Mars had claimed that the packaging and the name of 'Malt Balls' from competitor Sweet Rewards of represented passing off, misleading conduct, false representations and infringement of trade marks regarding its 'Maltesers' mark. Perram J, in the court of first instance, was unconvinced.
In a judgement that cited standard cases such as Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302, Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212, Reckitt & Colman Products Ltd v Borden Inc (1990) 17 IPR 1 and
TGI Friday's Australia Pty Ltd v TGI Friday's Inc (1999) 45 IPR 43 Perram noted that "The marketing of Maltesers is a serious business reflecting the very large revenues at stake in the bite-size confectionary market in this country".
Mars criticised packaging of the 'Malt Balls' in jars with red and orange labels, claiming that -
first ... their distribution is unlawful because, broadly speaking, the jars wrongly suggest a connexion between the Malt Balls product and the Maltesers product which does not exist; secondly ... both jars represent to consumers that their contents are the same as Maltesers when, in fact, they are not; thirdly ... the use on the jars of a label with floating chocolate balls, some of which are sliced through showing a yellow filling, misleadingly suggests to consumers much the same thing; finally ... the jars infringe two registered trade marks owned by it.In dismissing an appeal the court agreed that Maltesers are so well-known that consumers would not confuse the two products.
The judgement from earlier thgis year is worth reading for Perram's dry wit, some of the explanations ("During a slow part of the trial" one witness testified that a particular label was chosen because the others were "hideous"), and discovery of marketing of a chocolate-covered lentil with the name Cha-Cha. Beats chocolate-covered ants and cockroaches but I do hope that no-one is planning to give me a jar of chocky lentils for Christmas.
