Mars Australia Pty Ltd v Delfi Chocolate Manufacturing [2014] ATMO 113

Mars Australia opposed the registration of the trade mark MALTITOS by Delfi Chocolate pressing sections 44 and 60 of the Trade Marks Act.

The MALTITOS trade mark application covered confectionary goods in Class 30. Mars asserted that its prior MALTESERS trade marks, also in Class 30, were deceptively similar to MALTITOS. The Hearing Officer, on reviewing the section 44 ground, dismissed the potentially analogous CHOC CHILL and RAINMASTER cases to come to the view that the overall words MALTESERS and MALTITOS are visually and aurally distinct. The section 44 ground failed.

Tunring to section 60, the Hearing Officer noted the finding of the Federal Court in an earlier MALTESERS trade mark matter brought forward by Mars that the MALTESERS trade mark was ‘very famous’ and ‘consumers must be taken to be familiar with [it]’. The only consideration required by the Hearing Office was whether deception or confusion was likely to arise as a result of the reputation.

As the MALTITOS trade mark application was in the form of a plain word trade mark, the Hearing Officer was required to take all notional uses of that trade mark into account, including any possibly script forms. The Hearing Officer noted that if the applicant was to use its trade mark in the same script form as the MALTESERS trade marks, there would exist a real tangible danger of deception or confusion arising.

The section 60 ground succeeded and the application was refused.

To view the Office decision, click here.