The Federal Court has allowed Minter Ellison client Delfi Chocolate Manufacturing S.A.'s appeal against a Trade Marks Office decision refusing to register the trade mark "MALTITOS". The trade mark application was opposed by Mars Australia Pty Ltd, the trade mark proprietor of "MALTESERS".

In allowing the mark to proceed to registration, Justice Jessup concluded that "MALTITOS" was not deceptively similar to "MALTESERS", and that consumers were not likely to be deceived or confused because of the reputation of the "MALTESERS" mark.

The key take away points from Justice Jessup’s decision are:

  • It should not be assumed that a mark comprising a single word in upper case letters will be used in any particular style, colour or get-up for the purposes of considering deceptive similarity.
  • The strength of the reputation in an existing mark will affect how differences and similarities between it and the proposed mark are perceived.

Background

Delfi had applied to register "MALTITOS" in class 30 for confectionery, biscuits, chocolate, cocoa and products made from or including chocolate and/or cocoa. The delegate dismissed Mars’ argument that "MALTITOS" and "MALTESERS" were deceptively similar under section 44(1) of the Trade Marks Act, but found that use of the "MALTITOS" mark was likely to deceive or cause confusion because of the demonstrated reputation of the "MALTESERS" trade mark. In the delegate's view, that reputation would reduce the impact of, rather than reinforce, the differences between the two marks. He therefore refused registration under section 60 of the TM Act. 

Delfi appealed against the s 60 finding, and Mars cross-appealed on the s 44(1) finding.

Is "MALTITOS" deceptively similar to "MALTESERS"?

After considering the surrounding circumstances in which the marks are used, Jessup J was not persuaded that "MALTITOS" was deceptively similar to "MALTESERS".

He did not accept that the average consumer who had some degree of exposure to the "MALTESERS" brand was likely to be confused about whether the "MALTITOS" product came from the same source as “MALTESERS”, because:

  • there are limited similarities between the two marks visually; and
  • the last two syllables of each mark are aurally distinct.

His Honour rejected Mars' submissions that consumers would be confused by Delfi's mark if it adopted the same lettering, font, colour, layout and style as Mars' mark. Whilst these considerations may be relevant in a passing off case, these issues have no bearing on whether a mark comprising a single word in upper case letters ought to be registered. It should not be assumed that a mark comprising a single word in upper case letters will be used in any particular style, colour or get-up for the purposes of considering deceptive similarity.

The reputation question

Under s 60 of the Act, the Court is required to consider whether the proposed mark is likely to deceive or cause confusion because of an existing mark (registered or unregistered). The notional consumer through whose eyes this assessment is conducted is assumed to have a level of awareness of that mark which is consistent with its established reputation. Thus a different degree of knowledge is imputed to the notional consumer under s 60, compared to a s 44 assessment.

It was not in dispute that the "MALTESERS" mark has a widespread reputation in the area of packaged confectionery. However, his Honour found that the reputation in the mark would not make it any more likely that such a notional consumer would wonder whether products displayed and sold under the applicant's mark were from the same source as those sold under the respondent's mark.

In fact, and contrary to the Trade Marks Office decision, Jessup J considered that due to the strength of Mars' reputation in "MALTESERS", consumers would immediately be struck by the differences between the two marks. Therefore, it was unlikely they would be deceived or confused.