Sweet reward for confectionery packaging

Case Summary: Mars v. Sweet Rewards

Issue

Mars Australia Pty Ltd (Mars) alleged trade mark infringement, passing off and misleading and deceptive conduct of its “Maltesers” product by Sweet Rewards Pty Ltd (Sweet Rewards) in the packaging for its “Malt Balls” product under the Delfi brand.

Legal Issues

• The Court found the distinguishing feature of the Mars product was the word “Maltesers” and that the Sweet Rewards packaging for “Malt Balls” was not capable of suggesting, in the mind of a reasonable consumer, a connection with Maltesers or with Mars.
• Because the “Maltesers” name was so well known in Australia “… it is highly unlikely that any ordinary consumer of chocolate confectionery could mistake something which is not called  Maltesers for a Malteser”: ie: “Mars was a victim of its own success”.
• The Court dismissed Mars’ claim that the packaging of Malt Balls products infringed Mars’ registered trade marks.
• The Court found 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.
• The Court found the distinguishing feature of the Sweet Rewards product is actually the “Delfi” trade mark. The “Delfi” mark was not deceptively similar (or substantially identical) to the “Maltesers” mark.
• The Court found the Sweet Rewards label, considered as a whole, did not infringe the Mars trade
  marks, did not pass off the goods, and there was no misleading or deceptive representation.

Commercial Considerations

• In light of the Maltesers decision, commonly used images, colour and/or descriptive terms on packaging are unlikely to distinguish one brand from another.
• Certain images of product (eg. red, cut-through, etc) and/or descriptive terms (eg “steam fresh” or “freshly brewed”) are common in the packaging of foods.
• The distinguishing feature of a manufacturer’s product will be their distinctive brand name and/or logo or graphic.

MST Recommendations

• Take a  careful and strategic review of packaging with emphasis on brand logos, utilisation of any trade mark or registration symbols and the inclusion of distinctive features not commonly used by other manufacturers
• Develop distinctive packaging, different from the industry custom
• Never forget that IP protection is just one side of a two-sided coin; the other side is competition, which is encouraged in the market place.

MST has experience in assisting its clients to address these issues. Please contact an Intellectual Property lawyer for further information.

Author:  Noelene Treloar