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Mars loses second battle

Mars’ appeal to the Full Federal Court (Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174) has been dismissed with costs.  At paragraphs 25 and 26 the Full Court noted:

“We are of the view that the primary judge was correct in finding that the distinguishing feature of the Maltesers get-up and trade marks, as a whole, is the word “Maltesers”.  The other features relied on by Mars, namely the red colour and the pictures of the malt balls product in the whole and cut through, are not distinguishing features of the Mars product.  The colour red and the depiction of the product, both whole and cut through in cross-section, are, on the evidence, commonplace in confectionary packaging.  The features relied upon by Mars to distinguish its product, other than the word “Maltesers”, do not alone or in combination do so.

In our view, the overall impression in the imperfect recollection of the consumer of the Mars trade marks is of the word “Maltesers”.”

The Court held that “neither the words “Malt Balls”, the red colour nor the depiction of the product in the whole and in cut through are used as a trade mark by Sweet Rewards. They are not used to distinguish the malt balls as the goods of Sweet Rewards, nor do they represent that the goods are Maltesers, that they are equivalent to Maltesers or that they are otherwise the goods of Mars.  Further, the words “Malt Balls” have been used by Sweet Rewards on products sold other than under the Delfi brand and have been used on the packaging of a product sold by a confectioner in Melbourne.  The packaging of the latter was in red, described the product as malt balls and showed the product both in the whole and in cross-section.

The distinguishing feature of the Sweet Rewards product is the Delfi trade mark.” [28] and [29]

Our report on the initial case is here.

This entry was posted by Virginia Beniac-Brooks on Thursday, December 17th, 2009 at 9:57 am and is filed under Australian Trademarks. You can follow any responses to this entry through the RSS 2.0 feed. Both comments and pings are currently closed.

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