Mars Australia Pty Ltd v Delfi Chocolate Manufacturing

[2014] ATMO 113

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Mars Australia Pty Ltd to registration of trade mark application 1546597(30) - MALTITOS - filed in the name of Delfi Chocolate Manufacturing S.A.

Delegate:	Heath Wilson
Representation:	Opponent: Ross McLean of Baker & McKenzie. Applicant: Ed Heerey of Counsel instructed by Shyama Jayaswal of Minter Ellison.
Decision:	2014 ATMO 113 Opposition under section 52 of the Trade Marks Act 1995 – grounds of opposition pressed under sections 44 and 60 of the Act – trade marks are not deceptively similar – reputation considered – opposition established- trade mark refused registration.

Background

1. On 15 March 2013, Delfi Chocolate Manufacturing S.A. (‘the Applicant’) applied for the registration of a trade mark, the current details of which are set out below:

   Trade Mark No: 1546597

   Trade Mark: MALTITOS (‘the Trade Mark’)

   Convention Priority Date: 16 October 2012

   Specification of Goods:

   Class 30: Confectionery; biscuits; chocolate; cocoa; products made from or including chocolate and/or cocoa

   Endorsements: Convention priority claimed: 16 October 2012, Singapore, No. T1215392H in respect of CONFECTIONERY; BISCUITS; CHOCOLATE; COCOA; PRODUCTS MADE FROM OR INCLUDING CHOCOLATE AND/OR COCOA in class 30.

2. I also note that, on the same date, the Applicant filed trade mark no. 1546603: DELFI MALTITOS for identical goods to the above application. Trade mark no. 1546603 was initially opposed, that opposition was later withdrawn and that trade mark is now registered.

3. Trade Mark no. 1546597 was advertised as accepted in the Australian Official Journal of Trade Marks on 4 April 2013. On 4 July 2013, a notice of intention to oppose was filed by Mars Australia Pty Ltd (‘the Opponent’). The subsequent statement of grounds and particulars referred to sections 44 (listing trade mark nos. 247318, 517014, 789727, 1122880, 1244034 and 1297105), 60, 42(b) and 43 of the Trade Marks Act 1995 (‘the Act’).

4. A notice of intention to defend was subsequently filed. On 9 December 2013, the Opponent filed evidence in support comprising:

   ·     Declaration of Catherine Knight (Segment Leader Bite Size of the Opponent) made 9 December 2013 with Annexures (many of them confidential) CK-1 to CK-20.

5. The evidence in answer filed by the Applicant comprised:

   ·     Statutory declaration of Robert Cooper made 11 March 2014 with annexures RKC-1 and RKC-2.

6. The parties filed submissions in support of their respective arguments. The Opponent indicated the grounds of opposition that would be pressed at the hearing were those pursuant to sections 44 and 60 of the Act. As a delegate of the Registrar of Trade Marks I consider that the remaining particularised grounds have been abandoned.

7. I heard the parties in Canberra on 28 October 2014. The Applicant was represented in person by Ed Heerey of Counsel instructed by Shyama Jayaswal of Minter Ellison. Appearing in person for the Opponent was Ross McLean of Baker & McKenzie.

8. The majority of the hearing was occupied by discussion of the reputation in the Opponent’s trade marks and its relevance for the two grounds of opposition pursued.

9. The Opponent bears the onus of establishing its grounds of opposition, and it must do so on the balance of probabilities.[1] I will address both grounds of opposition in turn.

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663 at [6] to [26]; DC Comics v Cheqout Pty Ltd [2013] FCA 478 at [13].

Reasons

1. Section 44 of the Act relevantly provides:

44Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

1. Of the trade marks nominated in the statement of grounds and particulars, the Opponent argued that the Trade Mark was deceptively similar to the following ones for the purposes of section 44:

