Trade Marks Office tells Marquis Macadamia to get in the bowl

What you need to know

• The Australian Trade Marks Office refused Marquis Macadamia's MM Logo trade mark application on the basis that it was deceptively similar to Mars Australia's pre-existing registrations for M&M'S.  

What you need to do

• Before filing a trade mark application, consider the markets where the mark may be used and undertake searches of the relevant trade mark registers to identify any trade marks which may block your trade mark application, or have the potential to raise commercial concerns from competitors.

Marquis Macadamias Ltd, the world’s largest macadamia grower, processor and marketer, filed trade mark applications 2026493 for   and 2026495 for   . 

The applications cover goods in classes 29, 30 and 31 including confectionery, confectionery bars, chocolate coated macadamia nuts, chocolate coated nuts among others.  

While no prior mark citations had been raised at examination stage, the applications were opposed by Mars Australia Pty Ltd on the basis of a number of its registered marks for M&M'S, including Australian Trade Mark Nos 596268, 774539, 809637, 963042, 1896918 and 1896935.  

The Delegate ultimately refused to register the   mark, while the    mark proceeded to registration, for the below reasons.

Section 44 – Deceptive similarity

The Delegate found that the   (MM mark) was deceptively similar to Mars Australia's M&M marks.  

She reasoned that in her comparison between the marks, there were more similarities between the marks than there were differences. 

The Delegate disagreed with Marquis Macadamias that the average consumer would see the mark as a "crown device".  She noted that the MM mark and the M&M's marks both contained two letter "M"s as the main feature of the mark and that consumers would vocalise the two marks in the same way.  

The Delegate addressed the addition of the "-s" suffix in the M&M's marks and noted that this element did not detract from the double "M" being applied to chocolate covered nuts and similar goods.  When the marks were imperfectly recalled, the Delegate considered that the public would likely believe that goods branded with the trade marks emanate from the same trade source.

In contrast, when comparing the   (MM Marquis mark) with the M&M's marks, the Delegate was satisfied that the average consumer would focus on the word MARQUIS, as opposed to the smaller "MM", as it was the most prominent and striking feature of the mark.  On the basis of visual and oral differences, the Delegate found that the MM Marquis mark was not deceptively similar to the M&M's marks.

Section 60 – Reputation 

Mars Australia unsuccessfully attempted to argue that based on its reputation in relation to its M&M's confectionery goods, the MM Marquis mark should be refused as it would be likely to deceive or cause confusion. 

Although Mars Australia's reputation in M&M's was not disputed, the Delegate focussed again on the MARQUIS word element, which has a distinct meaning by itself, as the distinguishing feature of the mark.

Section 42(b) – Contrary to law

Having found that the MM Marquis mark was not likely to deceive or confuse under section 60, the Delegate reasoned that the mark was therefore not likely to mislead or deceive nor did it constitute a false representation under the stricter tests in the Australian Consumer Law.  

Section 62A – Bad faith  

The Delegate found that the evidence before her did not support the assertions that the MM Marquis mark had been applied for in bad faith.  She determined that, while Marquis Macadamia and Mars may operate in the same marketplace, no evidence suggested that the M&M's marks had any bearing on the choice of the MM Marquis mark.  

The Delegate accepted Marquis Macadamia's evidence that an external marketing agency had been engaged to develop the new name and logo and that the two capital "M"s were used to capture the initials of both of the Applicant's former company names (Marquis Macadamias and Marquis Marketing).

Court action

Marquis Macadamia appealed the decision in relation to the MM Mark to the Federal Court.  However, that action was settled on 10 March 2022.  

Orders were made by the Court by consent that allowed the registration of the MM Mark with a narrowed specification of the class 30 goods.  The narrower specification listed the kinds of coated nuts sold under the mark, excluded chocolate coated nuts and also excluded other chocolate coated spreads containing nuts and chocolate related products.

Authors: Kellech Smith, Partner and Nikkie Xu, Lawyer.