Australia: What A Malteser! – Mars’ Trade Mark Infringement Rolled Out Of Court

In a recent decision of the Federal Court dismissing Mars' application alleging trade mark infringement against Sweet Rewards, a confectionery importer and distributor, Maltesers were found to be so well known in Australia that no reasonable chocoholic "could mistake something which is not called a Malteser for a Malteser". Who would have thought that delicious little round chocolate balls that used to roll down the cinemas aisles could become so famous!

Mars, the manufacturer and distributor of the famous Maltesers confectionary, commenced an action in the Federal Court against Sweet Rewards, a confectionary importer and distributor, relying on the reputation of its Maltesers product. Mars alleged that Sweet Rewards had infringed its trade marks, as the name and packaging of Malt Balls were considered too similar to that of Maltesers, and engaged in misleading and deceptive conduct in breach of the Trade Practices Act and passing off.

The Malt Balls, like Maltesers, were distributed in a jar with red labelling featuring images of floating chocolate coated balls, some of which were halved. The Malt Balls labelling and packaging did not include the word 'Maltesers.'

Justice Perram dismissed Mars' application in its entirety. His Honour found that Sweet Rewards was using the name Malt Balls to describe its product rather than as a trade mark. The packaging of Malt Balls was also considered distinctive because it featured a distinctive Delfi logo and the shade of red was different. His Honour found that the most important aspect of Maltesers' packaging was the word Maltesers and that was missing from the Malt Balls packaging.

Because of the fame of Maltesers in Australia, His Honour found that it is unlikely that a consumer could mistake a chocolate ball not referred to as a Malteser to be a Malteser. "In that sense, Mars is a victim of its own success". No doubt Mars feels the outcome of this case will not be seen as a Sweet Reward for their efforts.

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