ASIA PACIFIC: AUSTRALIA
NO SWEET REWARDS FOR MALTESERS
Authors: Peter LeGuay & Katarina Smolcic, Thomson Playford Cutlers
Mars Australia (“Mars”), the manufacturer of Maltesers has been unsuccessful in its legal action against Sweet Rewards, a confectionary importer and distributor of Malt Balls in Australia. Mars argued that the packaging for the Malt Balls product produced by Sweet Rewards was too similar to the packaging of its Maltesers product and that Sweet Rewards had infringed its registered trade marks and engaged in passing off and misleading or deceptive conduct.
Mars’ Maltesers are malt confectionary covered in chocolate in the shape of a ball and are packaged in a red pouch or box displaying the word ‘Maltesers’ and containing images of halved and floating malt balls. Malt Balls are also malt confectionary covered in chocolate in the shape of a ball and are packaged in a jar with a red label displaying the words ‘Delfi Malt Balls’ and containing images of halved and floating malt balls.
Mars argued that the labelling used by Sweet Rewards would lead consumers to believe that there was a connection between Malt Balls and Maltesers.
In June, the Federal Court dismissed Mars’ claim stating that the packaging was not too similar between the two, that consumer confusion would be unlikely due to the well known Maltesers mark and that Mars had been a “victim of its own success”.
Mars appealed this decision to the Full Court of the Federal Count arguing that the trial judge had erred in placing too much emphasis on the reputation that Mars had in the Maltesers trade mark.
In upholding the Federal Court’s original decision, the Full Court of the Federal Court stated that consumers would be able to tell the products apart and that no instances of trade mark infringement, passing off or misleading or deceptive conduct had occurred.
This case demonstrates the problems faced by trade mark owners and advertisers when their brands become so well known and distinctive that consumers are unlikely to confuse their brands with similar (but not the same) competing brands.
