No Sweet Reward for Mars
12 November 2012
The Federal Court has dismissed a case brought by confectionary company Mars against an Australian confectionary importer and distributor, Sweet Rewards in Mars Australia v. Sweet Rewards, according to lawyers at Mallesons Stephen Jacques.
Mallesons acted for Sweet Rewards in defending Mars’ complaints about the packaging of a chocolate-coated malt ball product known as ‘Malt Balls’, which it alleged was too similar to the packaging of its popular Maltesers products.
Sweet Rewards is a distributor and supplier of confectionary products in Australia. In the period 2005 to 2006, Sweet Rewards supplied to various retail outlets around Australia Malt Balls products under various forms of packaging. Mars alleged that two packaging variants of the Malt Balls product infringed its rights in the well-known Maltesers product.
In 2007, Mars commenced proceedings against Sweet Rewards in the Federal Court alleging that Sweet Rewards had infringed two Maltesers packaging registered trademarks, engaged in passing off and engaged in misleading and deceptive conduct.
The proceedings were heard in November 2008.
In a judgment handed down on June 5, Justice Nye Perram dismissed Mars’ application in its entirety and awarded costs in favour of Sweet Rewards, holding that neither of the packaging variants were capable of suggesting, in the mind of a reasonable consumer, a connection with Maltesers or with Mars.
“Critical to [the justice’s] reasoning was the absence of the word ‘Maltesers’ in the Malt Balls product packaging,” wrote Indra Bhattacharya, a Mallesons solicitor. “[Perram] held that because the Maltesers name was so well-known in Australia, ‘it is highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Maltesers for a Malteser.’”
Perram also found the use of the name ‘Malt Balls’ along with different visual features to Maltesers packaging, the presence of a distinctive ‘Delfi’ logo on the Malt Balls packaging and the different shades of red used on the two products were all considerations that militated against a finding of passing off or misleading and deceptive conduct, said Bhattacharya.
Perram also dismissed Mars’ claim that the packaging of Malt Balls products infringed Mars’ registered trade marks. “In this respect, [Perram] held that the use of the words ‘Malt Balls’ on the Malt Balls product packaging was purely descriptive and did not constitute use as a trade mark,” Bhattacharya said. Instead, he found that only the ‘Delfi’ mark had been used as a trademark in the Malt Balls packaging and that the Delfi mark was not deceptively similar (or substantially identical) to the Maltesers mark.
