Mars Fail To Get Up In Get-Up Case: Maltesers Rolled Down The Aisle And Out Of Court

First published in the August 2009 edition of the Lexis

Nexis Australian Intellectual Property Law Bulletin Maltesers were

declared by the primary judge, Perram J, in the recent Federal

Court decision Mars Australia Pty Ltd –v– Sweet

Rewards Pty Ltd [2009] FCA 606; BC200904981 to be a "victim of

their own success".1 His Honour dismissed the

applicant's claims for passing off, misleading and deceptive

conduct, false representations and trade mark infringement in a

recent get-up case against the importers and distributors of the

descriptively named "Malt Balls" sold in plastic jars in

Target and Kmart in 2005 and 2006 .

In practice

Ironically, the more well known your clients' get-up is,

the more trouble they may have succeeding in a get-up case, owing

to the impact that fame will have in assessing the nature of the

consumer's imperfect recollection.2 That fame should

so influence the court in the application of this doctrine is

controversial,3 but perhaps understandable.

This case also stands for the proposition that (as in the

Cheezy Twists –v– Twisties

case4 ) where the products are low-cost consumer goods,

even though they are likely to be sold on a self-service basis, the

aural similarity or dissimilarity of the two product names will

nevertheless be significant in the court's assessment of

deceptive similarity.

Composite trade marks comprising the get-up of a product have

their place, but will not necessarily deliver success in cases

where there is no evidence of intention to copy, and particularly

when an alternative brand is used on the allegedly infringing

get-up.

Background

A picture tells a thousand words – particularly in a

get-up case, so here are pictures of the three products the subject

of these proceedings:

The well-known Mars product

The offending products

Jar A was sold in Target and other discount stores and jar B was

sold in Kmart, because when asked to approve the original jar A

get-up Target replied that it wished its products to be

distinguishable from Kmart products.

Importantly, the court found no evidence of intention on the

part of the respondent to appropriate Mars's goodwill in its

Maltesers product. The fact that these products had been sold

previously by the respondent as Choc a Block Malt Balls and

Satellite Malt Balls in packet or pouch packaging similar to

Maltesers packaging, showing similar illustrations on the packaging

of floating chocolate balls, seems to have been significant in the

court's conclusions in this regard.

Below are pictures of the Choc a Block and Satellite

products:

There is no question that enthusiastic consumers of bite-size

chocolate confectionary such as the products pictured above know

their Maltesers in the same way other people know their marbles.

After all, we've been eating them (Maltesers, not marbles) in

Australia for more than 55 years.

Passing off and Trade Practices Act...