SOUTH AUSTRALIA, VICTORIA & WESTERN AUSTRALIA
Peter Heerey AM, QC, Tom Cordiner & Alan Nash
Correspondents for South Australia, Victoria and Western Australia
Note: Where any of us was involved in a case reported below and the matter is still running, or potentially so, the other correspondents have taken the role of reporting that case.
In this decadent edition, we report on a quartet of cases dealing with champagne, cigars, green tea and chocolate. And something of a novelty – a successful unjustifiable threats proceeding.
Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd  FCA 1065(1 October 2015)
Trade marks – objection to registration – deceptive similarity – likelihood of deception or confusion – MALTESERS vs MALTITOS
Delfi applied for the mark MALTITOS in respect of various confectionary and chocolate products; Mars opposed the registration on the basis of its existing MALTESERS mark, relying on sections 44 and 60 of the Trade Marks Act 1995 (the Act). The delegate of the Registrar of Trade Marks upheld the opposition, agreeing that in light of the reputation MALTESERS enjoyed in Australia, use of MALTITOS would be likely to deceive or cause confusion. The delegate rejected the section 44 claim, however, holding that MALTITOS otherwise was not substantially identical with or deceptively similar to MALTESERS. Delfi appealed, and Mars cross-appealed, the findings that went against them. Both appeals were heard before Justice Jessup.
In a short and sweet judgment, his Honour rejected Mars’s argument as to deceptive similarity between MALTESERS and MALTITOS (and so dismissed the cross-appeal). In relation to the putative consumer whose aptitude to be deceived was relevant, his Honour did not consider that a “mere passer-by” without any pre-existing intention of buying confectionary was the correct standard (impulse buying aside). Rather, the relevant consumer was one with some previous exposure to the MALTESERS mark and “of a mind to make a purchase of confectionary”. His Honour also disregarded arguments by Mars that sought to illustrate how confusing Delfi’s mark would be when presented in the same colour, layout and style as MALTESERS. His Honour observed, without sugar-coating, “Considerations of these kinds would, of course, be central aspects of any passing off case brought by the respondent against the applicant, but they have no place in a proceeding in which the only issue is whether the applicant’s mark, a single word in upper case letters, should be registered”. His Honour held that a consumer would not be left to wonder whether products sold under the MALTITOS mark originated from Mars (bearing in mind that the test at the application stage does not involve a side-by-side comparison); nor was there such a close aural resemblance between the marks as would be likely to cause confusion.
As to section 60, the reputation of the MALTESERS mark was not in dispute. The issue was whether because of that reputation use of MALTITOS would be likely to deceive or confuse. Justice Jessup rejected Delfi’s suggestion that section 60 is restricted to unregistered marks; the language of the section is not so confined. His Honour continued, however:
I would hold that, in a case in which the “other” mark is registered, the only respect in which s 60 requires an exercise different from that arising under so much of s 44 as relates to deceptive similarity is that the reputation in Australia of the “other” mark must be the reason why the use of the mark proposed to be registered is likely to deceive or cause confusion. What this means in practice is that the notional consumer of average intelligence thinking of making a purchase by reference to goods in association with which the latter mark is used, or intended to be used, is no longer someone who has had no more than some exposure to the “other” mark: he or she is someone who is assumed to have that level of awareness of that mark as is consistent with the content and extent of the reputation of it.
Accordingly, much of the logic deployed in the Court’s treatment of section 44 was applicable to its analysis of section 60. In what was no doubt considered by Delfi to be a delicious irony, the Court held that the strength of the MALTESERS brand counted against it; in his Honour’s view, with a stronger awareness of the MALTESERS mark, the putative consumer “would be immediately struck by the differences between the two marks”. Delfi’s appeal therefore was upheld.