Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174

Mars Australia Pty Ltd ("Mars") took action against Sweet Rewards Pty Ltd ("Sweet Rewards") in the Federal Court of Australia alleging that Sweet Rewards had infringed Mars' trade marks and had engaged in passing off and misleading conduct by distributing a "Malt Balls" product in red and orange jars with a get-up said to be similar to Mars' "Maltesers" chocolate confectionary.

In December 2009, the Full Court of the Federal Court upheld the trial judge's ruling that Sweet Rewards had not infringed the Maltesers trade marks because:

  • Sweet Rewards uses the mark "Delfi" as a trade mark to distinguish the "Malt Balls" as goods of Sweet Rewards, not the other elements of the red jar "Malt Balls" label; and
  • The distinguishing feature of the Maltesers trade marks is the word "Maltesers" and the "Delfi" trade mark used on Sweet Rewards' red jar "Malt Balls" label is not likely to deceive or cause confusion.

The Full Court also agreed with the trial judge's conclusion that the "Malt Balls" red and orange jar labels did not pass off Sweet Rewards' products as "Maltesers" and no misleading or deceptive representation had been made.

In considering whether a competing mark is deceptively similar to a registered trade mark, it is important to identify the mark that has been used by the competitor as a trade mark, that is, those aspects of packaging or labelling that identify the origin of the competitor's product. Further, the fact that a registered trade mark has attained notoriety may be taken into account in the assessment of deceptive similarity.

This case serves to highlight that to succeed in a passing off and misleading conduct action, it is necessary to establish that the features of a product get-up:

  • are distinctive to a particular trader;
  • are not commonly used in the trade or merely descriptive or functional; and
  • are used as a badge of origin

notwithstanding the presence of other distinguishing product name branding to identify the trade source of the product.