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The Federal Court has dismissed a case brought by well known confectionary company Mars against an Australian confectionary importer and distributor, Sweet Rewards (Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606). 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. Images of the primary packaging in issue and Mars’ Maltesers product are shown below.
In 2007, Mars commenced proceedings against Sweet Rewards in the Federal Court alleging that Sweet Rewards had:
- infringed two Maltesers packaging registered trade marks
- engaged in passing off, and
- engaged in misleading and deceptive conduct (in contravention of section 52 and 53 of the Trade Practices Act).
The proceedings were heard before Justice Perram in November 2008.
In a judgment handed down on 5 June 2009, Justice Perram dismissed Mars’ application in its entirety and awarded costs in favour of Sweet Rewards.
Passing off and misleading and deceptive conduct
Justice Perram held 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 His Honours reasoning was the absence of the word ‘Maltesers’ in the Malt Balls product packaging. His Honour 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”. In this regard, Justice Perram considered that to an extent, “Mars was a victim of its own success”. His Honour 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. Justice Perram was equally unconvinced by a central aspect of Mars’ case that Sweet Rewards had intentionally tried to misappropriate Mars’ goodwill and reputation.
Justice Perram also rejected Mars’ argument that Sweet Rewards had represented that the Malt Balls products were ‘equivalent’ to Maltesers by including on the packaging of Malt Balls products, a depiction of floating brown balls (some in cross section) in conjunction with the word ‘Malt Balls’. Again, this was as a result of his Honour’s finding that the most important aspect of Maltesers’ packaging was the word ‘Maltesers’ which was missing from the packaging of the Malt Balls products.
Trade mark infringement
Justice Perram also dismissed Mars’ claim that the packaging of Malt Balls products infringed Mars’ registered trade marks. In this respect, His Honour 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. His Honour found that only the ‘Delfi’ mark had been used as a trade mark in the Malt Balls packaging and that the Delfi mark was not deceptively similar (or substantially identical) to the Maltesers mark.