No Ball for Mars


Mars unsuccessfully attempted to prevent Sweet Rewards from selling chocolate covered malt balls products (shown above) based on its trade mark registrations for “Maltesers”, a well known chocolate covered confectionary product (Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174). Examples of the Maltesers product and registrations are shown below. 

Mars alleged trade mark infringement, passing off and misleading and deceptive conduct on the part of Sweet Rewards. 

The Sweet Rewards product was sold in a jar with a red label bearing a number of elements including the trade mark “Delfi”, the word “malt balls” and illustrations of malt balls.  

The primary judge refused to issue an injunction to stop Sweet Rewards from selling their malt ball product in Australia. The Full Court agreed with the findings of the primary judge that the word “Maltesers” as a whole was the distinguishing feature of the Mars trade marks and product get up. The Full Court also concurred with the primary judge that the evidence showed that the red label and depiction of the malt balls were common in the confectionary industry. Thus the Full Court upheld the findings of the primary judge that the Sweet Rewards label as a whole was not deceptively similar to the trade mark registrations and did not pass off the malt balls as Maltesers or a Mars product. The Full Court dismissed the appeal with costs. This result was unsurprising given the differences in the trade marks and the product get up.