included that ESPN broadcasted the event for between one and two hours on many days in January, February, March, April, May and December in 2004, 2005, and 2006.

157               Evidence was given that the 2005 AMA national motocross series in the United States aired on ESPN in Australia on Tuesday nights, starting mid-year and running for approximately 15 weeks. It was also shown on FoxSports 1 and 2, with some broadcasts being repeated.  Mr Sacks gave evidence that the MONSTER ENERGY/Pro Circuit/Kawasaki team competed in that series, that MONSTER ENERGY sponsored three of those races, and that this three-part event is called the MONSTER ENERGY Triple Crown.  MONSTER ENERGY signage was erected at these three events.  The entire motocross and supercross series were televised live every week on major television channels in the United States.

158               Witnesses gave evidence of the extent of exposure of the MONSTER and MONSTER ENERGY marks resulting from the broadcasts.  Mr Ashley Smith, a department manager of a motorcycle manufacturer, deposed that when motocross and supercross are on TV, it is possible to see MONSTER ENERGY on banners at the events, particularly at those sponsored by MONSTER ENERGY.  He gave evidence, that, where MONSTER ENERGY sponsored the events, banners lined the track, blow up inflatable cans of MONSTER ENERGY are positioned at the finish lines and that the MONSTER ENERGY name and logo appear on clothing, bikes and/or helmets of riders sponsored by MONSTER ENERGY.

159               Mr Gavin Eales, the general manager of Serco Pty Ltd (which, inter alia, imports and distributes kits of stickers bearing the name MONSTER and MONSTER ENERGY for motorcycles), gave evidence that, on the basis of his watching motocross/supercross on television, Ricky Carmichael, an American rider, is sponsored in a very visible way by MONSTER ENERGY, and that the words MONSTER and MONSTER ENERGY feature prominently on Mr Carmichael’s helmet.  Mr Carmichael is the current world supercross champion, having won ten world championships in this sport.  In Mr Eales’ opinion, Mr Carmichael is currently the most famous motocross/supercross rider in the world, and is the greatest motocross and supercross rider of all time.

160               Mr Smith also gave similar evidence about Mr Carmichael’s fame and success in the motocross/supercross arena.  Mr Smith deposed that since Mr Carmichael had signed with MONSTER ENERGY, he always wears a helmet with the MONSTER ENERGY name and ‘M’ claw on it.  He stated that the claw is visible whenever Mr Carmichael appears on television, including when he is on the podium, which occurs after nearly every race in which he competes.  Mr Smith deposed that Mr Carmichael appears on ESPN almost every day, including in certain commercials and that, given Mr Carmichael’s fame, the exposure on his helmet is very valuable.

161               Mr Bernard Ryan is a director of C&R Imports, (which imports and sells motorcycle aftermarket products, including decal kits) bearing the MONSTER ENERGY name.  Mr Ryan deposed that followers of American motocross and supercross in Australia are able to follow it on television, principally on Channel 10, SBS and pay television.  He gave evidence that Mr Carmichael wears a helmet which prominently features the MONSTER ENERGY name and logo, and when he wins he is seen drinking MONSTER ENERGY products.

X Games

162               Mr Sacks deposed that MONSTER ENERGY-sponsored athletes participated in the Summer X games in the United States and that some of those athletes were awarded medals.  He said that certain MONSTER ENERGY athletes also participated in the Winter X games in the US.  By way of example, MONSTER ENERGY sponsored Doug Henry, one of the best and most popular racers in AMA motocross and supercross, having won the gold medal in the 2005 Summer X games.  Mr Thomas O’Neill, a student and fan of BMX racing, gave evidence that in early 2005, highlights of the X Games were televised on ESPN in Australia between approximately 4pm and 9pm each night for about five days.  Mr O’Neill noticed the green MONSTER ENERGY ‘M’ claw on Ryan Guettler’s helmet whilst watching the X Games.  Mr O’Neill also gave evidence that the ‘M’ claw appeared on other competitors in some of the other sports which were included in the ESPN highlights.

163               Mr Ryan Guettler, a BMX athlete, also gave evidence which was the subject of cross-examination.  I will return specifically to Mr Guettler’s evidence later.

Downhill Mountain Biking

164               Mr Sacks gave evidence that MONSTER ENERGY commenced sponsoring the Iron Horse/Madcatz professional mountain bike racing team on 1 January 2004.  Mr Sam Hill, a professional mountain bike racer, gave evidence that he had seen mountain bike racing on Fuel TV and stated that there is sometimes mountain biking on the Channel 10 news.  Mr Ryan deposed that he watches mountain bike racing when he can and that he is aware that Mr Hill is sponsored by MONSTER ENERGY and has been for several years.  He stated that the MONSTER name and logo appear prominently on Mr Hill’s bike, helmet and riding gear.  Evidence was given that Mr Hill competed in and won the national downhill round in Tasmania with approximately 400-500 competitors and approximately 5000 spectators, with Mr Hill being interviewed on ABC News after the race.

Billabong XXL Wave Awards

165               Hansen also led evidence that since 1 April 2004, the Billabong XXL Biggest Wave Awards competition has been sponsored by Billabong along with MONSTER ENERGY.  Two of the awards are named ‘MONSTER ENERGY Biggest Tube Award’ and ‘MONSTER ENERGY Biggest Paddle Award’.  Australians have featured in the awards, with Dylan Longbottom winning the MONSTER ENERGY Tube Award in 2005 and Laurie Towner being nominated for the MONSTER ENERGY Tube Award in 2006.

166               Hansen also led evidence that in February 2006, Fuel TV, on 15 occasions, aired a three minute and five second short program on the Billabong XXL Wave Awards, which contained several references to MONSTER ENERGY.  The MONSTER and MONSTER ENERGY brand exposure at the awards included posters, banners and hanging curtains at the entrance to the ceremony, along with the MONSTER and MONSTER ENERGY marks on the giant cheque which was presented to the winner of each award.  Further, MONSTER ENERGY appeared on the blouse of the ladies who led the winners of the awards from the audience to the stage. 

BMX Riding

167               During April 2006, episode one of the 2006 BMX Games was broadcast on three occasions on Fuel TV.  Episode one of the games contained a reference to the MONSTER ENERGY ‘M’ claw. 

