What happens when a new brand is created within a complex family of companies, especially when that brand uses a word associated with a global giant? And precisely how far does the reputation of a world-famous brand extend when it comes to preventing others from using a similar word?

The Federal Court of Australia’s decision in Rodney Jane Racing Pty Ltd. v Monster Energy Company [2019] FCA 923 provides critical answers to these questions. In a significant victory for the Australian appellant, Rodney Jane Racing Pty Ltd, the Court allowed an appeal from the Registrar of Trade Marks . It set aside the delegate’s initial refusal and ordered that Rodney Jane Racing Pty Ltd.’s three “MONSTER” trade marks be registered .

This judgment offers a detailed roadmap for navigating two of the most complex areas of trade mark law. First, it clarifies how to establish brand ownership and intention to use (under sec 58 and sec 59 of the Trade Marks Act 1995 (Cth)) when the brand is developed using shared resources within an intricate corporate group. Second, it provides a powerful analysis of reputation and confusion (under section 60), demonstrating the high bar an opponent must clear, even when they possess a world-famous reputation.

Background of the Parties and the Dispute

The appellant, Rodney Jane Racing Pty Ltd, is a company controlled by Mr. Rodney Jane. Mr. Jane is also the Chief Executive Officer and a director of the much larger, well-known Australian business, Bob Jane Corporation Pty Ltd (Bob Jane Corporation), which operates the “Bob Jane T-Marts” retail chain. On 27 January 2015, Rodney Jane Racing Pty Ltd. applied to register three trade marks for “alloy wheels for automobiles excluding motorbikes”. All three marks prominently featured the word “MONSTER,” and two also included the website address “BOBJANE.COM.AU”.

The respondent, Monster Energy Company, is the globally recognized supplier of “Monster Energy” drinks. Monster Energy Company has established a very strong reputation in Australia, built upon its distinctive and ubiquitous “M-icon” (a claw-like “M”) and its stylized “MONSTER ENERGY” script, often in bright green on a black background.

Monster Energy Company successfully opposed Rodney Jane Racing Pty Ltd.’s applications before the Registrar of Trade Marks. The delegate found that, because of Monster Energy Company ‘s significant reputation, Rodney Jane Racing Pty Ltd.’s marks were likely to deceive or cause confusion under section 60 of the Act. Rodney Jane Racing Pty Ltd. appealed that decision to the Federal Court, which, under the Act, required a “de novo” hearing, i.e. a fresh consideration of all the facts and evidence.

The Issues before the Court

In the Federal Court, Monster Energy Company maintained its opposition, relying on four primary grounds of objection against Rodney Jane Racing Pty Ltd.’s applications –

  1. Monster Energy Company contended that Rodney Jane Racing Pty Ltd. was not the true owner of the marks. It argued that the marks were actually created by, and for, the associated company, Bob Jane Corporation, and not Rodney Jane Racing Pty Ltd.
  2. Monster Energy Company argued that Rodney Jane Racing Pty Ltd., the applicant, did not have the necessary intention to use or authorize the use of the marks itself.
  3. Monster Energy Company further argued that its own marks had acquired a powerful reputation in Australia before Rodney Jane Racing Pty Ltd.’s application date. Because of that reputation, it claimed, any use of Rodney Jane Racing Pty Ltd.’s “MONSTER” marks on alloy wheels “would be likely to deceive or cause confusion”.
  4. Monster Energy Company also argued that the use of Rodney Jane Racing Pty Ltd.’s marks would be contrary to law, specifically by contravening sec 18 and sec 29 of the Australian Consumer Law for misleading or deceptive conduct. Justice O’Bryan noted that if the ground under section 60 failed, this ground would also fail.

Opposition under Sec 58 and sec 59

Monster Energy Company’s challenge to ownership was based on the complex relationship between Rodney Jane Racing Pty Ltd. and Bob Jane Corporation. Mr. Rodney Jane, the sole director of Rodney Jane Racing Pty Ltd, was also the CEO of Bob Jane Corporation.

