Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd [2015] FCA 1065

Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd [2015] FCA 1065

The applicant's trade mark 'MALTITOS' is neither deceptively similar to the respondent's mark 'MALTESERS' nor likely to deceive or cause confusion, even considering the reputation of the respondent's mark. The visual and aural distinctions between the marks prevent confusion. The high reputation of 'MALTESERS' makes it more likely that consumers would readily distinguish between the two marks. The appeal succeeds and the applicant's mark is entitled to registration.

Parties
Applicant: Delfi Chocolate Manufacturing S.A.; Respondent: Mars Australia Pty Ltd
Jurisdiction
Australia
Judgment Date
01 October 2015
Procedural Posture
Appeal From the Registrar of Trade Marks Decision / Judgment Following Hearing De Novo
Outcome
Appeal allowed; cross-appeal dismissed.
Legal Topics
Trade Marks, Deceptive Similarity, Reputation, Trade Marks Act 1995, Opposition to Registration
Intellectual Property Trade Marks Deceptive Similarity Reputation Trade Marks Act 1995 Opposition to Registration

Case Brief

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Parties

Delfi Chocolate Manufacturing S.A.

Applicant

Mars Australia Pty Ltd

Respondent

Procedural Posture

Appeal From the Registrar of Trade Marks Decision / Judgment Following Hearing De Novo

Legal Issues

  1. 1 Whether the applicant's trade mark 'MALTITOS' is deceptively similar to the respondent's mark 'MALTESERS' under s 44(1) of the Trade Marks Act 1995
  2. 2 Whether the applicant's trade mark is likely to deceive or cause confusion because of the reputation of the respondent's mark under s 60 of the Trade Marks Act 1995

Ratio Decidendi

The applicant's trade mark 'MALTITOS' is neither deceptively similar to the respondent's mark 'MALTESERS' nor likely to deceive or cause confusion, even considering the reputation of the respondent's mark. The visual and aural distinctions between the marks prevent confusion. The high reputation of 'MALTESERS' makes it more likely that consumers would readily distinguish between the two marks. The appeal succeeds and the applicant's mark is entitled to registration.

Court Disposition

Appeal allowed; cross-appeal dismissed.

Orders

  • The appeal be allowed.
  • The decisions of the delegate of the Registrar of Trade Marks made on 4 December 2014 to refuse trade mark application No. 1546597 and to award costs in favour of the respondent be set aside.