Anja Bartels reviews the Australian Trade Marks Office decision in Mars Australia Pty Ltd v Delfi Chocolate Manufacturing

Mars Australia Pty Ltd v Delfi Chocolate Manufacturing¹

Key points

• Although Mars was unable to make out its case for deceptively similarity under section 44, it was ultimately successful in opposing Delfi’s MALTITOS trade mark pursuant to section 60 of the Trade Marks Act 1995 (Cth)
• The likelihood of deception or confusion between MALTITOS and Mars’ registered trade mark MALTESERS was said to arise from the significant reputation in Mars’ trade mark
• Reputation in a trade mark can be a double-edged sword and may work for or against a finding of deception or confusion
• Reputation of a trade mark does not only derive from quantum of sales but also from esteem or image projected by the trade mark
• Lawyers and Trade Mark attorneys may advise their clients to build an image around a registered mark, for example, by using variations of the mark, to use the reputation of the mark in the owner’s favour
• Delfi has appealed the decision to the Federal Court

The facts

On 15 March 2013, Delfi Chocolate Manufacturing S.A (“Delfi”) applied for registration of the word mark MALTITOS in class 30, which includes confectionary, chocolate and products made from or including chocolate and/or cocoa. The trade mark application (Australia Trade Mark Application No. 1546597) was advertised as accepted on 4 April 2013 and Mars Australia Pty Ltd (“Mars”) opposed registration of the trade mark on 4 July 2013.

The grounds of opposition that were considered at the Opposition Hearing were those pursuant to sections 44 and 60 of the Trade Marks Act 1995 (Cth).

Section 44

With reference to section 44, Mars argued that the MALTITOS trade mark was deceptively similar to Mars’ existing trade mark registration for MALTESERS, which was also registered in class 30.

For the relevant considerations of whether the two trade marks were deceptively similar, the Hearing Officer referred to the decision of the High Court in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd.²

Taking into account the entirety of the MALTITOS and MALTESER word marks, the Hearing Officer held that there were clear visual and aural differences between the trade marks. Accordingly, the Hearing Officer concluded on a prima facie basis that MALTITOS and MALTESERS were not deceptively similar, and that the ground of opposition pursuant to section 44 was not made out.

Section 60

Turning to the ground of opposition pursuant to section 60 of the Trade Marks Act, the Hearing Officer considered the likelihood of deception or confusion between the two trade mark marks in light of the reputation of the MALTESERS trade mark.

Referring to an earlier “Malt Balls” decision of the Federal Court of Australia³, the Hearing Officer reaffirmed the Court’s view that the MALTESERS trade marks are “very famous” and that “consumers must be taken to be familiar with them”.⁴ In the Malt Balls decision, Mars took action against Sweet Rewards Pty Ltd (“Sweet Rewards”) in the Federal Court of Australia alleging that Delfi’s use of “Malt Balls” in a red jar infringed the MALTESERS trade mark. In the decision, it was held that the words “Malt Balls” were used to describe the content of the jar and consequently were not used as a trade mark.⁵ The judge went on that if Sweet Reward’s use of each element of the red jar Malt Balls label qualified as trade mark use, it would not be deceptively similar to the MALTESERS trade mark, particularly in the view of the reputation of the MALTESERS trade mark.⁶

Referring back to the current opposition proceedings, Delfi argued that “the familiarity of Australian consumers with MALTESERS coupled with the differences between the trade marks meant that the chances of confusion were insignificant”.⁷

Keeping in line with an earlier Trade Marks Office decision⁸, the Hearing Officer agreed that “the circumstances and nature of an opponent’s reputation in a trade mark may work for or against a likelihood of deception or confusion”.⁹

In considering the reputation of the trade mark MALTESERS, the Hearing Officer took into account not only the quantum of sales under the MALTESERS trade mark but also the esteem, or image, that is projected by that trade mark. The Hearing Officer noted that whilst most of the relevant Mars trade marks prominently feature the word MALTESERS, Mars also uses different variations of this trade mark, such as MALTEASTER (predominantly used in relation to products sold around Easter). The Hearing Officer found that the use of these variations “indicates a willingness on the Opponent’s part to extend the use of the brand in a playful manner and more importantly, condition a consumer purchasing the brand to see the relevant connection”.¹⁰

Having regard to the esteem of the trade mark, the Hearing Officer found that “a real and tangible danger of deception would be likely to occur” if, for example, Delfi were to use the same script and style of packaging on the MALTITOS product as is commonly used on Mars’ MALTESER products . As the application for registration of MALTITOS was for a word mark, such use would be within the scope of the registration of the MALTITOS trade mark.

The Hearing Officer concluded that deception or confusion would be likely to arise from the demonstrated and significant reputation in the MALTESERS trade mark. Accordingly, the ground of opposition pursuant to section 60 was successful and the application for registration of the MALTITOS trade mark was ultimately refused.

This article was first published in Australian Intellectual Property Law Bulletin Volume 28, Number 5 in July 2015.

References

1. [2014] ATMO 113 (4 December 2014).
2. [1937] HCA 51.
3. Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606 and [96] - [97]
4. Mars Australia Pty Ltd v Delfi Chocolate Manufacturing [2014] ATMO 113 at [32].
5. Flight Centre Pty Ltd v World Flight Centre Pty Ltd [2003] ATMO 60 at [21].
6. Mars Australia Pty Ltd v Delfi Chocolate Manufacturing [2014] ATMO 113 at [35].
7. Mars Australia Pty Ltd v Delfi Chocolate Manufacturing [2014] ATMO 113 at [39].