Maltesers rolled
Mars’ application alleging passing off, misleading and deceptive conduct in breach of s 52 and trade mark infringement by Sweet Rewards by the sale of a product known as “Malt Balls” has been dismissed by Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606.
Mars commenced the action, relying on the reputation of its “Maltesers” product and relevant trade mark registrations. It was accepted by Sweet Rewards that Maltesers were a famous product. However rather than assisting Mars this proposition was relied upon by Perram J to reject its claims.
it is highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Malteser for a Malteser. In that sense, Mars is a victim of its own success. The fact that the Delfi jars carry the name “Malt Balls” and use slightly different visual features is sufficiently clear to distinguish them from the Maltesers products.
The claim of trade mark infringement was also rejected, principally on the basis that Sweet Rewards was not using the words “Malt Balls” as a trade mark but rather as a description of its product. Perram J also considered that even if there was relevant trade mark use by Sweet Rewards, the two marks could not be deceptively similar, again because of the fame of Maltesers, stating that:
The Maltesers marks are very famous. Consumers generally must be taken to be familiar with them. That is relevant to assessing a consumer’s imperfect recollection of the mark. So viewed, a comparison between the impression held in the consumer’s mind and the direct impression of Sweet Rewards’ mark is one which, in this case at least, occurs in a context in which the chances of the average consumer having forgotten the Maltesers mark are vanishingly small.