TM No.	Trade Mark	Priority Date	Class / Specification of Goods
247318	MALTESERS	30-3-1971	Class 30: Confectionery
517014	MALTESERS	14-8-1989	Class 30: Cereals in this class and cereal preparations in this class; non-medicated confectionery; pastries, cakes, biscuits; bread, pastry, chocolate, sauces (other than salad dressings); ices, ice-cream, edible ices and frozen confections; binding agents for ice cream and edible ices; natural or artificial ice for refreshment; powder for edible ices
789727	29-3-1999	Class 30: Rice, pasta; cereal and cereal preparations; tea, coffee, cocoa; coffee essences, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee; non-medicated confectionery; pastries, cakes, biscuits, ices, ice cream, ice cream products, frozen confections; chilled desserts, mousses, sorbets (ices); bread; pastry; sweet spreads, savoury spreads, snack foods, prepared meals, chocolate, chocolates, chocolate products, sauces including toppings for ice cream and desserts; pizzas, pizza bases; sauces and toppings for pizzas; sauces for pasta and rice; salad dressings; mayonnaise; dips; all included in Class 30 Endorsements: The applicant claims the colours RED, BLACK, WHITE, and BROWN as an essential element of the trade mark as depicted in the representation attached to the application form.*
1122880 (series)	10-7-2006	Class 30: Rice, pasta, cereals and cereal preparations, tea, coffee, cocoa, coffee essences, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee, non-medicated confectionery; bubble gum and chewing gum, pastries, cakes, biscuits, ices, ice cream, ice cream products, frozen confections, chilled desserts, mousses, sorbets (ices), bread, pastry, sweet spreads, savoury spreads, snack foods, prepared meals, sweet pies, chocolate, chocolates, chocolate products, sauces including toppings for ice cream and desserts, pizzas, pizza bases, sauces and toppings for pizzas, sauces for pasta and rice, salad dressings, mayonnaise, dips, all included in this class Endorsements: The applicant claims the colours combination RED, BROWN and YELLOW as an element of the first mark in the series as depicted in the representation attached to the application form.

1. The Opponent’s trade marks all have earlier priority dates and are registered for similar[2] goods to those in the Applicant’s specification. The Opponent did not argue that the Trade Mark was substantially identical with the Opponent’s trade marks, only that they were deceptively similar.

   [2] See the definition of ‘similar’ goods in section 14 of the Act.

2. Section 10 of the Act provides:

10Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. The relevant considerations for the question of whether two trade marks are deceptively similar, are stated in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[3]:

   [T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   [3] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

1. I will deal primarily with the Opponent’s trade marks comprising the word MALTESERS only. If the Trade Mark is not deceptively similar to the word MALTESERS solus, it follows that the Trade Mark is likewise not deceptively similar to the Opponent’s composite trade marks identified above. Before I turn to the issue of whether the words MALTESERS and MALTITOS are deceptively similar in relation to confectionery it is necessary to briefly say something about the notoriety and fame of the Opponent’s trade marks and the relevance of the issue for the doctrine of imperfect recollection[4] under section 44.

   [4] Aristoc Ltd. v. Rysta Ltd. (1945) AC 68 (p362).

2. In the decision of C A Henschke & Co v Rosemount Estates Pty Ltd[5] the Full Bench of the Federal Court found (my emphasis added):

   Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred. It is unnecessary, in order to decide this case, to go further.

   [5] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 [52].

3. The decision at first instance of Mars Australia Pty Ltd v Sweet Rewards Pty Ltd[6] indicated under the heading Deceptive similarity that reputation is generally irrelevant to the question of infringement:

   [H]owever, it is also accepted that if a particular word or words have 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].

   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 ofSweet 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. [Emphasis in bold]

   [6] Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606 [96-97] (Perram J) (‘Malt Balls decision’)

4. Consequently if “consumers generally must be taken to be familiar with” the Opponent’s trade marks they must be of the type of ubiquitous nature considered in the Woolworths[7] decision. As a result, it is arguable that the reputation in the Opponent’s trade marks affects the likelihood of confusion between the trade marks in question. The Full Federal Court on appeal to the above decision in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd[8] did not directly address the point of whether the primary judge was correct in taking into account the fame of the trade marks in assessing a consumer’s imperfect recollection of the trade marks. Importantly, the bench did not find the approach to that particular issue was incorrect.

   [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 45 IPR 411.

   [8] Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174 (Emmett, Bennett and Edmonds JJ).

5. I note that in the above decisions the “‘Malt Balls’ product was manufactured by Petra Food Ltd, Singapore and imported and distributed in Australia by Sweet Rewards Pty Limited”[9]. I further note Mrs Knight’s understanding (which has not been denied by the Applicant) that “the Applicant and Petra Food Ltd are related entities.”

