Federal Court of Australia
FEDERAL COURT OF AUSTRALIA
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174
INTELLECTUAL PROPERTY – passing off – misleading and deceptive conduct – trade mark infringement – use as a trade mark – distinguishing features of the Maltesers get-up and trade marks – features commonplace in confectionary packaging – deceptive similarity – imperfect recollection – descriptive words Trade Marks Act 1995 (Cth) ss 10, 17, 120(1) Trade Practices Act 1974 (Cth) ss 52, 53 Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 referred to Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 affirmed MARS AUSTRALIA PTY LTD v SWEET REWARDS PTY LTD
NSD 620 of 2009
EMMETT, BENNETT AND EDMONDS JJ
11 DECEMBER 2009
SYDNEY IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY NSD 620 of 2009
general division
ON APPEAL FROM THE FEDERAL COURT
BETWEEN: MARS AUSTRALIA PTY LTD
Appellant
AND: SWEET REWARDS PTY LTD
Respondent
JUDGES: EMMETT, BENNETT AND EDMONDS JJ
DATE OF ORDER: 11 DECEMBER 2009
WHERE MADE: SYDNEY
THE COURT ORDERS THAT:
1. The appeal be dismissed. 2. The appellant pay the respondent's costs of the appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using eSearch on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY NSD 620 of 2009
general division
ON APPEAL FROM THE FEDERAL COURT
BETWEEN: MARS AUSTRALIA PTY LTD
Appellant
AND: SWEET REWARDS PTY LTD
Respondent
JUDGES: EMMETT, BENNETT AND EDMONDS JJ
DATE: 11 DECEMBER 2009
PLACE: SYDNEY
REASONS FOR JUDGMENT
the court:
INTRODUCTION 1 The appellant, Mars Australia Pty Limited (Mars), manufactures, distributes, markets and sells in Australia a well-known confectionary consisting of chocolate covered malt balls under the name Maltesers. Mars is the registered proprietor of two trade marks which it uses in connection with Maltesers. This appeal is concerned with alleged infringement of those trade marks, passing off and misleading and deceptive conduct on the part of the respondent, Sweet Rewards Pty Limited (Sweet Rewards), in connection with the distribution and sale in Australia by Sweet Rewards of a chocolate covered malt ball product. 2 Mars commenced a proceeding in the Court seeking injunctive relief and damages and other relief against Sweet Rewards. Mars contended that Sweet Rewards, by distribution and sale of its chocolate covered malt ball product: · infringed the trade marks; · signified and represented to consumers and traders that its product is associated with Maltesers, originates from the same source or origin as Maltesers and is associated with the source or origin of Maltesers; · represented to consumers and traders that its product is associated with or has the endorsement, approval, sponsorship or licence of Mars; represents to consumers and traders that its product is made from the same ingredients as Maltesers, is made to the same recipe as Maltesers and provides the same taste and other sensory experience as Maltesers when eaten. The primary judge rejected each of the allegations. On 5 June 2009, for reasons then given, his Honour dismissed the proceeding with costs (Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354). Mars now appeals from those orders. 3 It is not in dispute that Maltesers are a famous product and that Mars' registered trade marks are famous marks. There is no dispute that Mars has acquired a reputation in the get-up of the Maltesers packaging. The packaging under which the product is sold is: 4 Mars' registered trade mark 789727 appears as follows: 5 Its registered trade mark 1122880 is a series mark which appears as follows: The second in the series is not in a specified colour and is to be taken to be registered for all colours (s 70(3) of the Trade Marks Act 1995 (Cth) (the Act)). 6 Since about the middle of 2005, Sweet Rewards has distributed a chocolate covered malt ball product, principally through Target and Kmart and a number of other discount stores. Its product is marketed in a plastic jar that has a label with the following characteristics and elements: · a red background; · the word "Delfi" on the top front centre of the label; · a logo consisting of a picture of a skier in a circle to the left of the word "Delfi"; · pictorial representations of the product in the form of images of floating brown balls with some in cross section showing a bright yellow filling; · the words "Malt Balls" written in a bold script that covers only a small portion of the label. 7 The packaging in which the Sweet Rewards product is sold is: 8 The primary judge considered Sweet Rewards' packaging in red and orange jars. For the purposes of the appeal, only the red jar need be considered.
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