Case: Reckitt &amp; Colman Products Ltd v Borden Inc (1987) 10 IPR 21
Outcome: referred to
identification of a trade reputation and the discernment of the features of a product in which that reputation inheres may be proved in a number of ways. In Reckitt &amp; Colman Products Ltd v Bordern Inc (1987) 10 IPR 21 Walton J received detailed evidence about the reputation and get-up of Jif lemon juice. That material consisted of evidence from brand specialists as well as evidence about the reactions of randomly selected shoppers to the brands in question. In this case the evidence about the reputation of Maltesers and the elements of the packaging in which that reputation was said to inhere was more indirect. It came principally from Mr West who gave evidence for Mars. Mr West is the general manager of Mars Snackfood Australia which is the division within Mars responsible for its business of manufacturing, distributing, marketing and selling snack foods in Australia. In this context, snack food means chocolate confectionary. Mr West has an extensive background in the marketing of such items. He gave evidence about the manner in which the Maltesers products have been marketed. However, this evidence was of little assistance in determining which elements of the Maltesers packaging were the ones that, in the public mind, had a reputation. Mr West did give evidence that the manner in which the Maltesers products were marketed was strictly controlled which suggests, at least, that Mars believes a reputation inheres in the packaging. He referred to a document generated within the Mars group which provided very precise guidelines on the use of the Maltesers brand. This document, entitled "Maltesers Guidelines", was prepared in consultation with Mars' advertising agencies, Brandhouse WTS, AMV BBDO, One Graphics and De Schutter. I would infer from its provenance that it was prepared by experts in the business of branding confectionaries. It referred to a concept of the Maltesers "brand flag". This was said to consist of five elements: (a) the "Logotype", consisting of the word Maltesers written stylistically from bottom left to top right and receding; (b) six Maltesers balls, five being whole and one half shot; (c) "the magic" being a small sparkling motif towards the bottom right of the packet; (d) the shadows, being shadows beneath the Maltesers word and one or more of the balls and apparently cast by them; and (e) the background, being the red background. The guidelines identified the "main constituent element" of the brand flag as the logotype with its shadow that is, the word Maltesers apparently suspended in the air and proceeding cursively from the bottom left to the receding top right. The guidelines permitted the angle on which the logotype hung to vary slightly but did not permit any variation from the general structure. Mr West was cross-examined about the significance of these branding matters. He conceded that the "magic" was of no importance. Mr West also gave evidence, which I accept, in these terms: What did you mean by packaging design? --- Yes, so I would say chocolate confectionary, unlike sugar confectionary, most brands are defined by their product form or shape so, you know, if you think of if someone says M&amp;Ms you know the shape of an M&amp;M or if it's Maltesers the shape of the Malteser and so within this, you know, I think Maltesers has built the reputation of having the combination which is the brand name, the red packaging but also the product depiction and you could take the product out and put it in front of people and they all say that's a Malteser and then when they see it in the combination of the red and the product they depict it as Maltesers. (Emphasis added.)