Brand reputation - passing off

Australians will find it hard to copy overseas products following a court case which lays down rules on passing off.

The case will make it difficult for Australians to copy profitable overseas products and to defend such imitations on the basis that product was not yet officially launched in Australia, according to intellectual property lawyers.

The Full Federal Court of Australia recently allowed the appeal by US-based beverage company Hansen Beverage Company against an Australian competitor in a case that looked at the test that is to be applied when determining whether sufficient product recognition has been established in a relevant jurisdiction through indirect marketing.

The case, Hansen Beverage Company v Bickfords, saw an Australian drinks company, Bickfords, copying the Monster Energy drink manufactured by US company Hansen and sold globally, but not in Australia.

However Hansens were indirectly marketing in Australia with sponsorship of Athletes and sales of merchandise in a bid to enter the country. Bickfords, meanwhile,decided to launch an energy drink in 2006 and lodged an application to register the trade name 'Monster Energy'  and create a drink with the same name, same ingredients in a can of a similar size and colour.

Hansen sued Bickford for passing off and/or misleading and deceptive conduct in contravention of section 52 of the Trade Practices Act 1974 (Cth) (the TPA). The dispute centred around whether Hansen had a sufficient reputation in Australia in the MONSTER ENERGY mark, at the relevant date, in relation to energy drinks as there was no dispute that the similarities between the two could deceive and mislead under the Trade Practices Act and passing off.

The judges laid down the appropriate inquiry which is to be made, and the test which is to be applied, when determining whether sufficient brand or product reputation has been established in a relevant jurisdiction, in the context of claims regarding passing off and contravention of section 52 of the TPA.