Wakeboarding

168               Monster Energy commenced sponsoring Australian professional wakeboarder Daniel Watkins on 4 August 2005.  Mr Watkins is required to wear a MONSTER ENERGY painted helmet and a MONSTER ENERGY sticker on his board and boat, and gave evidence that he works hard to give the marks as much exposure as possible.  In August 2005 Mr Watkins competed in the final of the X Games in the United States, which were shown live in ESPN in Australia.  Mr Watkins took part in an interview wearing his MONSTER helmet, which was broadcast on ESPN.

169               Relevantly, between January and March 2006, various shows featuring wakeboarding and MONSTER ENERGY-sponsored athletes were broadcast in Australia, including the Gravity Games H2O on Fuel TV (some episodes being broadcast three times) and 'Wake Life' on Channel 31.

Dew Action Sports Tour 

170               Between 12 December 2005 and 27 March 2006, Fuel TV broadcast 17 different episodes of the Dew Action Sports Tour, which is evidently similar to the X Games.  The events take place at various cities in the United States and covers BMX, motocross and skateboarding.  Ryan Guettler competed in and won several events in the 2006 Dew Action Sports Tour.  Other MONSTER athletes have also competed in the Tour.

171               Mr Thomas O'Neill gave evidence that he has seen the MONSTER ENERGY marks on Fuel TV, and specifically whilst watching coverage of the Dew Action Sports Tour.

Magazine/Newspaper/Catalogue Exposure

172               Hansen led evidence that there were references to MONSTER ENERGY in various magazines available for purchase in Australia.  The extent of publication of the MONSTER ENERGY mark or ‘M’ claw varied somewhat between the magazines and editions thereof, but the references were in the main incidental and, in a relative sense, minor.  That evidence may by conveniently summarised, by publication, as follows:

Magazine: Transworld Motocross (American)

Edition                                                Circulation                             
March 2003                                         No evidence given                                           

April 2004                                            No evidence given       

May 2004                                            No evidence given       

June 2004                                            No evidence given                   

July 2004                                             No evidence given                   

August 2004                                         No evidence given       

September 2004                                   No evidence given       

October 2004                                      No evidence given       

November 2004                                   No evidence given       

December 2004                                   No evidence given       

January 2005                                        No evidence given

February 2005                                     No evidence given

March 2005                                         No evidence given

April 2005                                            No evidence given

May 2005                                            No evidence given       

June 2005                                            No evidence given                   

July 2005                                             No evidence given                   

August 2005                                         No evidence given       

September 2005                                   No evidence given       

November 2005                                   No evidence given       

December 2005                                   No evidence given       

January 2006                                        No evidence given       

February 2006                                     No evidence given       

March 2006                                         No evidence given       

Magazine: Freerider MX (Australian)

Edition                                                Circulation                             
February/March 2004                          17,811 copies*

August/September 2004                       18,890 copies**

February/March 2005                          18,922 copies***

October/November 2005                     19,718 copies****

* average monthly net sales figure for period 1 January 2004 to 30 June 2004

** average monthly net sales figure for period 1 July 2004 to 31 December 2004

*** average monthly net sales figure for period 1 January 2005 to 30 June 2005

**** average monthly net sales figure for period 1 July 2005 to 31 December 2005

Magazine: Australasian Dirt Bike (Australian)

Edition                                                Circulation                             
April 2005                                            26,592 copies^

May 2005                                            26,592 copies^

June 2005                                            26,592 copies^

July 2005                                             27,825 copies^^

August 2005                                         27,825 copies^^

November 2005                                   27,825 copies^^

December 2005                                   27,825 copies^^

January 2006                                        28,015 copies^^^

March 2006                                         28,015 copies^^^

^ average monthly net sales figure for period 1 January 2005 to 30 June 2005

^^ average monthly net sales figure for period 1 July 2005 to 31 December 2005

^^^ average monthly net sales figure for period 1 January 2006 to 30 June 2006

Magazine: Racer X Illustrated (American)

Edition                                                Circulation                             
April 2005                                            No evidence given

June 2005                                            No evidence given

July 2005                                             No evidence given

August 2005                                         No evidence given

September 2005                                   No evidence given

October 2005                                      No evidence given

November 2005                                   No evidence given

February 2006                                     No evidence given

The February 2006 edition of Racer X contained a full page article which included a picture of Mr Ryan Capes performing a world record jump and wearing a MONSTER ENERGY cap and sweatshirt.  Mr Capes refers in the article to his ‘MONSTER ENERGY backed Honda’.  Nine pages of this edition contained references to MONSTER ENERGY.

Magazine: Australian Trailrider (Australian)

Edition                                                Circulation                             
Issue 9, 2005                                       No evidence given

Magazine: Dirt Action (Australian)

Edition                                                Circulation                             
January 2006                                        19,382°

° monthly net sales figure for period 1 January 2006 to 30 June 2006

Magazine: Stroke (Australian)

Edition                                                Circulation                             
Issue 2, 2006                                       No evidence given

There were eight pages in this issue with references to MONSTER ENERGY.

Magazine: Transworld Surf (American)

Edition                                                Circulation                             
April 2005                                            No evidence given

May 2005                                            No evidence given

June 2005                                            No evidence given

November 2005                                   No evidence given

Magazine: Dirt (UK)

Edition                                                Circulation                             
July/August 2004                                  No evidence given

Magazine: Revolution: The Mountain Bike Experience (Australian)

Edition                                                Circulation                             
May 2005                                            No evidence given

August 2005                                         No evidence given

December 2005                                   No evidence given

Magazine: Australian Mountain Bike (Australian)

Edition                                                Circulation                             
June/July 2005                          20,455 (print run figure)

December 2005/January 2006              20,255 (print run figure)

Magazine: Clict (Australian)

Edition                                                Circulation                             
Issue 4 (before March 2006)                No evidence given

Magazine: Transworld Skateboarding (American)

Edition                                                Circulation                             
August 2004                                         No evidence given

September 2005                                   No evidence given

Boarder (Australian)

Edition                                                Circulation                             
December 2005                                   No evidence given

February 2006                                     No evidence given

173               Evidence was given that MONSTER ENERGY products are promoted by, amongst other things, distributing One Industries’ catalogues to customers, being Australian motorcycle stores and some consumers and some distributors in Western Australia and Queensland.  In March 2005, some 1000 of these catalogues were distributed containing full page references to MONSTER ENERGY.  In February 2006, a further 1,000 of the catalogues were distributed.  Serco, an importer and distributor of motorcycle parts and accessories, distributed at least 800 catalogues containing MONSTER ‘sticky kits’ to motorcycle shops in August and September 2005.

