Reading time: 4 minutes

A trade mark protects a sign used to identify your goods or services to consumers. A trade mark can be registered if it is distinctive, does not conflict with a trade mark with earlier rights, and is not prohibited. It can be a name, image, logo, slogan, colour, smell, sound, shape (or a combination of these things) so long as it is capable of being distinctive in this manner. However, the principle in assessing the distinctiveness of a trademark still applies.

In Cantarella Bros Pty Limited v Modena Trading Pty Limited, the High Court of Australia had to determine whether two Italian words, “Oro” meaning gold, and “Cinque Stelle” meaning five stars, were inherently adapted to distinguish and therefore capable of registration as trademarks in Australia.

Background

Cantarella Bros Pty Limited (Cantarella) is the owner of two registered Australian trade marks ORO and CINQUE STELLE used on, and in relation to, specific blends of coffee (Cantarella’s Marks). Modena Trading Pty Limited (Modena) imports into Australia Molinari coffee products with the words “Cinque Stelle” and “Oro” on their packaging. Based on this use, Cantarella commenced proceedings against Modena for infringement of trademarks.

Decision

The primary judge decided that Cantarella’s Marks were distinctive. On appeal, the Full Court of the Federal Court did not agree, finding the words “oro” and “cinque stele” descriptive and lacking the ability to distinguish.

On appeal again, the majority of the High Court reversed the Full Court of the Federal Court’s decision and held that Cantarella’s Marks were inherently adapted to distinguish their goods from the goods of other traders, and set aside the orders of the Full Court of the Federal Court.

Legal Issue

The issue on appeal to the High Court was whether Cantarella’s trade marks were inherently adapted to distinguish under s 41(3) of the Trade Marks Act.

Modena argued “cinque stele” and “oro” were commonplace words in marketing generally, and certainly in the marketing of Italian-style coffee in Australia. Therefore registration of Cantarella’s Marks would preclude honest rival traders from using the words ‘oro’ and ‘cinque stelle’ to describe their Italian-style coffee products.

Analysis: When Are Foreign Words Inherently Adapted to Distinguish?

In determining whether a trademark is ‘inherently adapted to distinguish’, the High Court asked:

  • What is the “ordinary significance” of any word or words, whether English or foreign, which constitute a trade mark? and
  • Would other traders legitimately need to use this word in respect of their goods or services?

The High Court considered the perspective of another trader, located in Australia or elsewhere, who might desire to use the word or other sign in the ordinary course of its business and defined the ends of a spectrum:

  • on one end, the foreign word is granted a monopoly if it contains an allusive reference to the relevant goods or services;
  • on the other end, foreign words are not entitled to a monopoly because they are understood by the target audience as having a directly descriptive meaning in relation to the relevant goods.

Although the literal English translation of “oro” and “cinque stelle” would be descriptive of the character or quality of such goods, the majority of the High Court held these Italian words “were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to the words having a direct reference to the character or quality of goods”. Whilst it is not disputed that these Italian words would not be inherently adapted to distinguish when applied in Australia to “goods of a kind commonly associated with Italy, often enough imported from Italy and often enough sold to Italian speakers”, it did not apply to coffee in this instance. Subsequently, Cantarella had their trademark registration reinstated.

Conclusion

Traders using foreign words as their trademark should be aware not all foreign words are registrable. A foreign word may be considered distinctive if the words are not known to Australian consumers, even though they may be known within certain industries, in this case, coffee traders.

If you are considering trade mark registration, it can be useful engaging an intellectual property (IP) lawyer early so they can assist you throughout the whole process. An IP lawyer would be able to assist with assessing whether it is likely your trade mark may be subject to an adverse report, perform a conflict search, and provide other services that will ease your trade mark registration process. Our team of IP lawyers have extensive experience in this area and would be happy to assist. To speak with our Client Care team about your legal needs, contact LegalVision on 1300 544 755.

Webinars

How Franchisors Can Avoid Misleading and Deceptive Conduct

Wednesday 18 May | 11:00 - 11:45am

Online
Ensure your franchise is not accused of misleading and deceptive conduct. Register for our free webinar today.
Register Now

New Kid on the Blockchain: Understanding the Proposed Laws for Crypto, NFT and Blockchain Projects

Wednesday 25 May | 10:00 - 10:45am

Online
If you operate in the crypto space, ensure you understand the Federal Government’s proposed licensing and regulation changes. Register today for our free webinar.
Register Now

How to Expand Your Business Into a Franchise

Thursday 26 May | 11:00 - 11:45am

Online
Drive rapid growth in your business by turning it into a franchise. To learn how, join our free webinar. Register today.
Register Now

Day in Court: What Happens When Your Business Goes to Court

Thursday 2 June | 11:00 - 11:45am

Online
If your business is going to court, then you need to understand the process. Our free webinar will explain.
Register Now

How to Manage a Construction Dispute

Thursday 9 June | 11:00 - 11:45am

Online
Protect your construction firm from disputes. To understand how, join our free webinar.
Register Now

Startup Financing: Venture Debt 101

Thursday 23 June | 11:00 - 11:45am

Online
Learn how venture debt can help take your startup to the next level. Register for our free webinar today.
Register Now

About LegalVision: LegalVision is a commercial law firm that provides businesses with affordable and ongoing legal assistance through our industry-first membership.

By becoming a member, you'll have an experienced legal team ready to answer your questions, draft and review your contracts, and resolve your disputes. All the legal assistance your business needs, for a low monthly fee.

Learn more about our membership

Need Legal Help? Submit an Enquiry

If you would like to get in touch with our team and learn more about how our membership can help your business, fill out the form below.

Our Awards

  • 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice Winner – Australasian Lawyer
  • 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year - Australasian Law Awards
  • 2019 Most Innovative Firm - Australasian Lawyer