   [9] Declaration of Catherine Knight at paragraphs 60-61.

6. In the current matter it is unnecessary to delve further into the detail of the notoriety issue because, for the following reasons, I find that MALTITOS and MALTESERS are not deceptively similar on a prima facie basis.

7. On a visual comparison, it is true that both words contain the identical prefix ‘Malt-’ and for the purposes of comparison the prefix of the trade mark has been found to be important. In London Lubricants (1920) Ltd’s Appn[10]:

   [T]he tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

   [10] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264, 279.

8. On the other hand, the fact that the common element ‘Malt-’ may be a reference to a flavor or ingredient of the goods is also relevant in that descriptive elements within a trade mark may be to some extent discounted in such a comparison. As in the decision of Broadhead’s Application[11]:

   [W]here you get a common denominator, you must, in looking at the competing formulae, pay much more regard to the parts of the formulae that are not common – although it does not flow from that (nor did the Assistant-Comptroller, as I read his decision, make it so appear) that you must treat the words as though the common part was not there at all.

   [11] Broadhead’s Application (1950) 67 RPC 215 per Evershed MR.

9. In the current matter, the descriptive element ‘MALT’ is clearly present but has been subsumed into the whole of the trade marks. The result is that the principle regarding descriptive elements within two trade marks is of less importance here. I also find that the facts are not analogous to cases such as Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[12] (‘RAIN KING’ and ‘RAINMASTER’). The Opponent’s trade marks do not feature the words “MALT TEASERS” but more akin to a portmanteau expression comprising the two words. Additionally, the Trade Mark cannot be divided into two separate recognizable English words (as ‘RAINMASTER’ can be). The result is that the identical prefix “Malt-” cannot be discounted in the same way as the word ‘CHOC’ may be in a trade mark such as CHOC CHILL[13] for chocolate flavoured drinks. Both MALTESERS and MALTITOS would be read and understood in their entirety.

   [12] (1952) 86 CLR 536, 539.

   [13] See PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602.

10. The suffixes of the trade marks are quite different from a visual and aural perspective. Mr McLean emphasised the likelihood of Australians slurring the termination of words such that the Trade Mark would be pronounced and heard as ‘Mal-teetas’. I find that to be an unlikely and unnatural pronunciation of the Trade Mark. The more likely pronunciation of the Trade Mark would be either ‘Mal-teetoss’ or “Mal-teetoes” (similar to the suffixes of ‘burritos’ or ‘mosquitoes’).

11. In addition to clear visual differences between the suffixes, I find that the required amount of slurring for the suffixes to sound similar would be unrealistic. I make this finding even taking into account the trade channels through which confectionery may be bought and sold, including sporting venues or busy movie theatres (where there is a possibility that the ending of the trade marks may be misheard). Generally speaking, a mere possibility should not override a sensible application of the relevant principles or an assessment of the use of the Trade Mark “in a normal and fair manner”.[14]

I accept that, comparatively speaking, confectionery (including chocolate products) is a fast-moving consumable and a great amount of care would not be taken in its purchase.  

[14] Re Smith Hayden and Company Limited’s Application (1946) 63 RPC 97 at 101.

1. Having said that, I am not persuaded by Mr Mclean’s argument that confectionery is often bought by the young and/or served to consumers by young and inexperienced store employees. That argument is premised on a number of assumptions. Confectionery is bought by people of all ages and young people purchasing or selling confectionery are not necessarily inexperienced and may in fact be more au fait with differences between confectionery brands. In addition, a young person with less money may take more care in selecting a desired confectionery product than an adult.  

2. Taking into account the entirety of the words MALTESERS and MALTITOS (and accepting that there are certain similarities) I find on an overall comparison that they are visually and aurally distinct. Despite the proportionately smaller amount of attention paid to purchasing consumable goods of this sort, I do not find there is a real and tangible danger[15] of deception or confusion likely to occur between the trade marks.

   [15] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 at 594-5 per Kitto J.

3. I further note that if the reputation in the MALTESERS trade marks were taken into consideration for the purposes of the Australian consumer’s imperfect recollection under section 44, any likelihood of deception or confusion between the trade marks would be further reduced.