174               On 27 February 2005, the Sydney Sun Herald printed an article about the MONSTER ENERGY Pipeline Pro competition, with the circulation of this edition being 514,542.  Further references to the competition appeared in the Australian newspaper ‘The Daily Telegraph’ on 9 February 2006, with a circulation of 396,497. 

175               Hansen led other evidence of references to MONSTER ENERGY in internationally published magazines including Fortune and Forbes, but without any evidence as to circulation in Australia.

DVD Exposure

176               Hansen led evidence of distribution in Australia of action sports DVDs containing references to MONSTER ENERGY or footage of the mark.  Evidence was given that Platypus Australia Pty Ltd, an importer and wholesaler of action sports DVDs, sold titles including ‘Constant War’ and ‘Bar 2 Bar’ to its customers, which total are approximately 3000 in Australia.  No evidence was led as to how many of these actual sports DVDs were in fact sold in Australia, nor how long before April 2006.  Mr Ashley Smith gave evidence that the MONSTER ENERGY name and logo are in the Constant War DVD and that he had also seen the name and logo in the Bar 2 Bar DVD.

177               A further DVD entitled ‘Ride – A Collection to Inspire’ was tendered, which contained footage of MONSTER ENERGY-sponsored freestyle motocross athlete Adam Jones competing in a tour between 18 March 2006 and mid-June 2006.  This includes some period after the relevant date of April 2006.  Mr Jones was required to hold a MONSTER ENERGY can and wear a MONSTER ENERGY hat during podium appearances, to wear a painted MONSTER ENERGY helmet, and to have a five inch MONSTER sticker on the front and back fender along with a large ‘M’ claw on the front plate.  I am prepared to assume that Mr Jones, at least on some occasions, undertook the requirements of him in this regard.

178               Mr Hill gave evidence that there is a range of DVDs which contain footage of him in his MONSTER ENERGY race wear.  Those DVDs include ‘Clict’ video magazine, ‘Drift 3’, ‘Super 8’, ‘Earthed 2’, ‘Spectacle 2’, ‘Synopsis’, ‘Dirt Magazine How-To Video’ and ‘Eastside Freeride’.  Mr Hill did not provide evidence of distribution in Australia. 

179               Some other evidence of DVD exposure was tendered, but figures were not available as to the actual sales of such DVDs, nor how long before April/May 2006 such were sold or distributed.  The DVDs at best showed, as with other exposures, brief shots of helmets and caps in which MONSTER ENERGY was visible.  Sam Hill, when on a podium, did not display any visible MONSTER or MONSTER ENERGY branding, although one could just detect him holding a MONSTER ENERGY bottle.

Website Exposure

180               Since beginning to sponsor the Iron Horse/Madcatz professional mountain bike racing team on 1 January 2004, the www.madcatzracing.com website has contained the MONSTER ENERGY logo in the banner at the top of each page.  Hansen advertises its MONSTER ENERGY drinks and other MONSTER merchandise on this website, among others.

181               On 1 December 2004 MONSTER ENERGY commenced sponsoring the MONSTER ENERGY Kawasaki Pro Circuit motocross/supercross Racing Team.  Members of the team promote MONSTER ENERGY drinks and the MONSTER ENERGY mark through their uniforms, helmets, motorcycles, clothing, towels and water bottles and by holding the drinks and wearing the logo on the winner’s podium.  Information about team members, along with pictures of the athletes which include, at times, images of the MONSTER ENERGY logo, are available on various websites including, for example, www.procircuit.com and www.transworldmotocross.com.  Hansen advertises its MONSTER ENERGY drinks and other MONSTER ENERGY merchandise on these websites.  Hansen’s advertisements on these websites feature the MONSTER ENERGY products and marks. 

182               Hansen also advertises its MONSTER ENERGY drinks and merchandises on these websites.

183               Hansen gave evidence that the MONSTER ENERGY website is updated from time to time with, inter alia, various information about and photographs of MONSTER ENERGY-sponsored athletes.  The following athletes were added:

Late September 2004               Australian BMX rider Ryan Guettler

Late September 2004               American motocross jumper Ryan Capes

Late December 2004                American freestyle motocross athlete Adam Jones

Late January 2005                    Australian skateboarder Jake Brown

Late June 2005             American professional surfer Corey Lopez

Late August 2005                     Australian wakeboarder Daniel Watkins

Late December 2005                American professional surfer Shane Dorian

Late January 2006                    American motocross/supercross athlete Ricky Carmichael

Late January 2006                    American freestyle motocross athlete Mike Metzger

184               MONSTER ENERGY-sponsored athlete Mr Hill gave evidence that he directed people at the Australian races he competed in 2004, 2005, and January 2006, to the MONSTER ENERGY website to find out information about him. 

185               Hansen also gave evidence of action sport enthusiasts referring to the MONSTER ENERGY website for information about action or extreme sports.  One example of this was Matt Richards who applied to become a member of the MONSTER Army, a group of approximately 1200 amateur athletes.

186               Mr Cody Eichhorn, an 18 year old student living in New South Wales and an extreme sport enthusiast, registered as a member of the MONSTER ENERGY website in April 2006.  Mr Eichhorn accesses the website at least once a week because of the pictures it contains of riders.  Mr Eichhorn gave evidence that if he wants to know about MONSTER athletes, he looks at the MONSTER ENERGY website. 

187               MONSTER ENERGY, along with Billabong, has sponsored the surfing competition called the Billabong XXL Biggest Wave Awards from 1 April 2004.  Evidence was given that two of the individual awards contain the words MONSTER ENERGY, and that Australians have featured in the awards, and that the MONSTER ENERGY mark has appeared in each page of the www.billabongxxl.com website since January 2004.  Hansen gave evidence that the promotion and publicity which Billabong and MONSTER ENERGY receive as a result of their sponsorship of the event comes from the Billabong XXL website and magazine articles published throughout the year.

188               In April each year, the Billabong XXL Biggest Wave Awards are webcast on the Billabong XXL website, which shows on each page the MONSTER ENERGY mark.  There is, at the awards, signage bearing the words MONSTER ENERGY, which can be seen on the broadcast.  Evidence was given that between January 2005 and December 2005, the website (that is, only HTML pages and not images or other files) was viewed 551,450 times worldwide.  Of these, 6008 pages were accessed by Australians.  Between January 2006 and December 2006 the website (that is, only HTML pages and not images or other files) was viewed 1,067,276 times worldwide.  Of these, 18,285 pages were accessed by Australians.  Evidence was also given that the awards were referred to in articles appearing on the following websites: www.billabong.com, www.swellnet.com.au, www.surfersvillage.com, www.transworldsurf.com, www.reef.com, www.x-aces.com and www.surfingabout.com. 

