Malt trade mark teasers – the lighter way to enjoy chocolate

The Federal Court of Australia has allowed Delfi Chocolate Manufacturing S.A.’s appeal of the opposition to its MALTITOS trade mark application by Mars Australia Pty Ltd.

The MALTITOS trade mark was filed by Delfi Chocolate in Class 30 for ‘Confectionery; biscuits; chocolate; cocoa; products made from or including chocolate and/or cocoa’. Mars successfully opposed the application in December before the delegate of the Registrar of Trade Marks based on section 60 of the Trade Marks Act 1995 (Cth), being that Mars’ MALTESERS trade mark had acquired a reputation in Australia, and because of that reputation, the use of MALTITOS by Delfi Chocolate would be likely to deceive or cause confusion (see Mars Australia Pty Ltd v Delfi Chocolate Manufacturing [2014] ATMO 113).

As a hearing de novo, Justice Jessup was asked to consider both of Mars’ grounds of opposition, being sections 44(1)(a) and 60 of the Act.

Section 44 – deceptively similar?

Mars did not attempt to argue that MALTITOS and MALTESERS were substantially identical. In relation to deceptive similarity, Mars’ factual evidence was confined to confectionery, and attempted to show how confusing MALTITOS could be if the mark was used on confectionery in the same lettering, font and colour as MALTESERS. Justice Jessup considered potential get-up to be irrelevant where the application concerned is an unstylised word mark.

While His Honour had no difficulty in accepting Delfi Chocolate’s extensive linguistic expert evidence, Justice Jessup was already ‘unpersuaded’ as a ‘lay person’ that in light of the ‘limited similarities’ between the two marks, it would even enter the head of the notional consumer that MALTITOS was derived from the same source of origin as MALTESERS. This was particularly so in the context in which confectionery is sold, including where consumers make their own selection from display racks. As such, this ground of opposition failed.

Section 60 – overindulging in reputation

Delfi Chocolate accepted Mars’ MALTESERS trade mark satisfied the threshold requirement for section 60 of having acquired a reputation in Australia before the priority date for the MALTITOS application. This left the Court to consider whether, because of the extent of MALTESERS’ reputation, the use of MALTITOS would be likely to deceive or cause confusion.

Justice Jessup held that as MALTESERS is registered, the only respect in which applying section 60 requires a different exercise to section 44(1) is that MALTESERS reputation in Australia must be the reason why the use of MALTITOS is likely to deceive or cause confusion.

In this scenario, the notional consumer is assumed to have a level of awareness of MALTESERS consistent with the extent of evidence of reputation. Justice Jessup found that MALTESERS ‘is strongly embedded in the consciousness of many of those of average intelligence’, and has ‘a very widespread, solid reputation in the area of packaged confectionary’.

However, His Honour did not consider that this would make it more likely that the notional consumer would cause to wonder if MALTITOS and MALTESERS were from the same source. In fact, the strength of MALTESERS reputation actually meant consumers would be less likely to be deceived or confused. This ground of opposition also failed, and Delfi Chocolate’s appeal was successful. The only question left to be answered is will Mars go back for more? It has 21 days to appeal the decision.