Double Take

Owners of brands such as Nutrient Water, Red Bull, Fiji Water and Twisties have taken litigation against “look-alike” products.  A recent decision considers what constitutes trade mark infringement, passing off, and/or misleading or deceptive conduct in relation to the packaging of such “look-alike” goods.

What You Need to Know

• The fact that two products use similar designs, layout and colours is not, in itself, sufficient to establish passing off and/or misleading and deceptive conduct in breach of the Trade Practices Act.
• If a trade mark used on the packaging of goods becomes well known, the absence of the trade mark on the allegedly infringing goods may mitigate against a finding of passing off and/or misleading or deceptive conduct.
• Other mitigating factors include different visual features on the other traders’ packaging, particularly if that other trader is using a distinctive trade mark.
• In order to determine whether there has been infringement of a registered trade mark, a comparison will be made between what has been used as a trade mark on the allegedly infringing goods and the distinguishing features of the registered trade mark.

The Facts

Mars Australia Pty Limited (Mars) manufactures and sells a well-known confectionary consisting of chocolate covered malt balls under the name Maltesers, and is the registered owner of the Maltesers mark.

Mars sued Sweet Rewards alleging that Sweet Rewards packaging of its chocolate malt ball product called ‘Malt Balls’ infringed its trade marks and constituted passing off and misleading and deceptive conduct. 

Mars’ claims were dismissed, and it appealed the decision. 

The Decision

The full court dismissed Mars’ appeal.

Trade Mark Infringement

The Court found that the words ‘Malt Balls’ were being used to describe the goods, and the only feature of Sweet Rewards’ packaging being used as a trade mark was ‘Delfi’.  As a result, the relevant comparison was between Mars’ trade marks and ‘Delfi’.  Not surprisingly, the Court concluded that these marks were not similar.

Mars had also claimed that the overall impression of Sweet Rewards’ packaging was similar to its trade marks due to the presence of the same features.  The Court concluded that the distinguishing feature of Mars’ trade marks was the word Maltesers, which was not present in the Sweet Rewards packaging. 
 
As a result, the Court found that was no infringement of Mars’ trade marks. 

Passing off and Misleading or Deceptive Conduct

The Court decided that the distinguishing feature of the Mars packaging was the word Maltesers.  Other features, such as the red colour and pictures of the malt balls product, were not distinguishing features due to evidence having been produced that they commonly used in confectionary packaging.  As a result, it was unlikely that consumers would mistake chocolate covered malt balls which were not named Maltesers to be Mars’ goods.  Mars therefore appears to have been a ‘victim of its own success’.

Also taken into account in the Courts decision was that the use of the trade mark Delfi by Sweet Rewards contributed to consumers being unlikely to be misled or deceived into believing that the Sweet Rewards goods originated from Mars.
 
As a result the Court found that there was no misleading or deceptive conduct.

Supermarket Home Brand Look-Alike Goods

In order to counter the threat posed by look-alike or supermarket home brand goods,  brand owners should choose distinctive trade marks and packaging which are not commonplace, and police the marketplace to ensure that they do not become so.  If one look-alike product is allowed, others may follow which could mean that the brand owner is then powerless to stop them.  

Home brand owners should also seek to differentiate their brands from those in the marketplace, incorporating their own brand image and leaving aside generic and descriptive names and instead devising sub-brand names and their own distinctive get-up.  If home brand owners develop products which imitate brand owners, they may sully their own reputation rather than protecting their own brands to prevent others then copying once they prove successful.

As brand owners very often supply their products to supermarkets to be available for purchase by their customers, each choosing distinctive packaging for their respective goods could be the most commercial approach.

For further information, contact: Tara Parkes, Trade Marks Professional, tara.parkes@griffithhack.com.au or Chris Sgourakis, Principal, chris.sgourakis@griffithhack.com.au

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