12 October, 2019
What you need to know
- Rodney Jane Racing (RJR) successfully appealed the decision of the Australian Trade Marks Office which had refused registration of RJR's MONSTER marks in relation to "alloy wheels" on the basis of the opponent Monster Energy Company's (MEC) prior reputation in its MONSTER marks for "energy drinks".
- The Federal Court found that MEC's reputation in its MONSTER marks did not extend to the market for "alloy wheels". The Court also found that RJR, rather than its related company Bob Jane Corporation, was the true owner of the RJR marks.
- The Court considered the admissibility of various items of internet evidence and found that documents that are merely promotional or descriptive of the activities of a company, such as the "About Us" page on a website, are unlikely to satisfy the business records exemption of the Evidence Act 1995 (Cth) (the Evidence Act).
- Conversely, statistical data of website traffic from Google Analytics is admissible under the business records exemption.
What you need to do
- Owners of trade marks often need to rely on evidence of historical use of those trade marks before the Trade Marks Office or the Courts. Evidence from websites, social media sites or Wayback archives is often the best evidence available.
- It would be prudent for trade mark owners to make regular copies of their websites and social media forums (eg, Facebook and Instagram posts) and keep these as a "snap shot" record of their trade mark use over time.
Background
Rodney Jane Racing Pty Ltd (RJR) filed applications for the following trade marks (the RJR Marks) in class 12 for "alloy wheels for automobiles excluding motorbikes":
Monster Energy Company (MEC) successfully opposed the registration of the RJR Marks in the Australian Trade Marks Office.
MEC relied on evidence that it has promoted and sold energy drinks and associated products under several trade marks (the MEC Marks) since 2002. These marks include the word marks "Monster" and "Monster Energy" as well as marks that incorporate the "M-Icon" device, for example:
MEC's opposition succeeded under s 60 of the Trade Marks Act 1995 (Cth) (the Act), the Registrar finding that use of the RJR Marks was likely to cause confusion given MEC's prior reputation in the MEC Marks for energy drinks.
RJR successfully appealed this decision to the Federal Court.
Justice O'Bryan in the Federal Court
Trade mark rulings
None of MEC's grounds of opposition were established.
The main ground of opposition was under s 60 of the Act. Justice O'Bryan accepted that:
- MEC has a strong reputation in its device marks, but not in the word "Monster" alone;
- the reputation of the MEC Marks is in relation to energy drinks and the sponsorship of extreme sports, but not in relation to the sale of automotive wheels;
- the word "Monster" has a descriptive meaning, and there has been extensive use of the word as a trade mark in relation to a range of goods and services (eg Ducati bikes);
- there are striking dissimilarities between the RJR Marks and the MEC Marks; and
- the RJR Marks are registered only in relation to alloy wheels, which are sold at a relatively high price to consumers who generally make well-considered decisions.
These s 60 findings were determinative for the related s 42(b) "contrary to law" opposition ground. Accordingly, MEC failed to establish that use of the RJR Marks was likely to deceive or cause confusion because of the reputation of the MEC marks.
MEC also contended under s 58 of the Act that a related company, Bob Jane Corporation Pty Ltd, rather than RJR, was the true owner of the RJR Marks. However, given the close association between the two companies, Justice O'Bryan held that Bob Jane Corporation Pty Ltd was, from the outset, an authorised user of the RJR Marks under the control of RJR. His Honour was also satisfied that Rodney Jane had created the RJR Marks in his capacity as a director of RJR.
As a consequence, RJR was the first user of the marks.
These s 58 findings were determinative for the remaining s 59 "no intention to use" ground of opposition: as the true owner of the RJR Marks, RJR had the requisite intention to use them at the time of filing the applications.
Evidentiary rulings
The case is of particular interest because of his Honour's rulings about the admissibility of various items of internet evidence.
Both parties raised objections under the Evidence Act on relevance, hearsay and s 135 grounds (probative value outweighed by other factors) to various categories of evidence, including:
- internet searches using the "Wayback Machine";
- internet searches using Facebook or Instagram posts;
- internet results of catalogues generated by the "Issuu" website;
- IP Australia search results that included "monster";
- Google search results of the names of the owner/s of the trade mark registrations; and
- Google Analytics information.
The business records exemption (s 69) within the Evidence Act generated considerable debate for most categories. In relation to websites generally, Justice O'Bryan observed that whether or not these fall under the exemption depends on the content of the web page: "documents which are merely promotional or descriptive of the activities of a company, such as what might be found on an 'About Us' link on a website, are unlikely to constitute business records".
In relation to Wayback Machine evidence, Justice O'Bryan followed previous cases in holding that archived web pages are not business records.
Facebook and Instagram posts and searches were also ruled to be hearsay, failing the requirements of s 69. Justice O'Bryan referred to the "nature" of social media platforms when stating that there is no basis for the Court to make any finding as to what is represented by posts, and whether any representation is made by a person who had personal knowledge of the asserted fact, or made on the basis of information directly or indirectly supplied by such a person.
Similarly, Justice O'Bryan took issue with generic Google search results. His Honour held that most of this evidence was merely promotional and descriptive of businesses, containing, for example, an "About Us" section (therefore constituting hearsay).
Conversely, Justice O'Bryan was satisfied that Google Analytics information was admissible as a business record of the entity operating the website. Unlike most of the websites above (eg, Wayback Machine), his Honour was willing to infer that Google Analytics is a service supplied to businesses to track and record website traffic. Accordingly, this evidence was admissible.
Final decision and orders
Justice O'Bryan allowed RJR's appeal and ordered registration of the RJR Marks. MEC was ordered to pay RJR's costs.
Postscript
While the case highlights some difficulties for parties in trade mark cases wishing to rely on internet evidence, particularly when that may be the best evidence available concerning historical trade mark use, the very recent decision of Justice Burley, in Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2) [2019] FCA 1552 may provide more assistance. In that case, his Honour ruled Wayback Machine materials admissible to prove the availability of a website and the contents of particular pages on particular dates (but not to prove the truth of any fact referred to in the materials).
For further information, please contact:
Lisa Ritson, Partner, Ashurst
Lisa.ritson@ashurst.com
