Mars Australia Pty Ltd v Sweet Rewards Pty Ltd

When is general reputation relevant to the question of trade mark infringement?

96. It is likewise established that, generally, reputation is irrelevant to the question of infringement. Despite the apparent breath of that proposition, however, it is also accepted that if a particular word or words has come to signify exclusively the goods of the proprietor of a mark (the mark including those words) then the use of that or those words by another would be an infringement. No doubt this involves some apparent departure from the general principle that reputation is irrelevant but it is sanctioned by authority: Crazy Ron’s at 232 [88]-[89]. A corollary appears to be that in assessing the notion of a consumer’s imperfect recollection of a mark, the fact that a mark is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and its use in relation to particular goods or services is a relevant consideration: Crazy Ron’s at 232-233 [90].
97. The application of these principles is, so it seems to me, relatively straightforward. The Maltesers marks are very famous. Consumers generally must be taken to be familiar with them. That is relevant to assessing a consumer’s imperfect recollection of the mark. So viewed, a comparison between the impression held in the consumer’s mind and the direct impression of Sweet Rewards’ mark is one which, in this case at least, occurs in a context in which the chances of the average consumer having forgotten the Maltesers mark are vanishingly small.
98. So too, an aural examination leads to the same result. “Maltesers” does not sound like “Malt Balls”. In particular, the pronunciation is phonetically different: “mal-tesers” is syllabically distinct from “malt balls”. I do not think that the colour red would cause confusion but even if there was such a risk such risk is clearly overcome by the effect of the other matters to which I have referred. My conclusions are therefore that:

(a) the trade mark used by Sweet Rewards was the Delfi mark so that Mars’ claim fails;

(b) even if the trade mark use by Sweet Rewards were as Mars alleges, consumers are so familiar with Maltesers that they could not possibly be confused by the Malt Balls packaging – more formally, there is no likelihood of imperfect recollection by them of the Maltesers mark leading to confusion; and

(c) that conclusion is assisted by an aural consideration.

Disposition

99. It follows that none of the applicant’s claims have been made good. The application should be dismissed with costs.