Mars fails to prevent registration of MALTITOS based on its MALTESERS mark

Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd ([2015] FCA 1065) was an appeal to the Federal Court from a decision of the registrar of trademarks refusing registration of the trademark MALTITOS in respect of "confectionery; biscuits; chocolate; cocoa; products made from or including chocolate and/or cocoa", on the ground that the use of the mark would be likely to deceive or cause confusion because of the reputation in Australia of Mars' trademark MALTESERS in respect of similar goods, and a cross-appeal by Mars against the delegate's finding that the marks were not deceptively similar. The matter proceeded as a hearing de novo.

An interesting aspect of the case is the extent to which the judge referred to the evidence of Associate Professor Felicity Cox, from the Department of Linguistics at Macquarie University, in which she analysed and contrasted the linguistic elements of the two marks. It is also important for the way in which the court considered the effect of the strong reputation of the MALTESERS mark on whether or not use of the MALTITOS mark was likely to deceive or cause confusion.

Section 44(1) of the Trademarks Act provides that an application for registration of a trademark may be opposed on the ground that it is substantially identical or deceptively similar to another registered or pending mark, in respect of similar goods, having an earlier priority date. For the purposes of the act, a trademark is taken to be deceptively similar to another trademark if it so nearly resembles the other trademark that it is likely to deceive or cause confusion. To satisfy that test, it is necessary to show that there is a real tangible danger of deception or confusion rather than a mere possibility. It is sufficient to show that an ordinary person may entertain a reasonable doubt as to whether the respective products derive from the same source. For the purposes of Section 44(1), those questions are to be determined by reference to the marks themselves and the circumstances in the trade in the respective goods and do not take into account factors relating to the actual manner of use of the marks which might be relevant in, for example, an action for passing off.

Professor Cox's evidence discussed the differences between the 't' and 'z' sounds in the second syllables of each mark and the 'o' and 'e' sounds in the third, and the effect they would have on the recognition of the marks and on signalling a difference of meaning. The judge noted that the respondent did not challenge the substance or the sense of the evidence of Professor Cox and said:

"Although I am not competent to engage with her in her field of technical expertise, what she said in the passages set out above closely aligns with what I, relevantly a layperson, would hold to be the aural impressions generated in the ear of someone who, having some familiarity with the respondent's mark, encounters the applicant's mark for the first time. All I need to add is the conclusion that, considered as words, there is not, in my view, such a close aural resemblance between the two marks as would be likely to cause confusion."

In considering the ground of opposition under Section 60 of the act, the court pointed out that Section 60 was generally applicable and did not require that the mark applied for be substantially identical or deceptively similar to the earlier mark. What was required to be shown was that the earlier mark had a reputation in Australia and because of that reputation the use of the second mark would be likely to deceive or cause confusion (ie, the existence of the reputation must be the reason why deception or confusion would be likely).

In the opinion of the court, the reputation of the MALTESERS mark in the Australian market was so strong that in fact it militated against a likelihood of confusion. The court found: 

"The respondent's mark is strongly embedded in the consciousness of many of those of average intelligence whose circumstances provide the template for the notional consumer of confectionery with which I must be concerned".

The judge went on to conclude:

"Indeed, with a stronger awareness of the respondent's mark, I consider that such a consumer would be immediately struck by the differences between the two marks, as discussed above. He or she may observe the limited similarities between the marks and, because the subject of the presumptive interest would be confectionery, may assume that the products were of the same nature as those sold under the respondent's mark, but, giving the matter a moment's reflection, would readily conclude that those products were not Maltesers. As I say, the strong reputation of the respondent's mark would, if anything, make that conclusion a more likely one."

The court therefore allowed the appeal, dismissed the cross-appeal and ordered that the MALTITOS mark proceed to registration.

The decision of the court was subject to appeal to the Full Court but only with the leave of the court. The time for filing an application for leave has not yet expired.

Des Ryan, Davies Collison Cave, Melbourne