Forrest Gump was right. ‘Life is like a box of chocolates – you never know what you’re going to get!’ In the intellectual property game this is especially true for the chocolate industry and big brand names such as Mars, Cadbury and Sweet Rewards.

Mars Australia, in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606 has recently filed an infringement suit alleging Sweet Reward’s packaging of its chocolate malt balls are confusing and misleading consumers. Mars has also claimed a passing off suit against Sweet Rewards. It also alleges infringement of two registered packaging trade marks for Maltesers.

The claim was dismissed by both the Federal Court at first instance and soon after by the Full Federal Court.

Perram J. of the Federal Court of Australia echoed a simple test, placing reliance upon consumer perception that it was”unlikely that an 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.”

The Full Federal Court, in dismissing the appeal brought by Mars, held that using similar packaging and pictures in the same industry was commonplace. However, this decision has been criticized for its simplicity in overseeing the efforts and resources which are invested by brand owners in creating their brand image.

Rhonda Steele, Marketing Property Manager of MARS Bars, for Asia and Australia shares some wisdom with competitors. She states that, ‘to adequately protect your intellectual property rights it's very important to do your thinking early and to conduct thorough searches - both of the trade marks register and the market place - so that you can be confident of launching your new product without fear of infringing someone else's rights.'

Rhonda further asserts that this might be more problematic for small companies. Prior to registering a mark and securing your intellectual rights, a substantial sum of money is invested in product development and package design. If it is found that a new product violates prior rights, these resources are then unfortunately wasted.

However, this is not the end of the saga. Once a mark is registered, what follows identifies the survival and success of the company and its rights.

In contrast, interestingly enough, Cadbury and Darrell Lea, faced with a similar dispute over trade mark branding and imaging in a passing off case, have settled their differences over the colour purple.

No longer is a device, name, or actual product the only important considerations in this battleground. Colour too is involved. Cadbury has six colour trade marks registered. The realm of intellectual property rights are sophisticated enough to warrant such registrations. Where does it end?

These controversies show that the outcome is not always predictable. Mars has been marketing Maltesers since 1989 and Sweet Rewards has introduced Malt Balls in 2005. It is also not always the case that the earlier mark holder will receive more protection and patronage from its market.

Whilst it is safe to assume that every consumer loves chocolate, what goes on behind the scenes is not as lovable, calories aside. Consumers have the luxury of choice. It is their very choice and perception of these brands, along with statutory authorities and rules governing this area of the law, which make a difference at the end of these intellectual property disputes.