Monster Energy Company pointed out that in creating the “MONSTER” wheel brand, Mr. Jane had utilized the National Marketing Manager for Bob Jane T-Marts (Ms. Zalatnai) and engaged the design firm ordinarily used by Bob Jane T-Marts’ advertising agency. Furthermore, communications about the logo were sent to Mr. Jane’s “bobjane.com.au” email address. Monster Energy Company argued this was compelling evidence that Mr. Jane was acting in his capacity as CEO of Bob Jane Corporation, making that company the true author and owner of the marks.

The Court, however, looked beyond these surface facts to the substance of the relationship and the clear intention of the parties. Justice O’Bryan accepted Mr. Jane’s evidence that he was acting in his capacity as director of Rodney Jane Racing Pty Ltd. throughout the marks’ creation. This conclusion was strongly corroborated by a chain of evidence demonstrating Rodney Jane Racing Pty Ltd.’s ownership and control.

This included a history of licensing, i.e. there was a pre-existing commercial relationship. In 2009, Rodney Jane Racing Pty Ltd. and Bob Jane Corporation had entered into a license agreement for Rodney Jane Racing Pty Ltd.’s “Rodney Jane Racing Pty Ltd Wheels” brand, establishing a clear precedent for Rodney Jane Racing Pty Ltd. owning intellectual property and licensing it to Bob Jane Corporation for retail use.

Prior intention was also considered, i.e. Rodney Jane Racing Pty Ltd. itself demonstrated a long-standing interest in the “Monster” name, having filed an earlier (and ultimately lapsed) trade mark application for the word “Monster” in 2011.

That said, the control over first “use”, i.e.  the Court found that Rodney Jane Racing Pty Ltd., as owner, controlled the first commercial use of the marks. This first use was an email sent by a Bob Jane Corporation manager (Mr. Hockley) to Bob Jane T-Marts stores on May 2, 2013. Crucially, Mr. Hockley had first sent a draft to Mr. Jane for approval, and Mr. Jane personally edited it. This demonstrated that Mr. Jane, acting for Rodney Jane Racing Pty Ltd., was controlling the brand’s launch. Tellingly, the email itself stated, “We are very excited to release the new Monster Wheels brand to the Rodney Jane Racing Pty Ltd. stable”.

Lastly, the formal agreements, i.e. shortly after, on June 19, 2013, Rodney Jane Racing Pty Ltd. and Bob Jane Corporation executed a formal license agreement. This agreement explicitly named Rodney Jane Racing Pty Ltd. as the owner of the marks and granted Bob Jane Corporation a non-exclusive license to use them. The agreement included quality control provisions for Rodney Jane Racing Pty Ltd. and, importantly, Bob Jane Corporation paid royalties to Rodney Jane Racing Pty Ltd. for the license.

Based on this, the Court concluded that Rodney Jane Racing Pty Ltd. was unequivocally the author of the marks. The use of the marks by Bob Jane Corporation was not “use” as an owner, but was “authorized use” under the control of Rodney Jane Racing Pty Ltd., as defined by sec 7(3) and sec 8 of the Trade Marks Act. Consequently, the opposition grounds under sec 58 and sec 59 failed.

A “Victim of its Own Success”, i.e. section 60 and brand reputation

The main battleground was section 60. Monster Energy Company argued that the “essential feature” of its famous brand was the word “MONSTER”. It contended that its reputation was so strong, particularly in the related “edgy” and “aggressive” field of motorsports, that consumers seeing “MONSTER” on alloy wheels would be confused into thinking it was a brand extension or collaboration with Monster Energy Company.

Rodney Jane Racing Pty Ltd countered that Monster Energy Company’s reputation was not in the plain word “Monster.” Instead, its reputation was overwhelmingly tied to its highly distinctive device marks, i.e. the M-icon and the specific, stylized script. Rodney Jane Racing Pty Ltd argued that the plain word “Monster” is a common, descriptive-style word and that its marks were visually and conceptually dissimilar.

Justice O’Bryan agreed comprehensively with Rodney Jane Racing Pty Ltd. The Court acknowledged that Monster Energy Company possesses a “very strong reputation” in Australia. However, it found that this reputation is inextricably linked to its consistent branding, i.e. the M-icon and the stylized “Monster Energy” text. The evidence showed that Monster Energy Company never used the plain, un-stylized word “Monster” on its own as a brand. Any reputation in the plain word “Monster” was “limited” and merely “derived from” its famous device marks.

