High Court Case on the distinctiveness of foreign word marks- Cantarella Bros Pty Ltd v Modena Trading Pty Limited [2014] HCA 48

On 3 December 2014, the High Court of Australia allowed an appeal against the Full Federal Court’s decision in Modena Trading Pty Ltd v Cantarella Bros Pty Ltd and found that Cantarella’s trade marks CINQUE STELLE and ORO are inherently adapted to distinguish the goods for which they were registered from the goods of other persons. The High Court ordered rectification of the Trade Mark Register to re-allow Cantarella’s trade marks for ORO (which is Italian for ‘gold’) and CINQUE STELLE (which is Italian for ‘five star’).

In proceedings in the Federal Court, Cantarella claimed that Modena had infringed its trade marks CINQUE STELLE and ORO.  Modena cross claimed that Canteralla’s trade marks should be cancelled on the grounds that they were not inherently adapted to distinguish the goods for which they were registered under s41 of the Trade Marks Act (1995) (Cth). Modena failed in its defence that it had merely used the marks as an indication of quality, and its cross claim that the trade marks CINQUE STELLE and ORO were not “inherently adapted to distinguish”. Thus, Cantaralla succeeded in the Federal Court.

However, Modena appealed to the Full Federal Court of Australia which allowed Modena’s appeal, and held that Cantarella’s trade marks CINQUE STELLE and ORO should be cancelled.

The majority of the High Court, stated that numerous decisions considering words as trade marks under the 1905 Act and 1955 Act[1] show that assessing the distinctiveness of a word commonly calls for an enquiry into the word’s ordinary signification and whether or not it has acquired a secondary meaning.  Their Honours stated that determining the “ordinary signification” of a trade mark comprising a word is just as important if the word is found in the dictionary of a foreign language especially when there is a question as to the registrability of the word on the basis that the word makes a direct reference to the character or quality of the goods it applies to.

Further, the High Court referred to a number of authorities[2] on the question of what is required for a word to qualify as an invented word, and in particular, the Solio Case[3].  The majority stated that although a wordshould be:

substantially different from any word in ordinary and common use… [it] need not be wholly meaningless and it is not a disqualification ‘that it may be traced to a foreign source or that it may contain a covert and skillful allusion to the character or quality of the goods.”

Based on its review of the authorities, the majority stated that it is not the meaning of a foreign word as translated which is critical, although it might be relevant. What is critical, is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.

As to whether words contain a reference to the relevant goods, the majority stated that this will depend on whether the words have an “obvious meaning” to “ordinary Englishmen”.

At paragraph 59, the majority stated:

The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

As such, the majority of the High Court agreed with the approach taken by the primary judge, that is, the consideration of the “ordinary signification” of the words ORO and CINQUE STELLE in Australia.  Cantarella’s trade marks were distinctive for coffee, a commodity and a familiar beverage consumed by many because only a “very small minority” of English speakers in Australia would understand the meaning of the words ORO and CINQUE STELLE because the Italian language is not “so widely spread” that the words would be generally understood as meaning “gold” and “five stars”.  Thus, Cantarella’s trade marks ORO and CINQUE STELLE are sufficiently inherently adapted to distinguish the goods of Cantarella from the goods of other persons.

[1] Thomson v B Seppelt & Sons Ltd [1925] HCA 40; (1925) 37 CLR 305 at 312-313 per Isaacs J, 315 per Rich J; [1925] HCA 40; Mangrovite Belting Ltd v J C Ludowici & Son Ltd [1938] HCA 67; (1938) 61 CLR 149 at 160-161 per Rich J; [1938] HCA 67; Mark Foy’s [1956] HCA 41; (1956) 95 CLR 190 at 201 per Williams J; Clark Equipment [1964] HCA 55; (1964) 111 CLR 511 at 513-515 per Kitto J; F H Faulding & Co Ltd v Imperial Chemical Industries Ltd [1965] HCA 72; (1965) 112 CLR 537 at 555-557 per Kitto J (“Faulding“); [1965] HCA 72; Burger King Corporation v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417 at 425 per Gibbs J (“Burger King“); [1973] HCA 15. [2] Solio Case [1898] AC 571; Philippart v William Whiteley Ltd [1908] 2 Ch 274; Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175

[3] Solio Case [1898] AC 571

Helen Kavadias, Former POF Attorney

LLB BMedSc(Hons) MIP

Helen advises in the protection, enforcement and commercialisation of all intellectual property (IP) rights, including copyright, trade marks, patents and designs. Other areas of her practice include privacy, confidential information, licensing, franchising, IP due diligence, domain name disputes, commercial contracts, comparative advertising, packaging and labelling matters. Prior to joining Phillips Ormonde Fitzpatrick, Helen was the Corporate Counsel at SingTel Optus Pty Ltd. She also practised as an IP and technology lawyer at Gilbert + Tobin and DibbsBarker.