189               In February 2005 a surfing event called the MONSTER ENERGY Pipeline Pro took place in Hawaii, which MONSTER ENERGY sponsored in conjunction with Billabong.  All competitors at the event wore vests bearing the MONSTER ENERGY mark and ‘M’ claw.  The trophies awarded were also in the shape of the MONSTER ENERGY ‘M’ claw.  The MONSTER ENERGY mark and logo were promoted on banners, buildings, signs, equipment and on the winner’s podium.  Since approximately January 2005, the Billabong website has featured photographs, videos and articles regarding the event and has been webcast on the site www.monstereenergypro.com.  The MONSTER ENERGY mark was visible on that webcast.  In February 2005, the website commencing with the www.monsterenergypro.com prefix (that is, only HTML pages and not images or other files) was viewed 6,579,386 times worldwide.  Of these, 115,751 pages were accessed by Australians.  The MONSTER ENERGY Pipeline Pro event took place again in 2006 and all of the MONSTER ENERGY signage was again apparent, with the event being webcast through the www.monsterenergypro.com website.  In 2006 that website was viewed 4,594,667 times with 67,738 of these pages being accessed by Australians.

190               Hansen also led other examples of web pages which contained references to the MONSTER ENERGY words or mark.  Examples of these include www.youtube.com, where there is footage of MONSTER ENERGY-sponsored Ryan Capes breaking the world record by jumping a distance of 310 feet in the air on a motorcycle decorated with the MONSTER ENERGY trademarks and logo, and www.ryanguettler.com, on which MONSTER ENERGY-sponsored Australian professional BMX athlete Mr Guettler lists MONSTER ENERGY as one of his sponsors on the first page of the website.  Hansen also advertises its MONSTER ENERGY drinks and other merchandise on this site.  The website www.warpedtour.com website contains information about the Vans Warped Tour which takes place in the United States.  It is the most popular, longest running action sports/music festival in the United States, consisting of 50 concerts over the summer throughout the United States and Canada.  Hansen gave evidence that the MONSTER ENERGY mark and ‘M’ claw are displayed on the Warped Tour website. 

Apparel/Merchandise Exposure

191               Hansen gave evidence that it has approved, amongst others, One Industries to sell in Australia apparel and merchandise bearing the MONSTER and MONSTER ENERGY marks.  One Industries has supplied C&R Imports products bearing the MONSTER name and logo since early 2005.  Those products include graphic kits, apparel, and helmets, and have been sold to a wide range of motorcycle shops.  Evidence was given that, since early 2005, there has been a much higher demand for apparel in Australia than C&R Imports has been able to supply.  Between April and June 2005, C&R Imports sold a total of 570 MONSTER ENERGY products, consisting of 140 t-shirts, 138 hats, 83 graphic kits (or decal sheets), 85 bar pads, 70 beanies and 54 sweatshirts.

192               Details of subsequent sales of MONSTER ENERGY product items sold by C&R Imports are as follows:

July 2005                     121 items

August 2005                 54 items

September 2005           32 items

October 2005              31 items

November 2005           21 items

December 2005           50 items

January 2006                43 items

February 2006             137 items

March 2006                 77 items

193               In February 2006 C&R Imports commenced selling motorcycle helmets bearing the MONSTER ENERGY mark to motorcycle shops.  These items have become an extremely popular item.  Most of the items sold consist of MONSTER ENERGY helmets, bar pads, graphic kits, beanies and sweatshirts.

194               Mr Eichhorn gave evidence that he has seen MONSTER ENERGY graphics on his friend’s motorbike, along with the MONSTER ENERGY name or ‘M’ claw on the clothing of motocross riders at practice sessions he has attended in Australia.  Mr Smith gave evidence that it is common to see both males and females in Australia wearing a MONSTER ENERGY cap or t-shirt at motocross tracks in Australia.  Mr Guettler records having seen people in Australia in 2005 with the ‘M’ claw on their bikes and/or helmets.  Mr Eichhorn has seen motocross riders in Australia wearing the MONSTER ENERGY name or ‘M’ logo on their helmets at motocross practice sessions. 

195               Further evidence was given that in May 2005 Serco Pty Ltd started selling decal kits in Australia bearing the MONSTER and MONSTER ENERGY logos.  The kits are available in 13 different models, sold both online and from Serco’s premises in Brisbane, and certain motorcycle stores.

Music Exposure

196               The Vans Warped Tour, referred to above, consists of 50 concerts over the summer in major cities throughout the United States and Canada.  In 2003, MONSTER ENERGY drinks were the official drinks of the tour, and www.warpedtour.com was the official website and showed the MONSTER ENERGY mark and ‘M’ claw.  The tour and Hansen’s sponsoring of it took place again in 2004 and 2005.  Hansen also sponsored the 2005 and 2006 OzzFest concert tour, consisting of 26 concert dates over the summer in major cities throughout the US.  Images of the MONSTER ENERGY mark and ‘M’ claw are displayed on the OzzFest website.

Giveaways Exposure

197               Evidence was given by Hansen that between 1 September 2004 and April 2006, MONSTER ENERGY-sponsored Australian professional BMX athlete Ryan Guettler gave away many MONSTER ENERGY t-shirts, stickers and wrist guards to Australians, mainly at competitions in Australia.  Mr Guettler often gives away merchandise at skate ramps where he practises.  To that end, he usually has a bundle of MONSTER products in the back of his car, which he gives away to children he believes are talented.  Prior to April 2006 he gave away approximately 40 to 60 cases of MONSTER ENERGY to spectators at competitions. 

198               Several other examples of MONSTER ENERGY cans being given away were given by Hansen but these do not warrant any substantial consideration given that the distribution of the cans was very limited.

Drinks sales (including enquiries from prospective distributors) and advertising, marketing and promotional expenses

199               In 2002, Hansen spent US$1,649,007 on advertising, marketing and promoting MONSTER ENERGY drinks, mainly on athlete endorsements and event sponsorships.  Hansen’s marketing focus was on international events, including but not limited to events which are webcast on the internet.  Hansen’s revenue attributable to MONSTER ENERGY drink sales in 2002 was US$6,387,140.  During 2002, Hansen distributed in the US, Canada and Central and South America a total of 246,180 point of sale items (‘POS Items’), including display headers, display cases, display cards, stickers, posters, pole signs, countertop coolers, freestanding coolers, banners and inflatables.  These are distributed to retailers wherever MONSTER ENERGY drinks are sold and have been distributed to and installed in more than 100,000 retail stores.  The corresponding figures for the subsequent years are as follows:

Year                Advertising                 Revenue                     POS Items

2003                US$9,547,866             US$35,295,394           697,014

2004                US$25,584,438           US$103,504,401         2,094,156

2005                US$54,190,814           US$276,744,647         4,245,810

200               Sam Hill gave evidence that he first heard about MONSTER ENERGY in 2003 whilst in America and that he recalled seeing much advertising for it including banners and cardboard cans outside stores and petrol stations.

