A recent decision in Australia highlights the growing trend in trademark infringement litigation towards defending well-known brands against ‘own brand’ look-alikes being sold in supermarkets.
This practice has been going on for some time and involves producing goods in the same market as very well-known brands, and offering them for sale in very similar packaging to that used by those brands.
Of course, these brands are usually protected by a trademark registration and therefore their owners have the right to prevent the use of indicia associated with their trademark where that use is liable to mislead the public as to believing that the goods or services in question originated from them.
The present case (Mars Australia v Sweet Rewards [2009] FCA 606) involved the company responsible for manufacturing and selling ‘Maltesers’, a famous brand of confectionary. They were suing a company for trademark infringement and passing off in respect of a similar chocolate malt ball product that it was marketing called ‘Malt Balls’.
The claimant alleged that as ‘Malt Balls’ were marketed using packaging that was very similar to the packaging used by Maltesers, the product infringed its trademark registration, and constituted passing off and misleading conduct.
The Court disagreed however. It took the view that the distinguishing feature of the claimant’s trademark registration was the word Maltesers (in other words, customers would assume that confectionary under the brand name Maltesers originated from the claimant), and not the packaging used. As the defendant had not used the name Maltesers anywhere on its product, it could not be considered to be infringing the claimant’s trademark.