Foreign Words And Their Ability To Be Trade Marks

On 30 September, the Full Court of the Federal Court of Australia handed down its decision, regarding the use of two Italian descriptive words on coffee products as trade marks in Australia.

Cantarella Brothers Pty Ltd (Cantarella) has two registered trade marks for the Italian words ORO (gold) and CINQUE STELLE (5 stars). Cantarella originally brought a claim against Modena Trading Pty Ltd (Modena) for trade mark infringement for use of the words ORO and CINQUE STELLE on its coffee products. Modena denied the infringement and claimed Cantarella’s trade marks were not distinctive and brought an action for cancellation of Cantarella’s trade marks. At first instance, the trial judge upheld Cantarella’s trade marks, stating they were distinctive under Australian trade mark laws as only a small minority of Australians would understand the meaning of the Italian words ORO and CINQUE STELLE. On appeal however, the judges of the Full Federal Court disagreed with the trial judge.

Under Trade Marks Act 1995 (Cth) (the Act), a trade mark application must not be accepted if the trade mark is capable of distinguishing the applicant’s goods or services from the goods or services of other traders. Words that are considered descriptive of the quality or kind of goods or services claimed in the trade mark application are not considered to be capable of being distinctive as they are likely to be needed by other traders in the ordinary course of trade. The Full Federal Court pointed out that despite being Italian, the words ORO and CINQUE STELLE are descriptive as to the quality of the goods, primarily coffee, produced by both Modena and Cantarella. The judges also took into account that many Australians associate coffee with Italy and are used to seeing Italian words on coffee and coffee based products. That only a small number of Australians would understand the meaning of the words ORO and CINQUE STELLE in English was not a necessary factor in determining that the words were not capable of being distinctive according the judges of the Full Federal Court.

The Full Federal Court accepted the submission made by Modena that the words ORA and CINQUE STELLE are likely to be needed by other coffee traders in the ordinary course of trade with no improper motive or malice. The judges also pointed out that the words had been used in the past by other traders in  descriptive manner before Cantarella registered their trade marks and that despite the trade mark registration, Cantarella’s use of the words ORA and CINQUE STELLE did not amount to trade mark use.

This decision highlights the multiculturalism and range of languages that Australians are now used to seeing in their everyday life and how they impact on trade mark applications in Australia. Trade mark owners and future applicants need to be aware of the evolutionary nature of trade marks as “distinctiveness is to be judged at the time of the application for registration and prospectively”1.

1 Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110, [87].