201               Approximately ten examples of distributors contacting Hansen before the end of April 2006 in relation to the prospective importation and distribution of MONSTER ENERGY in Australia were also given by Hansen.  Approximately 15 further examples were given for the period after late April 2006.

Australian and United States Events Exposure

202               Evidence was given of exposure of Australians to the MONSTER ENERGY mark at various Australian and United States events (some of which may have been referred to above by reference to Hansen, DVD or magazine exposure), set out according to discipline below.

Downhill Mountain Biking

203               MONSTER ENERGY began sponsoring the Iron Horse/Madcatz professional mountain bike racing team from 1 January 2004.  Sam Hill is a member of this team, and gave evidence that team members wear jerseys and helmets which both bear the MONSTER ENERGY name and logo.  He also gave evidence that the team wears MONSTER ENERGY t-shirts and caps most of the time when they are not in race gear.  Finally, when they are on the podium after a race, the team usually wears MONSTER ENERGY hats and has cans of MONSTER ENERGY or water bottles with the MONSTER ENERGY logo on them.  Supporting evidence was given by Bernard Ryan who watches mountain bike racing and is aware that Mr Hill is sponsored by MONSTER ENERGY and has been for several years.  Further, he is aware that the MONSTER name and logo appears prominently on Mr Hill’s bike, helmet and riding gear.

204               Mr Hill also gave evidence that for four or five months of 2004 and 2005 he trained everyday in the hills near Perth wearing a helmet bearing the MONSTER ENERGY name and ‘M’ claw, riding his bike with MONSTER ENERGY stickers and usually wearing a MONSTER ENERGY t-shirt.  Mr Hill usually trains with between four and 15 other people and, in addition, there sometimes as many as 20 other people who may see him during his rides.  Further, people look at his bike when he is not riding.  Mr Hill also wears MONSTER t-shirts and hats when he is not training and is seen by friends and family and the general public when doing so.

205               In 2004 and 2005, Mr Hill competed and won the National Downhill Round in Mt Buller with approximately 400 to 500 competitors and about 5,000 spectators.  Mr Hill deposed that people ask about and for his MONSTER hat and where they can find further information about him.  Mr Hill tells them to look at the MONSTER website in these instances.

206               In 2004 and 2005, Mr Hill also competed and won the National Championships in Victoria with approximately 400 to 500 competitors and approximately 5,000 spectators.  Mr Eichhorn became aware of MONSTER ENERGY when he saw Mr Hill competing at a Mt Buller race.  Mr Eichhorn noticed the MONSTER ENERGY ‘M’ claw on the helmet and the MONSTER ENERGY sticker.  Mr Eichhorn asked people at the mechanics’ tent what MONSTER ENERGY was and subsequently researched it on the internet.

207               In October or November 2005 Mr Hill competed and won the National Downhill Round in Tasmania with similar numbers of competitors and spectators as in Victoria.  Mr Eichhorn gave evidence that he noticed the MONSTER ENERGY name on video footage of this competition in Tasmania. 

208               In January 2006, Mr Hill competed in the National 4-Cross Championship and won the National Downhill Round in Perth again with similar numbers of competitors and spectators as in Victoria.

BMX Riding

209               From 1 September 2004, MONSTER ENERGY has sponsored Australian professional BMX athlete Ryan Guettler.  I will return to Mr Guettler and Mr Guettler’s evidence later.

Billabong XXL Wave Awards

210               As stated previously, MONSTER ENERGY, in conjunction with Billabong, has since 1 April 2004 sponsored the Billabong XXL Biggest Wave Awards.  The presentation of those awards take place in California in April each year, with two awards called the MONSTER ENERGY Biggest Tube Award and the MONSTER ENERGY Biggest Paddling Award. Australians have featured in the awards.

Wakeboarding

211               On 4 August 2005 MONSTER ENERGY began sponsoring Australian professional wakeboarder Daniel Watkins who is required to wear a MONSTER ENERGY painted helmet and have a MONSTER ENERGY sticker on his boat and board.  His helmets have the ‘M’ claw and the words MONSTER ENERGY on them.  Mr Watkins gave evidence that he works really hard to get MONSTER exposure in Australia by making sure the MONSTER logo on his board is always visible when he does interviews on TV and that he is always wearing a MONSTER hat when possible.  When going up onto a podium after events he normally wears the MONSTER ENERGY hat and takes his board so people will also see the MONSTER sticker on it.  In addition, he wears the MONSTER ENERGY t-shirts on occasion to events.  Between 6 and 9 October 2005 Mr Watkins competed in the Gravity Games H2O in Perth, placing second.  In January/February 2006 he competed in the Australian Pro Tour of wakeboarding which took place over four weekends in Mulwala, Melbourne, Port Macquarie and on the Sunshine Coast.  On average 1,500 people attended each qualifying round on Saturdays and 3,000 on Sundays.  Mr Watkins won the Melbourne event and came second in the tour overall.  In February 2006 Mr Watkins competed in the Wake Slam Jam, a one day event at Carrara with approximately 2,000 spectators attending.  As well as wearing his MONSTER ENERGY helmet, Mr Watkins believes he also wore a MONSTER ENERGY hat.  Between September 2005 and March 2006 Mr Watkins held a children’s clinic once a month to teach children to wake board with approximately 20 children attending each day.  MONSTER ENERGY was the topic of conversation amongst these children.  Mr Watkins told them that it is an energy drink and that it is coming to Australia.

Motocross/Supercross

212               Ashley Smith gave evidence that, during the first six months of 2005, he attended eight rounds of supercross and a few motocross national rounds in the United States.  He gave evidence that MONSTER ENERGY sponsors each round and that MONSTER signage was at these events.  He said the motocross events in the United States are enormous with sell out crowds of 65,000 being common.

