'Vibe' argument fails to sway judge who hands Bob Jane a monster win

If you were fearful that there were too many monsters in the world, be warned – the Federal Court has found space for one more.

On Friday the company behind Bob Jane T-Mart, one of Australia's biggest tyre brands, won a long-running legal battle with US energy drink manufacturer Monster Energy Company (MEC) over the tyre group's planned trademark registrations for its Monster alloy wheels.

Can you spot the difference?

Rodney Jane Racing, one of the private companies behind the famous tyre chain has been trying to register three trademarks for its Monster tyre since 2015.

However, its application to register the trademarks was blocked after MEC opposed their registration claiming that the tyre and drink branding was "strikingly similar".

Rodney Jane Racing then appealed the regristrar's refusal to register its trademarks. It argued its trademarks were not similar and that the company had a long affinity with the term monster.

The Federal Court heard Rod Jane, son of the late Bob Jane, had first sought to register the trademarks in 2011 but allowed the application to lapse.

Mr Jane told the court he began giving serious consideration to the idea of developing a range of “monster” branded wheels in about early 2010.

The court heard his interest was sparked by his love of monster trucks when he was younger and had attended a monster truck event at Calder Park Raceway attended by tens of thousands of people.

"In particular, he recalled that, in about 1987, Bob Jane Corporation modified a Holden Rodeo pick-up to create the Bob Jane monster truck which was used in events and for promotional purposes," Justice Michael O'Bryan said.

As Mr Jane explained, he had grown up around monster trucks and his interest in them was renewed, in part due to his son's interest and because of the increased sales in Australia of massive family wagons and big boy utes such as the Toyota Hilux.

"For me growing up every kid thought a monster truck was the coolest thing they had ever seen," he said.

"I had an F250 when my son, Max, was born, that we used to tow a race car around with, and ultimately I kept driving after that. He used to call it a monster truck … he was obsessed with two things – monster trucks and football."

"I think that really reignited my interest in this – this concept of pickup trucks with monster, and the fact that the the emerging vehicle at the time was a Hilux.

"It was becoming the biggest selling car in Australia, and at the same time there was a massive decline in Commodore and Falcon, coming at us, which was our biggest wheel market."

"So it worked perfectly, monster as a brand, to fit that market as a monster truck."

MEC argued that the word "monster" was prominent in its branding whether the word was used by itself or alongside the word "energy".

It also argued, in a potential legal first in Australia, that its icon had a "monster-like vibe".

But like the High Court judges in the film The Castle, Justice O'Bryan did not buy the vibe argument.

"While the word “monster” is an integral part of MEC’s corporate name and “Monster Energy” brand, the word on its own does not have a strong reputation. Rather, it is MEC’s device marks, and the word mark “Monster Energy”, which carry its reputation."

"The evidence establishes that the word “monster” has been registered as a trademark in
Australia in respect of a vast array of products. It is an ordinary English word which conveys
a range of meanings such as large, strong or wild."

"It has been used in a motorsport context as the name of a series of motorbikes manufactured by Ducati and as the name of an event, monster jam, in which monster trucks compete."

Rodney Jane Racing and Monster Energy Company have been contacted for comment.