In a recent decision of the Federal Court dismissing Mars'
application alleging trade mark infringement against Sweet Rewards,
a confectionery importer and distributor, Maltesers were found to
be so well known in Australia that no reasonable chocoholic
"could mistake something which is not called a Malteser for a
Malteser". Who would have thought that delicious little round
chocolate balls that used to roll down the cinemas aisles could
become so famous!
Mars, the manufacturer and distributor of the famous Maltesers
confectionary, commenced an action in the Federal Court against
Sweet Rewards, a confectionary importer and distributor, relying on
the reputation of its Maltesers product. Mars alleged that Sweet
Rewards had infringed its trade marks, as the name and packaging of
Malt Balls were considered too similar to that of Maltesers, and
engaged in misleading and deceptive conduct in breach of the
Trade Practices Act and passing off.
The Malt Balls, like Maltesers, were distributed in a jar with
red labelling featuring images of floating chocolate coated balls,
some of which were halved. The Malt Balls labelling and packaging
did not include the word 'Maltesers.'
Justice Perram dismissed Mars' application in its entirety.
His Honour found that Sweet Rewards was using the name Malt Balls
to describe its product rather than as a trade mark. The packaging
of Malt Balls was also considered distinctive because it featured a
distinctive Delfi logo and the shade of red was different. His
Honour found that the most important aspect of Maltesers'
packaging was the word Maltesers and that was missing from the Malt
Because of the fame of Maltesers in Australia, His Honour found
that it is unlikely that a consumer could mistake a chocolate ball
not referred to as a Malteser to be a Malteser. "In that
sense, Mars is a victim of its own success". No doubt Mars
feels the outcome of this case will not be seen as a Sweet Reward
for their efforts.
IP is the legal property in the innovation in your business and it is that which drives your revenue and profit growth.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).