Monster Hunter: Video game company fights to secure name in Australia

The Federal Court recently handed down its decision in Monster Energy Company v Mixi [2020] FCA 1398.

Background

Mixi Inc (Mixi) is a publicly listed software company based in Tokyo.  Its video game ‘Monster Strike’ allows users to battle monsters though a series of quests.  Monster Strike is free to play, and by June 2018, it had been downloaded 44 million times worldwide.

Monster Energy Corporation (MEC) is a subsidiary of Monster Beverage Corporation and is incorporated in Delaware.  MEC sells the well-known Monster Energy Drink. 

MEC owns various Australian trade marks, many of which feature the word “monster”.  These include MONSTER, MONSTER ENERGY, MONSTER RIPPER, MONSTER REHAB and MONSTER (MEC marks).

Mixi applied to extend protection of its mark “MONSTER STRIKE” in Australia.  This application was in respect of goods and services in classes 9 and 41, the most important of which were electronic games and gaming.

MEC subsequently opposed Mixi’s application on the ground that its registration and use would be misleading or deceptive to consumers.  However, this opposition was refused by the Registrar’s delegate in the first instance.  

MEC subsequently appealed to the Federal Court of Australia.

Decision

MEC produced evidence showing that the MEC marks had been used in connection with video games, eSports and promotion of the same. MEC argued that, through this use, the MEC marks had acquired a reputation in relation to video games. As the “MONSTER STRIKE” application also claimed video games, MEC argued that consumers may confuse the two.  

Stewart J dismissed the appeal, as he was not persuaded that there was a real, tangible danger of confusion between “MONSTER STRIKE” and the MEC marks.1 This was conditional on the “MONSTER STRIKE” mark being used lawfully and normally in respect of its designated goods and services.2  Stewart J’s decision was predicated on the following:

  • Although the MEC marks had acquired a reputation within the gaming and eSport community, the relevant consumers were able to discern that the MEC marks related to the sale and promotion of energy drinks, rather than any goods or services directly related to videos games and eSports.3
  • the MEC marks were visually and aurally different to the “MONSTER STRIKE” marks;
  • at the relevant priority date, 40 other traders had, or had attempted to, register the word “MONSTER” in connection with video games; and
  • the relevant group of potential consumers are young men and women interested in computers, gaming and technology who are “generally brand-savvy and not gullible or easily confused”.4

Accordingly, MEC’s appeal failed, and Mixi was able to register the trade mark “MONSTER STRIKE” in Australia.

Lavan comment

A registered trade mark gives its owner exclusive rights to use that mark in connection with specified goods and/or services. If another trader uses your mark (or something similar) in relation to other goods and/or services, you may be unable to object.

Therefore, it is vital to ensure your registration’s specification covers all relevant goods and services. If these goods and services change over time, or if you diversify your business, it is important to update your registrations. MEC’s registrations specified energy drinks. As MEC became involved in sponsorship and promotion of video games and eSports, it ought to have filed further applications seeking registration in relation to these industries. We note that subsequent applications have since been filed by MEC in relation to video games and eSports, which applications are pending.

If you require advice or assistance in protecting your trade marks, please do not hesitate to contact Iain Freeman or Andrew Sutton.

AUTHOR
Iain Freeman
Partner
AUTHOR
Andrew Sutton
Associate
SERVICES
Intellectual Property and Technology


FOOTNOTES

[1] Monster Energy Company v Mixi [2020] FCA 1398 [167].

[2] Ibid.

[3] Ibid [168].

[4] Ibid [174].