Mars Australia Pty Ltd brought an action against Sweet Rewards Pty Ltd alleging passing off, misleading conduct and trade mark infringement.
Since mid-2005, Sweet Rewards distributed a chocolate covered malt ball called "Malt Balls". These goods were sold in large circular plastic containers with a label featuring
- a red (or orange) background,
- the words "Malt Balls",
- the word "Delfi" (in smaller script than Malt Balls)
- a picture of a skier in a circle, and
- pictorial representations of the confectionary as floating brown balls with some in cross section showing a yellow filling.
Mars has, for many years sold MALTESERS confectionary in get up including:
- a red background,
- the word "Maltesers",
- pictorial representations of the confectionary as floating brown balls with one in cross section showing a yellow filling.
Evidence of the MALTESERS "get-up" was provided with Mars contending that it had reputation in get up so similar to that used by Sweet Rewards that distribution of those goods wrongly suggested some connection to MALTESERS, or that the contents are the same as MALTESERS. There was also a claim of trade mark infringement based on two registered trade marks owned by Mars that depicted MALTESERS packaging.
The Court found that the "get-up" of the MALTESERS packaging in which the reputation inheres was found principally in (a) the use of the brand name MALTESERS in a stylized script moving from bottom left to top right, but also resides in aspects of the "get-up" accepted by both parties, namely, (b) the red background and (c) floating chocolate balls, some of which are in cross-section.
Perram J found that "Because the principal component in the MALTESERS get-up is the word "MALTESERS", 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". While the Court accepted some limited similarity between both products, having been decorated with floating chocolate balls, it took the view that the words "Malt Balls" were descriptive and that the strength of the MALTESERS brand was of major importance. Consequently, the absence of any very similar word on Sweet Rewards product militated against other similarities in packaging leading to a likelihood of confusion, particularly as Sweet Reward's product also bore the "Delfi and skier motif" mark. As a result, the Court rejected Mars passing off and misleading conduct allegations.
The Court also dismissed Mars claims of trade mark infringement finding that there was no use of Malt Balls as a trade mark and no deceptive similarity.
It also considered the issue in absence of that finding and commented that while the Court has historically dismissed arguments directed towards the reputation of a mark when applying the test for trade mark infringement, (i.e. by comparing the marks in isolation) there is a basis for considering reputation when determining the extent of a consumer's "imperfect recollection". In this regard, the Court found that "a corollary appears to be that in assessing the notion of a consumer's imperfect recollection of a mark, the fact that 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.....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".
This decision suggests that owners of well-known marks contemplating infringement action against alleged infringers must consider the effect of their own reputation as part of the "imperfect recollection" assessment. Where a trade mark has become very well known among consumers, this decision suggests that the likelihood of deception or confusion amongst the public will be reduced.
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