Sweet Rewards – but not for Mars’ Maltesers

The Federal Court has unanimously dismissed an appeal by Mars Australia against Sweet Rewards over infringement claims.

The Full Court agreed with the trial judge that the packaging of Sweet Rewards’ chocolate coated malt ball product would not mislead consumers.

In 2007, Mars sued Sweet Rewards, which is an Australian distributor and supplier of chocolate confectionery products, alleging that two packaging variants of a chocolate coated malt ball product called “Malt Balls” infringed Mars’ rights.

Mars claimed that Sweet Rewards’ packaging infringed two Maltesers packaging registered trade marks, and constituted passing off and misleading and deceptive conduct.

Earlier this year, Justice Perram dismissed Mars’ application in its entirety, and awarded costs to Sweet Rewards however Mars appealed that decision to the Full Court of the Federal Court and the appeal was heard in Sydney in November.

In a decision handed down Friday, the Full Court unanimously dismissed Mars appeal in its entirety.

In doing so, the Full Court agreed with Justice Perram’s view that the distinguishing feature of the Maltesers product packaging trade marks is the word “Maltesers”.

The Court found that the other features of the packaging trade marks, namely the colour red and the depiction of the product in cross-section, are commonly used on confectionery packaging and therefore do not distinguish Maltesers from other confectionery products.

The absence of the word “Maltesers” in the Malt Balls product packaging was therefore critical in the Court concluding that the Malt Balls product packaging did not infringe Mars’ rights.

The Full Court also agreed with Justice Perram that use of the words “Malt Balls” on the Malt Balls product packaging was descriptive and did not constitute use as a trade mark.

The only feature of the Malt Balls packaging used as a trade mark was the “Delfi” brand, and that was the distinguishing feature of the packaging.

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