Australia: Of Malt Balls and Maltesers Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174

Last Updated: 7 February 2010


Mars Australia has not succeeded in its efforts to restrain the sale of a range of "Malt Balls" products sold through various discount stores, including Target and Kmart. In June 2009, Perram J dismissed Mars' claims of registered trade mark infringement, passing off and contravention of ss 52 and 53 of the Trade Practices Act 1974 (Cth) made against Sweet Rewards Pty Ltd. In a judgment handed down shortly before the Christmas/New Year break, a Full Court of the Federal Court (Emmett, Bennett and Edmonds JJ) dismissed Mars' appeal against the trial judge's decision.

Malt Balls and Maltesers

Since 2005, Sweet Rewards' chocolate covered malt balls have been sold in various discount stores, including Target and Kmart. The malt balls are packaged in a plastic jar with a bold red background, with the word "Delfi" on the top front centre of the label, a logo consisting of a skier in a circle on the jar, malt ball images floating across the jar (including some cross-sections of the malt balls), and the words "Malt Balls" written in bold script covering a small portion of the label.

The packaging of the well-known Maltesers product combines the brand name "Maltesers" (written in a stylised script across the packaging), a red background and floating chocolate balls (including some balls shown in cross-section).

Decision of Perram J

Mars made three claims: registered trade mark infringement, passing off and contravention of ss 52 and 53 of the Trade Practices Act. Perram J dismissed each of these claims.

Perram J dismissed the registered trade mark infringement claims on a number of grounds, including on the basis that the "Malt Balls" name was not used by Sweet Rewards "as a trade mark".

In relation to the claims in passing off and under the Trade Practices Act, Mars alleged the packaging in which the Malt Balls were sold was likely to convey to the ordinary or reasonable consumer that there was some association between that product and Maltesers. Mars also claimed that the Malt Balls jars conveyed a representation of "product equivalence" (i.e. that Malt Balls provided the "same taste experience" as eating a Malteser).

Perram J held that because the principal component of the Sweet Rewards packaging did not include the word "Maltesers", which was the most important part of the Maltesers packaging, it was highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Malteser for a Malteser. Perram J highlighted the fact that the jars bore the name "Malt Balls" and used slightly different visual features such that a consumer would sufficiently distinguish them from Maltesers. His Honour also considered that the use of the word "Delfi" and the skier image further reduced any likelihood of consumer deception. His Honour also accepted that the term "Malt Balls" was a term of ordinary usage to describe the product and that its use alone would be highly unlikely to mislead consumers into thinking they were eating a Malteser. Mars' argument regarding "product equivalence" was also rejected, on similar grounds.

The Decision of the Full Court

The Full Court noted that Perram J was correct in his finding that the distinguishing feature of the Maltesers get-up and trade marks, considered as a whole, is the word "Maltesers". The Full Court did not consider the other features of get-up (packaging) referred to above, including the red colour and the images of floating malt balls, to be features that distinguished the Mars product. Notably, the Full Court considered that the colour red and the images of chocolate malt balls (in whole and in cross-section) are commonplace in the packaging of confectionery.

The Full Court stressed that the questions of similarity of product appearance in the case were matters of impression. In dismissing the appeal on the registered trade mark claims, the Full Court agreed with the trial judge that the overall impression one would have of the Mars trade marks is simply the word "Maltesers". In addition, the Court considered it relevant that the words "Malt Balls" are descriptive of the nature of the Sweet Rewards product. The fact that the words "Malt Balls" were styled similarly to "Maltesers" did not persuade the Full Court to a contrary view. In the result, the Full Court held that Sweet Rewards did not use the words "Malt Balls", the red colour on the packaging or the images of malt balls as trade marks. These characteristics were not used by Sweet Rewards to distinguish the malt balls as those of Sweet Rewards, nor to suggest that the goods were Maltesers, nor that they are somehow equivalent to Maltesers or to any other Mars product. The Full Court also held that the Sweet Rewards label, as a whole, was not deceptively similar to the Mars trade marks. Therefore, the appeal against the dismissal of the registered trade mark claims failed on these grounds.

Insofar as the passing off and Trade Practices Act claims were concerned, the Full Court agreed with the primary judge that the "distinguishing feature" of the Sweet Rewards product was the trade mark "Delfi". The Full Court held that Perram J had not erred and that the label that Sweet Rewards applied to its Malt Balls product, when considered as a whole, did not pass off the Malt Balls product as Maltesers or otherwise as a Mars product. Therefore, this aspect of the appeal also failed.

The judgment is a salient reminder that in the consideration of claims based on similarities of product presentation, decisions will be based largely on impression, and that a court will adopt a commonsense view unaffected by partisan sensibilities in assessing whether the appearance of a product is so similar to another so as to be likely to mislead or deceive the ordinary or reasonable consumer.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

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”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.