Trade Events Exposure

213               During 2002, 2003, 2004 and 2005, Mr Sacks or senior executives of Hansen attended various trade events in the United States, some of which were the National Association of Convenience Stores, the 7-Eleven Franchisee Show, the SP Richards Trade Show, the New York and Food Marketing Institute and the Nightclub and Bar Trade Show.  Hansen promoted its MONSTER and MONSTER ENERGY trademarks at these shows.

Other Exposure

214               It was contended that in addition to the above exposure, Hansen relied upon the exposure in the United States to Australians travelling there and returning to Australia, although no specific evidence was led on this aspect.  I do not consider, in light of my views on the specific evidence, that such exposure of travellers will assist Hansen in establishing sufficient reputation in Australia.

Specific Individual Exposure

215               A number of individual extreme sports followers and participants in the industry gave uncontested evidence of their exposure to the Hansen product.  Some of these I have already referred to above.

216               Whilst I accept this uncontested evidence, I cannot extrapolate the peculiar awareness and knowledge of these witnesses to other young adult males or other potential customers in Australia. 

217               Undoubtedly witnesses such as Mr O’Neill and Mr Eichhorn, dedicated followers and participants of extreme sports, and supporters of Hansen-sponsored athletes, and who deposed to having seen the MONSTER ENERGY name in a variety of ways (for example on DVDs, magazines, on television and on various websites) became familiar with the Hansen product.  They had friends who showed similar interests.  However, like other witnesses called by Hansen, these people became aware of MONSTER ENERGY through their specific involvement in an extreme sport.  Further, some had visited the United States; if they did not become firstaware of the Hansen product through their experience in the United States, they at least had their awareness of the Hansen product reinforced by being in the United States prior to giving evidence in this proceeding.  Where a witness has spent some time in the United States, and has been involved in extreme sports, being exposed to direct advertising and sale of Hansen’s product in the process, the witness must necessarily be treated as being in a special category.  The Court should be careful in its evaluation of such specific evidence not to necessarily extrapolate such exposure to a larger group of potential customers in Australia

218               Take another example of a witness with a special interest, Mr Foster.  Mr Foster has an involvement in the motocross field.  He is a motocross enthusiast and tries to help overseas motocross riders get established in Australia.  Mr Foster is not merely a passive fan of professional motocross, but has a particularly active involvement in the sport.

219               Consistent with his active involvement in professional motocross, Mr Foster has an interest in ‘athlete promotion’ and when he saw Bickfords’ MONSTER ENERGY product he was thinking about obtaining sponsorship for motocross in Australia.  He became aware of MONSTER ENERGY because of its involvement with the sport of motocross.  He then continued to educate himself about that product, including by looking at the website www.monsterenergy.com.  I cannot (and do not) infer that his awareness of the Hansen product or mark is to be translated to that of the young male adult market or other potential customers.

220               There is then is the evidence of the witnesses who trade in motorcycle accessories bearing Hansen’s MONSTER ENERGY branding.  Each of these witnesses has an obvious awareness of Hansen’s MONSTER ENERGY as a result of his particular involvement in the trade and in professional motocross competitions. 

221               One example of such a witness is Mr Eales.  Mr Eales lives in Capabala, Queensland, and is the general manager of Serco Pty Ltd, which imports and distributes kits of stickers for motorcycles bearing the names MONSTER and MONSTER ENERGY.  His company has considerable involvement in motocross racing in Australia and runs a team called the Serco Yamaha team in the Australian Motocross Championships.

222               Mr Eales’ particular involvement in trading motorcycle parts and accessories and co-sponsoring (with Yamaha) a motocross racing team takes him outside the usual class of motocross fans and gives him a special interest in knowing which companies (including overseas companies) sponsor that sport. 

223               As a businessman directly involved in co-sponsoring a motocross team, I accept that Mr Eales could be expected to pay an unusual degree of attention to identifying other sponsors of motocross competitors and teams in Australia and the United States, rather than merely watching the racing.  Again, I do not treat the evidence of this witness as enabling me to conclude that other persons who do not have this special interest would have the same awareness of the Hansen product or mark.

224               Although I have already made mention of Mr Guettler, I now turn to his evidence in more detail, hehaving being cross-examined on behalf of Bickfords. 

225               Mr Guettler is 23 years old, and for five years has been competing professionally in BMX freestyle events around the world, including Australia.  He is originally from Beenleigh (Queensland) but for the last three or four years he has been spending six or seven months per year in the United States and approximately five or six months in Australia.  He has been sponsored by MONSTER ENERGY for approximately three years.  Mr Guettler in his affidavit deposed that in return for the sponsorship he received from MONSTER ENERGY, he wears a helmet whenever he is training and competing in events which has the MONSTER ‘M’ claw device and the word MONSTER on the side, he wears a MONSTER ENERGY hat on the podium and he drinks from a MONSTER ENERGY water bottle all through the contests and on the podium.  Mr Guettler described the January 2006 BMX Games at Olympic Park in Sydney as an example of the events in which he has competed in Australia, estimated that approximately 7,000 spectators attended those Games each day, and said that he wore his MONSTER ENERGY helmet while he competed.  The full title of that event was in fact the ‘2006 MONSTER BMX Games’, which was a reference to the MONSTER skate park at Sydney’s Olympic Park, without any association at all with Hansen.

226               Under cross-examination, Mr Guettler said that he did not have a recollection of exactly how his helmet was stickered in 2005 or 2004 and did not know if the stickers were only claws or if there were also other marks.

227               Further,Mr Guettler identified himself in a series of still photos and accepted that those photos were taken at the BMX Games at Sydney’s Olympic Park in January 2006.  Mr Guettler agreed that the helmet he wore at those games did not have the words MONSTER ENERGY or MONSTER.

228               Mr Guettler accepted that that sponsor’s name on his shirt was ‘Mirry Company’ and that he is also sponsored by Vans and Colony along with seven or eight othersponsors.  He accepted that the hat he was wearing during the prize giving at those Games was a Vans hat, not a MONSTER ENERGY hat, and that he did not have a MONSTER ENERGY drink bottle.

229               Whilst Mr Guettler’s evidence under cross-examination was not as definitive and unqualified as that contained in the affidavit and, in certain aspects, inconsistent with the affidavit, I regard Mr Guettler as an honest witness.  It was apparent that he had not carefully read the affidavit prior to its adoption, but his evidence in cross-examination was given openly and candidly.  To the extent he qualified his evidence in his affidavit, or set forth a version of events different from that in his affidavit, I prefer the viva voce evidence adduced in cross-examination.  Therefore, I accept that the accurate description of what was displayed on his helmet (and clothing) was as explained in his cross-examination.

