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 (i.e. coffee and coffee-based beverages) 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 the first instance proceedings in the Federal Court, Cantarella claimed that Modena had infringed its registrations for the trade marks CINQUE STELLE and ORO. Modena cross claimed that Cantarella’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 s 41 of the Trade Marks Act (1995) (Cth). Modena’s cross claim failed, as did its defence that it had merely used the marks as an indication of quality.
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. Cantarella was successful in having the Full Federal Court’s decision overturned by the High Court.
The High Court’s decision
The majority of the High Court comprising Chief Justice Robert French and Justices Kenneth Hayne, Susan Crennan and Susan Kiefel, stated that the numerous decisions which considered words as trade marks under the 1905 Act and 1955 Act 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.1 Their Honours stated that determining the “ordinary signification” of a trade mark comprising of a word is just as important if the word is to be found in the dictionary of a foreign language. This is especially the case 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 authorities2 on the question as to what is required for a word to qualify as an invented word, and in particular, the Solio Case3 . The majority stated that although a word should 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, that is, anyone who buys, trades or consumes the 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. In this regard, the High Court referred to Mark Foy’s Ltd v Davies Coop & Co Ltd4 (Mark Foy’s Case) where the trade mark TUB HAPPY was found to be a registrable trade mark having no direct reference to the character or quality of cotton garments. In the Mark Foy’s Case, the High Court had held that TUB HAPPY conveyed to the consumer only an overt and skilful allusive reference to goods, which was not “sufficiently tangible” to amount to a “direct reference” to the character or quality of cotton garments. Thus, in applying the Mark Foy’s Case, the High Court held Cantarella’s trade marks ORO and CINQUE STELLE 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”.
Modena had not been able to show that the words ORO or CINQUE STELLE had been used by other traders of coffee products. Thus, the High Court found that Cantarella’s trade marks ORO and CINQUE STELLE are sufficiently inherently adapted to distinguish the goods of Cantarella from the goods of other coffee traders.
In a dissenting judgment, Gageler J found that the evidence showed that “gold” and “five star” are ordinary English words which when “used in respect of goods or services, they signify quality”. Justice Gageler agreed with Full Court in that the Italian equivalents of the words “gold” and “five start” were not inherently adapted to distinguish especially given that the goods are commonly associated with Italy, and often enough imported from Italy and sold to Italian speakers.
The High Court’s decision has clarified the approach to be taken in assessing the distinctiveness and registrability of foreign word trade marks under section 41 (3). In particular, the test is not what the foreign words mean when translated into English but rather how they are understood by the target audience. The decision has expanded the possibility of trade mark registration of foreign words in Australia given that foreign word trademarks are to be considered through the construction of distinctiveness of inventive expressions as set in the Mark Foy’s Case.