4. I find that the ground of opposition under section 44 of the Act has not been established.

5. Section 60 of the Act provides:

60Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note:For priority date see section 12.

1. I have earlier highlighted the findings in the Federal Court from 2009 that the Opponent’s MALTESERS trade marks are “very famous” and “consumers generally must be taken to be familiar with them”.[16] This must also be the case as at the priority date of the Trade Mark, being 16 October 2012.

   [16] Malt Balls decision, above n 6.

1. At the outset, Mr Heerey conceded on behalf of the Applicant that the Opponent had demonstrated a reputation in its trade marks as at the priority date. The first element of section 60 having been satisfied, I will now address subsection 60(b) and whether the nature of the reputation is such that the use of the Trade Mark would be likely to deceive or cause confusion.

2. Mr Heerey argued that the familiarity of Australian consumers with MALTESERS coupled with the differences between the trade marks meant that the chances of confusion were insignificant.

3. I was not provided with any Australian judicial authority to support the proposition that an established reputation in a trade mark may work against an opponent under section 60. However, it has been said in a previous decision by a delegate of the Registrar of Trade Marks that:

   [T]he more widely recognised are those words seen to be its trade mark, the less likely is it that clearly different trade marks will be seen as denoting the same trade source.  Reputation can thus be a double-edged sword and may either reinforce or mitigate the effect of differences.[17]

   [17] Flight Centre Pty Ltd v World Flight Centre Pty Ltd [2003] ATMO 60 at [21].

4. Similar comments have been made in subsequent decisions by the Registrar.[18] It must follow from the wording of section 60 that the circumstances and nature of an opponent’s reputation in a trade mark may work for or against a likelihood of deception or confusion.

   [18] See, e.g., Intel Corp v Intelec Engineering Pty Ltd (2006) 69 IPR 602; [2006] ATMO 38; Ebay Incorporated v Ubay Pty Ltd [2009] ATMO 105; Nikon Corporation v Andrew Lovric [2014] ATMO 48.

5. For example, if it were assumed that an established reputation in another trade mark invariably led to deception or confusion if an applicant’s trade mark were used, section 60(b) of the Act would have no work to do. This would have been equally applicable for decisions made prior to the changes to section 60 by the Trade Marks Amendment Act 2006. The current section 60(b) clearly envisages other factors affecting the consideration including the similarity (or otherwise) of the trade marks, the similarity (or otherwise) of the goods/services and most importantly for this decision, the nature of the demonstrated reputation in the other trade mark.

6. Accordingly, I find that there may be limited instances where the reputation demonstrated can work against the likelihood of deception or confusion under section 60. This finding is made simply considering the scope and bare intention of the ground of opposition. The question before me is whether this applies in the current opposition. To answer this question I have taken into account the observations of the court and my own analysis of the Opponent’s evidence.  

7. Turning to the reputation demonstrated in the evidence, the declaration of Catherine Knight provides the history of the chocolate covered malt balls known as MALTESERS beginning in the United Kingdom in 1936. In about 1953, the MALTESERS product was introduced to Australia and has been in use here since that date.

8. The Opponent’s numerous trade marks have been registered in jurisdictions around the world. I note from the Australian trade mark registrations that most of the trade marks prominently feature the expression MALTESERS but there are some variations. For example, MALTEASTER (trade mark registration no. 1367930) is a variation on the Opponent’s brand specifically for products sold around Easter. Use of this trade mark is affirmed in exhibit CK-5 along with the product “Maltesers Easter Teasers”. The use of ‘MALTEASTER’ indicates a willingness on the Opponent’s part to extend the use of the brand in a playful manner and more importantly, condition a consumer purchasing the brand to see the relevant connection. There is likewise a possibility that the use of MALTITOS in a similar way (but within the scope of possible registration) would cause the consumer to assume a trade connection with the Opponent’s brand. 

9. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG[19]:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the `esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, `contra deals' and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

   [19] (1999) 47 IPR 423, 436.

10. Representative samples of product packaging in Australia have been provided from as early as 1989.[20] The expression MALTESERS is still prominent in that packaging but it is evident that the font and the general get-up of the product packaging have altered over time. The packaging includes the early tagline “Maltesers - Rhymes with Pleasers” which developed over time to “Nothing pleases like Maltesers” then “No Ordinary Chocolate”, and finally, “The Lighter Way to Enjoy Chocolate”.

