Mars mad about Hershey's use of Malteser mark
April 23, 2014
by Eric Schroeder
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ALEXANDRIA, VA. — Mars Inc. on April 15 filed a complaint against The Hershey Co. accusing the Hershey, Pa.-based company of engaging in “a scheme to hinder Mars from selling its world-famous Maltesers candy in the United States.”
According to the lawsuit, filed in the U.S. District Court for the Eastern District of Virginia, Alexandria Division, Mars has sold a chocolate-covered malt ball candy under the name Maltesers brand for more than 75 years, generating millions of dollars a year. In or about 1978, Mars adopted distinctive all-red packaging for Maltesers. Mars has advertised and sold the candy in such a manner since at least as early as 1995.
Meanwhile, Hershey has owned rights to the trademark “Malteser” in the United States for more than 15 years.
But according to Mars, Hershey acquired the trademark from a third party only “to block Mars from selling Maltesers candy in competition with Hershey’s Whoppers candy, also a chocolate-covered malt ball, in the United States.” Hershey acquired the Malteser trademark, without a plural “s,” in 1998 from Huhtamaki Finance B.V., a Dutch company that had received it from the original registrant, Leaf Corp. Mars sued and eventually settled with Leaf in 1994. A few years later, Leaf assigned its Malteser mark to Huhtamaki Finance, who did not use Malteser in commerce at any time before selling the trademark to Hershey in 1998.
Since that time, Mars said Hershey has made no use or only “bad faith, token use” of the Malteser mark “merely to reserve rights in the name and has pursued a campaign of deception in the United States Patent and Trademark Office, which caused the U.S.P.T.O. to allow Hershey to maintain its Malteser registrations, despite the fact that Hershey had no bona fide use of the mark in commerce.”
Mars claims that Hershey has not advertised or promoted its Malteser product or even referenced the product in corporate reports or filings with the Securities and Exchange Commission. Additionally, Mars said Hershey has not actually developed a product under the Malteser brand.
“Hershey sporadically passes off Whoppers candy as Malteser candy — selling Whoppers under the Malteser mark, without disclosing the switch to consumers — merely to reserve rights to the Malteser name,” Mars said in the lawsuit.
Additionally, Mars has taken issue with the packaging that Hershey has used, saying the company did not actually design its own packaging for Malteser candy, but instead “simply helped itself to Mars’ well-known Maltesers packaging, copying the distinctive, all-red color scheme of the Mars’ packaging and duplicating its protected elements.”
Mars is seeking a permanent injunction against Hershey’s use of the Malteser mark, along with damages for lost profits and any other remedy the court sees fit.
Responding to the lawsuit, Jeff Beckman, a spokesperson with Hershey, said, “We believe this suit is without merit. The Hershey Co. has owned the Malteser trademark in the United States for more than 15 years. We intend to vigorously defend against this groundless litigation.”