230               However, I do not think, in the context of the evidence in this proceeding, acceptance or otherwise of the evidence of Mr Guettler is of any significance.  The specific practice of Mr Guettler in relation to this sponsorship and the display of the MONSTER mark is of minor importance in comparison to the actual evidence of exposure as described in the other evidence before the Court. 

Evidence of Bickfords in response to Hansen’s claim

231               Evidence was introduced by Bickfords in response to Hansen’s claim, relevantly directed to Bickfords’ own development and marketing of its product and mark.  In view of my conclusion that Hansen has not demonstrated sufficient reputation to be entitled to the relief sought, it is not necessary for me to deal with these aspects of this evidence.  The evidence relevant to the cross-claim I will deal with separately.  However, it is convenient to make certain observations now that the Court has heard the evidence and received submissions by the parties, particularly on the question of fraud in the required sense as discussed by Lockhart and Gummow JJ in ConAgra.

232               Mr Kotses and Mr Bell gave evidence on behalf of Bickfords and were cross-examined.  As I indicated previously, Mr Bell was Bickfords’ Marketing Manager, and was asked by Mr Kotses to consider a brand for a new energy drink.  An attack was made upon their evidence by Hansen.

233               One thing is clear which I accept from the evidence of Mr Kotses and Mr Bell, and the objective evidence; they both thought that Hansen did not have sufficient reputation in Australia in the MONSTER brand.  The fact that Mr Kotses may have been aware that Hansen products were being promoted to young customers, and that he was probably aware that the Hansen mark was shown on pay TV, does not mean that he thought the mark MONSTER ENERGY had sufficient reputation in Australia.  I accept his evidence in this regard when he says that he considered the public was not aware of Hansen’s MONSTER ENERGY product in Australia prior to April/May 2006.  Accordingly, by definition, Bickfordsdid not want to misrepresent the established reputation and goodwill of Hansen in Australia, as it wasthought thatnone had thus far been established. 

234               Further, it is to be recalled that at the time Bickfords commenced its own activities, Hansen did not have anyplans to directly market in Australia or, at least, this was the impression given to Bickfords.  Bickfords could have been confident that Hansen was not contemplating coming to Australia at any specific time. 

235               In this regard, I accept Mr Bell’s evidence as to the communications by telephone and email with Mr Juan Maggi, Hansen’s International Sales Director, which occurred in December 2005.  Effectively, as I have indicated previously, Mr Maggi told Mr Bell that at that time Hansen had no plans for Australia, and Hansen was focused elsewhere.  Mr Bell sent an email to Mr Maggi dated 3 January 2006, which stated that Mr Bell assumed that Hansen was not interested in opening in Australasia in the first half of 2006.  This email was not responded to by Hansen. Mr Maggi deposed that it did not occur to him that Bickfords would commence selling its own beverage called MONSTER ENERGY.  Whether this be so or not, the point remains that the clear impression given to Bickfords by Hansen was that Hansen had no current interest in Australia, and that Hansen was then interested in Latin America and the Caribbean.

236               The email to Mr Maggi of 3 January 2006 could alsobe said to be an indication given to Hansen by Bickfords that if arrangements were not reached between the parties, Bickfords would (as another option) proceed to sell energy drinks in Australia on its own.  Hansen could have sought to create a monopoly right in the mark MONSTER ENERGY in Australia if it so desired, or at least protect its position.  In fact, one would have thought this would be the approach of Hansen if it had plans for selling the MONSTER product in Australia at some future time, particularly when Mr Maggi had already received a number of enquiries from potential competitors regarding selling MONSTER ENERGY products in Australia.

237               In my view, Mr Bell and Bickfords had ample basis for assuming (as they did) that Hansen was not coming to Australasia at least prior to 30 June 2006, and Bickfordshad no information regarding Hansen’s intentions thereafter.  In addition to the communications referred to previously, in early September 2005, Bickfords’ own searches had found no prior trade mark registrations or pending applications owned or made by Hansen for MONSTER or MONSTER ENERGY in the drinks category in Australia. 

238               However, as far as Mr Bell’s evidence is concerned, I do not accept the central point that Bickfords did not copy, and copy deliberately, the Hansen brand.  The objective evidence and similarities indicate strongly to the contrary.  Nevertheless,this does not in the circumstances of this caseindicate fraud (in the relevant sense) on the part of Bickfords.

239               Another witness was called by Bickfords and cross-examined by Hansen: Eric Hukowskyj, Bickfords’ Business Manager and National Account Manager for Coles.  An issue arose in the proceedings as to his familiarity with the Hansen product and the use made of the Hansen product with his presentation to the retailer Coles.  I do not consider that anything turns on this point.  There can be no doubt that the Coles representative was at least shown a photograph of the Hansen MONSTER ENERGY product.  The actual Bickfords product supplied to Coles was only subtly different to the one depicted by reference to the Hansen MONSTER ENERGY product.  This just again seems to demonstrate that Bickfords intendedto and did copy the Hansen brand.

240               In these circumstances, and despite the fact that in my view Bickfords did copy the brand of Hansen, Bickfords did not engage in fraud (in the relevant sense).  Bickfords was clearly impressed by the success of the MONSTER energy drink in the United States and sought to adopt it in Australia (with some minor adaptations).  Bickfords obviously perceived that the concept adopted by Hansen was a good idea, and sought to introduce it in Australia.  Thus,Bickfords deliberately copied Hansen’s brand, but only in Australia where Hansen had no actual sales or direct promotion, and where Hansen did not have sufficient reputation of the quality and type it now contends for in this proceeding.  This was known and believed to be true by Bickfords, and Bickfords acted accordingly in its own commercial interest.  The fact that Bickfords may have seized a window of opportunity to enter the market in Australia by adopting the Hansen model and brand does not detract from this conclusion.

The Cross-Claim

241               The success or otherwise of the cross-claim depends on Bickfords establishing sufficient reputation in its product by reference to the marks MONSTER and MONSTER ENERGY.  If such reputation were established on the evidence, in my view quia timet relief of the type sought by Bickfords would be appropriate. 

242               Again, the target audience of Bickfords is to be taken as being the same as Hansen’s, namely young adult male Australians.  Further, the marketing strategy had a similar approach to that of Hansen, intending to make use of extreme sports, and the internet, as well as factoring into their advertising the attitudes of the young adult male Australian.