    [20] Annexure CK-4 to the declaration of Catherine Knight.

11. The Opponent’s trade marks are extensively promoted in various media including point of sale material, television and cinema advertising, print advertisements and internet promotions. Apart from the malt ball covered in milk chocolate, the Opponent’s trade marks have been used in relation to malt balls covered in dark or white chocolate, on Easter eggs and Easter bunnies and ice cream desserts containing the MALTESERS product.

12. Examples of television commercials are also present in the evidence and cover the years 1996 to 2012. The so called ‘MALTESERS Moonlight Cinemas Campaign’ took place in 2005/2006 across Sydney, Melbourne, Brisbane, Adelaide and Perth. This outdoor campaign heavily promotes the Opponent’s brand with billboards, a variety of promotional material and free product samples all bearing the MALTESERS trade marks. The Moonlight Cinemas campaign also took place in 2007/2008 and 2013/14. 

13. In McCormick & Co Inc v McCormick[21] Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

    [21] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 127 (Kenny J).

14. The expenditure for 2009 to 2012 in relation to the Opponent’s point of sale material is claimed as confidential as are the overall sales and advertising figures for the products. In general terms, the total retail sales of the product and media expenditure are predictably impressive. Here, the Opponent has demonstrated a trade mark reputation which has both high sales and is held in high esteem due to its length of use and substantial exposure to the Australian public over a period of 60 years.

15. In relation to the Opponent being a “victim of its own success”, those comments in the Malt Balls decision were made in the context of a ‘passing off’ claim comparing the ‘get-up’ of the respective  chocolate confectionery containers. Perram J stated:

    The situation with the Delfi red jar is more complex but the result is likewise clear. Because the principal component in the Maltesers get-up is the word “Maltesers”, it is highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Malteser for a Malteser. In that sense, Mars is a victim of its own success.[22]

    [22] Malt Balls decision, above n 6 [32].

16. The court then indicated that there might be a source of confusion if the word “Mallesers” or “Maltballs” were used in the same script and style of the Maltesers label along with its other visual features. Those comments are a tacit acceptance that, despite the ubiquitous reputation of the Opponent’s trade marks, confusion is nevertheless possible in certain circumstances. In the current matter I am not considering any similarities between the get-up of the respective product packaging (beyond a notional and fair use of the Trade Mark).

17. Furthermore, the issue of deception or confusion I am considering is different in the sense that I am not comparing the Opponent’s trade marks to a descriptive expression such as “Malt Balls”. Both trade marks (‘MALTESERS’ and ‘MALTITOS’) are invented terms. While I have found that they are not deceptively similar, I am satisfied that there is some level of similarity[23] between the Trade Mark and the Opponent’s trade marks.

    [23] A relevant consideration for section 60: see Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5.

18. If the Applicant were to use the same script and style of packaging on their MALTITOS product (which would be within the scope of a registration of this application) I find that a real and tangible danger of deception or confusion would be likely to occur. In other words, a substantial number of persons likely to be concerned in the purchasing of the goods would “either infer that the goods have come from the same source or at least be caused to wonder whether that result might not be so.”[24]

    [24] Kendall Company v. Mulsyn Paint and Chemicals [1963] HCA 1; (1963) 109 CLR 300 at 305 (Kitto J)

19. In the current matter, I am satisfied that the reputation demonstrated by the Opponent would reduce rather than reinforce the effect of the differences between the trade marks.

20. The deception or confusion would arise from the demonstrated reputation in the Opponent’s trade mark taking into account both the extent of use and the way that reputation has been established in Australia. I find that the ground of opposition under section 60 of the Act has been established.

Decision

1. Section 55 of the Act relevantly provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:For limitations see section 6.

1. The Opponent has established a ground of opposition under the Act. As a result, the Applicant is unsuccessful in this matter and I refuse to register trade mark application no. 1546597.

Costs

1. As the Opponent has been successful in this matter, it is entitled to costs, which I award against the Applicant as per the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson
Hearing Officer
Trade Marks Hearings & Oppositions
4 December 2014