In Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 the Full Court of the Federal Court of Australia allowed an appeal against the trial judge’s decision that the use by Bickford’s of the name “Monster” for its energy drink was not a misrepresentation by Bickford’s that its drink was associated with Hansen’s “Monster Energy”.

There was no dispute that the similarities between the products could relevantly mislead or deceive for the purposes of the Trade Practices Act and the tort of passing off but the trial judge decided that Hansen failed to prove that as at the date when the conduct commenced, that it had the requisite reputation in the name or goods in Australia. Hansen’s product was sold in USA but not trademarked in Australia.

The Full Court decided that the issue of reputation should be remitted to the primary Judge for reconsideration as he had erred in law by referring to the issue of a target market.