243               The evidence in favour of the reputation sought to be established is some direct sales (wholesale and retail) and direct promotional activity.  I take the relevant date to be 31 July 2006, being when Bickfords alleges that Hansen threatened the acts complained of in the cross-claim.  However, if the relevant date is the date of the commencement of the cross-claim, namely 28 September 2006, the result would be no different.

244               I approach the issue of the establishment of sufficient reputation in the same way as I did in relation to the claim of Hansen, but as I have indicated Bickfords relies upon some direct sales and direct promotional activity.

245               In my view, the direct sales and direct promotional activity by Bickfords were in their early stages, and not of sufficient quality or quantity to establish the reputation required for the purposes of establishing passing off or a cause of action under the TPA. 

246               There was evidence that some 340,000 cans were first distributed for retail during April 2006 to various major cities in Australia.  The evidence relating to the sales that eventuated are set out later in these reasons.

247               There was evidence of a ‘teaser’ campaign and a radio campaign, confined to Adelaide, some associated product give-aways and other promotional events. 

248               Evidence was introduced setting out details of the promotional and point of sale materials referable to the retail supply of Bickfords’ product in Adelaide.  Undoubtedly, a review of this material demonstrates that the trade promotion was directed to generating sales to a group of customers, commencing in July 2006, focusing in Adelaide.

249               The evidence showed that some MONSTER ENERGY drink was shipped to Coles in late April 2006, on the shelves of ten supermarkets in South Australia by 1 May 2006, and stocked in Victoria and Queensland by 8 May 2006.  There was a convenience store launch through ‘On the Run’ convenience stores in the period 3 July to 30 July 2006, but in Adelaide only. 

250               However, all this was to be the beginning of the national launch, which never really eventuated.  Undoubtedly, Bickfords had intentions to roll out marketing initiatives in Perth, Melbourne, Sydney and Brisbane, and preliminary work was undertaken to promote the MONSTER ENERGY brand around Australia.  However, most of the promotion was localised in Adelaide, even though some sales did occur nationally.  Further, the roll out was subject to budgetary matters and an assessment of the success of the initial promotional campaign which occurred in Adelaide.

251               There was evidence of national sales of the product as follows (some of which related to sales after 31 July 2006, or 28 September 2006), in addition to a minimal amount of ‘give-aways’:

·                    April 2006: 3,044 cartons sold resulting in revenue of approximately $80,089.

·                    May 2006: 2,483 cartons sold resulting in revenue of approximately $52,145.

·                    June 2006: 3,201 cartons sold resulting in revenue of approximately $56,777.

·                    July 2006: 4,382 cartons sold resulting in revenue of approximately $103,016.

·                    August 2006: 3,612 cartons sold resulting in revenue of approximately $73,782.

·                    September 2006: 4,176 cartons sold resulting in revenue of approximately $92,299.

·                    October 2006: 3,912 cartons sold resulting in revenue of approximately $92,502.

·                    November 2006: 1,484 cartons sold (as at 8 November 2006) resulting in revenue of approximately $35,783.

·                    Total cartons sold: 26,294.

·                    Total revenue: $586,393.

A carton contains 12 cans.

252               These figures were updated by additional evidence tendered on behalf of Bickfords for the period November 2006 to 4 February 2007, but these may be ignored as the sales were after any of the relevant dates (31 July 2006 or 28 September 2006).  In any event, they do not advance Bickfords’ case any further. 

253               There is also the view expressed of Ms Tye, the New Product Development Brand Manager of Bickfords, that the product had been extremely successful in that it has been well received by consumers and retailers alike.  This comment, of course, must be seen in relation to the relatively localised and short exposure of the product at the time.

254               I do not consider that these sales, or the expression of the reaction of consumers and retailers, indicate the degree of reputation required amongst a substantial proportion of Australian young adult males or potential customers in Australia.

255               Whilst substantial sales and promotional activities over a long period of time may permit the Court to draw the appropriate inference that a substantial reputation existed in a product, Bickfords’ evidence in support of the cross-claim falls well below that required to establish its own reputation in Australia, even amongst the target audience said to be, in Bickfords’ own research, approximately 1.01 million ‘Australian guys’ in the ‘18-24 year old Aussie males’ category.

256               I do not suggest that an intensive, short advertising campaign along with the sale of a product may not in some circumstances establish a sufficient reputation.  However, the campaign here was very short and relatively localised, the sales were not substantial, and were also made over a short period of time.  I cannot (and do not) infer that sufficient reputation has been achieved by Bickfords as it alleges, the level of sales and advertising not being of a sufficiently high volume or of sufficient intensity, without any other direct evidence.  I do not put the generalised evidence of Ms Tye as to the consumer and retailer reaction in the category of such direct evidence. 

257               There was some evidence as to the amount spent on marketing the product, and the time by,and money spent on, Ms Tye of Bickfords, who from about 29 May 2006 spent about 65% of her working time in promoting the MONSTER product.  I do not consider that this indicates in itself or in combination with the other evidence that a sufficient reputation had been achieved by Bickfords in the relevant period.  I accept that a great deal of work was undertaken in planning and considering the promotion of the Bickfords’ product; however, the promotion and sales only occurred as part of the early stages of actual implementation of a proposed national roll out. 

258               In my view, Bickfords was in the process of commencing its direct retail sales and promotional activity in relation to its own product, based upon the strategy or model adopted by Hansen, effectively doing so in a staged process, commencing primarily in Adelaide.  Bickfords had hardly moved on from this position even by the end of 2006 or the commencement of 2007. 

259               Bickfords relied upon no other evidence to demonstrate the extent of its reputation in Australia.

260               I make one final comment in respect of the cross-claim.  I have reached the above conclusion based upon the material relied upon by Bickfords in support of the cross-claim.  Hansen did submit that any reputation of Bickfords would in any event be diluted by Hansen’s own exposure in Australia.  Whilst I have found Hansen’s exposure not to reach a level to enable Hansen to succeed, undoubtedly some young male adults or other potential customers in Australian did know of and appreciate the significance of MONSTER and MONSTER ENERGY by reference to the Hansen product.  Further, there was some evidence of actual confusion between the Hansen product and the Bickfords product.  I do not need to concern myself with this overlap of exposure, which although potentially relevant to ascertaining Bickfords’ reputation as alleged in the cross-claim, does not arise because of my conclusion based as it is on Bickfords’ own evidence placed at its highest.

Conclusion

261               For the above reasons, as I indicated in the introduction, I propose to dismiss the application and cross-claim.

SCHEDULE A

SCHEDULE B

Associate:

Dated:         31 March 2008