Australian Trade Marks Law Blog : Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

Mars made four claims about the two kinds of jars and labelling used by Sweet Rewards, namely that:

1. their distribution is unlawful because, the jars wrongly suggest a connection between Malt Balls and the Maltesers product which is non-existent;

2. the Malt Ball jars misleadingly represent to consumers that their contents are the same as Maltesers;

3. the use on the jars of a label with floating chocolate balls, some of which are sliced through showing a yellow filling, misleadingly represent to consumers that their contents are the same as Maltesers;

4. the jars infringe two registered trade marks owned by Mars.

Mars’ failed on all allegations and its application was dismissed with costs. Baker & McKenzie acted for Mars. Mallesons instructed Bruce Caine SC and Warwick Rothnie of IP Wars blog for the respondents.

Trade Practices Act claim – misleading and deceptive conduct

The Hon Justice Perram held that “the orange jar does not remotely resemble the Maltesers packaging or use all of the essential features of the Maltesers get-up. I do not think that the ordinary consumer of chocolate confectioneries could possibly mistake the orange jar for Maltesers. In my opinion, this claim by Mars is wholly unmeritorious”.

The Court also found against Mars in relation to the red jar, on four main grounds:

1. the word “Maltesers” or any other aspect of that word’s visual features or presentation is nowhere to be found on the red jar so there was no significant “source of confusion” causing the products to “misleadingly resemble” each other. As Perram J., put it : “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.”;
2. the word “Delfi” with a skier motif next to it is emblazoned on the label of the red jar in print half the size of the words “Malt Balls” was “a significant feature which finds no counterpart in the Maltesers get-up”;
3. the red of the Maltesers products is quite different to the red of the red jar.
4. while there was some limited similarity between the red jar and the Maltesers products in that “both are festooned with floating chocolate balls, this condition is not sufficient to overcome the effect of the words “Malt Balls”, the Delfi mark or the different red colouring”.

The first passing off claim – representations about source and origin

The Court noted that “where a party intends to misappropriate another’s goodwill the demonstration of that intention may well make it easier to draw an inference that the impugned conduct was misleading” then found as a question of fact that Sweet Rewards had not deliberately misappropriated the goodwill associated with the Maltesers products.

The second passing off claim – product equivalence representation

The decision continues: “Mars also argued that the red and orange jars conveyed representations that the Malt Balls they contained were made from the same ingredients, made from the same recipe or provided the same taste experience as Maltesers when eaten”. His Honour called this the “product equivalence representation.”

The Court held that “the get-up of the respective products was not deceptively similar” but said that “the red and orange jars [were] deceptively similar to the Maltesers get-up then I would be prepared to conclude that the [so called] product equivalence representation was made”.

Really? I mean, what His Honour says about get-up is uncontroversial but the idea of “product equivalence” seems, to this writer, to cover any get-up that descriptively or functionally represents chocolate coated honeycomb, which would be plainly wrong.

The third passing off claim – whether every Malt Ball represents that it is a Malteser

Mars contended that the get-up depicting floating brown balls with some cut-through to reveal a yellow centre necessarily connotes that the malt ball depicted is a Malteser.

The Court held that “most important aspect of the Maltesers get-up is the word Maltesers and the associated brand flag”. It also held that the words “Malt Balls” were a dead giveaway too, “extinguish(ing) entirely whatever limited capacity for confusion the floating balls might have otherwise had.”

The trade mark claims

Mars owned two relevant registered trade marks and agitated two issues:

1.         whether Sweet Rewards’ use of the Malt Balls label was ‘use’ in a trade mark sense; and

2.         whether the use by Sweet Rewards of that label, assuming it to be trade mark use, was deceptively similar to Mars’ trade marks.

1. Use

Mars had to demonstrate that Sweet Rewards’ use of the red jar label was use as a trade mark . This requires either that Mars show that the label was intended to be used to distinguish goods or services in the requisite sense or that it did in fact do so (see s 17 of the Trade Marks Act).

The Court held that there was trade mark use by Sweet Rewards but that it was only the Delfi mark, not the Maltesers mark.

2. Deceptive Similarity

On this element, the Court engaged in a straightforward application of the principles in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 [2004] FCAFC 196 which established a number of principles in considering whether a mark so nearly resembles another mark that it is likely to cause confusion or deception:

• it is to be judged by an impression by persons of ordinary intelligence based on their recollection or imperfect recollection of an applicant’s mark;

• the ‘idea of the mark’ is to be taken into account;

• aural impression is taken into account;

• risk of deception is taken into account and whether an ordinary person entertains a reasonable doubt;

• where an essential feature or features of a particular registered trade mark are incorporated into another mark, that may well infringe the registered trade mark;

• generally, reputation is irrelevant to the question of infringement except if a particular word or words has come to signify exclusively the goods of the proprietor of a mark (the mark including those words) then the use of that or those words by another would be an infringement; and

• a mark is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and its use in relation to particular goods or services is a relevant consideration.

The Court concluded that the trade mark used by Sweet Rewards was the Delfi mark so that Mars’ claim tripped over at the first hurdle. The Court went on to find that “even if the trade mark use by Sweet Rewards were as Mars alleges (and it wasn’t), consumers are so familiar with Maltesers that they could not possibly be confused by the Malt Balls packaging – more formally, there is no likelihood of imperfect recollection by them of the Maltesers mark leading to confusion.” His Honour observed that “Maltesers” does not sound like “Malt Balls” found against Mars and awarded costs to Sweet Rewards.

Ruling on Evidence

Objection was taken by the respondents on Mars’ evidence of certain discussions a witness had with various retailers about the distribution of the Delfi products, the purpose which was to show that the reputation of the Delfi range was limited.

The Court held that the evidence was hearsay and declined to receive it pursuant to s 64(2) of the Evidence Act 1995 (Cth) as no notice had been given pursuant to s 67. The Court declined exercise its power to relieve Mars from the notice requirements pursuant to s 67(4) as the affidavit did not provide the particulars contemplated in the notice and was prepared five months in advance of the hearing.

The Court pointed out that the problem would have been fixed with a short affidavit from each person. But as the Court observed much earlier in the judgment [at paragraph 23]: “No reputation need be established in any feature of the respondent’s product in order to show that the applicant’s goodwill is being misappropriated or that consumers are, thereby, being misled. The making of an allegation by an applicant that a respondent’s product has a particular get-up, beyond and above it having particular features, serves no purpose.” In other words, the dud evidence was unnecessary. And inadmissible.

Nick Weston