11 December 2009
The Full Federal Court this morning dismissed an appeal by Mars in proceedings relating to the packaging of a chocolate coated malt ball product known as “Malt Balls”. Justices Bennett, Emmett and Edmonds all agreed with the trial judge that the packaging of Australian confectionary importer Sweet Rewards’ “Malt Balls” product would not mislead consumers, as it did not contain the word “Maltesers”, and that the words “Malt Balls” were not being used by Sweet Rewards as a trade mark. We acted for Sweet Rewards in this case.
Earlier this year, Justice Perram dismissed Mars’ application alleging that our client Sweet Rewards’ packaging infringed two Maltesers packaging registered trade marks, and constituted passing off and misleading and deceptive conduct. Mars appealed that decision to the Full Court, and the appeal was heard in Sydney on 2 November this year. In the Full Court decision handed down today, Mars’ appeal was dismissed with costs.
The Full Court agreed with the following key findings made by Justice Perram:
- the most important distinguishing feature of the Maltesers product packaging trade marks is the word “Maltesers”;
- other features of the trade marks, namely the colour red and the depiction of the product in cross-section, are commonly used on confectionary packaging and therefore do not distinguish Maltesers from other confectionary products;
- the absence of the word “Maltesers” in the Malt Balls product packaging was critical; and
- the words “Malt Balls” on the Malt Balls product packaging are descriptive and were not used as a trade mark.
Accordingly, the Full Court concluded that the Sweet Rewards packaging was not deceptively similar to the Maltesers product packaging trade marks, and did not constitute passing off or misleading and deceptive conduct.