This led to the central finding on this issue. The Court noted that MEC was, in a sense, a “victim of its own success” because its branding is so famously consistent and instantly recognizable (the M-icon and script), consumers are more likely to be “immediately struck by the differences” and less likely to be confused by a mark that is visually distinct.

The Court then highlighted the stark differences like the Marks, i.e. the Rodney Jane Racing Pty Ltd marks were found to be “entirely different”. Rodney Jane Racing Pty Ltd.’s logo is a “stylized depiction of a monster… broadly circular”. In contrast, Monster Energy Company ‘s M-icon is a “claw mark” that is “jagged and vertically elongated”, using a “distinctive script… suggestive of Gothic script”.

Court also noted the context of the word, i.e. the word “Monster” is not exclusive to Monster Energy Company. It has been widely used by others, including in the automotive context. The Court noted the well-known “Ducati Monster” motorbikes and the “Monster Jam” series of Monster Truck events, which have their own substantial, separate fanbases.

Co-branding also played a role, i.e. two of the three Rodney Jane Racing Pty Ltd marks prominently displayed “bobjane.com.au”. The Court found this clearly “connected the mark with the well-known Bob Jane T-Marts business”, a separate and famous Australian retailer, which further reduced any likelihood of confusion with Monster Energy Company.

Lastly, the nature of the Goods as the products are fundamentally different. Monster Energy Company sells energy drinks, a low-cost, high-volume, impulse purchase. Rodney Jane Racing Pty Ltd.’s marks are for alloy wheels, which are a premium, expensive product. The evidence showed consumers treat wheels as a “carefully considered” purchase, often costing thousands of dollars and chosen for aesthetic reasons after research. This “engaged consumer” is far less likely to be confused.

The Court concluded there was “no real or tangible prospect” of deception or confusion. The section 60 ground failed, and as a result, the section 42(b) Australian consumer Law ground failed with it .

Key Takeaways for Brand Owners

This decision provides several crucial, practical lessons for brand owners and intellectual property practitioners:

  1. This case is a masterclass in proving ownership within a complex corporate group. It demonstrates that a clear history of conduct (the 2011 application), formal license agreements (the 2009 and 2013 agreements), and evidence of actual control (editing the “first use” email) can successfully defeat arguments based on shared directors and resources.
  2. The “victim of its own success” finding is a powerful reminder for famous brands. An extremely strong, unique, and consistently used brand (like Monster Energy Company’s M-icon) can make it harder to claim confusion with a dissimilar mark that uses a shared word. The brand’s very uniqueness teaches consumers to look for that exact brand, not just a single word within it.
  3. The inclusion of “bobjane.com.au” was not just a minor detail but it was a key factor. It immediately grounded the Rodney Jane Racing Pty Ltd. marks in a separate, well-known commercial origin, acting as a powerful shield against claims of confusion.
  4. The nature of the goods is critical. The high cost and aesthetic importance of alloy wheels mean consumers pay close attention. This significantly lowers the risk of confusion that might exist for low-cost, everyday-carry items.
  5. The Court’s detailed evidentiary rulings are highly instructive. It admitted Google Analytics data as a valid business record under section 69 of the Evidence Act. However, it excluded archived webpages from the “Wayback Machine” and historical Facebook and Instagram posts as inadmissible hearsay, as there was no evidence to satisfy the business records exception. This provides a clear guide on the type of digital evidence required to prove use and reputation in court.

Conclusion

The Rodney Jane Racing decision is a vital reminder that trade mark disputes are won on the totality of the evidence. It confirms that a smaller Australian entity can successfully register a mark containing a “famous” word, provided it can meticulously prove its own claim to ownership and demonstrate that its mark, in its full context, is different enough to avoid confusing the public.

As for Monster Energy Company, the case illustrates the boundaries of reputation. It shows that fame, even when tied to a related field like motorsports, does not grant a monopoly over a common English word, especially when its own branding is so famously and consistently distinctive. The appeal was allowed, and Rodney Jane Racing Pty Ltd.’s marks will now proceed to registration.

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