Cantarella Bros Pty Limited (“Cantarella”) has successfully opposed a trade mark application for an image of a cup of coffee (as shown below) in respect of coffee, coffee extracts, coffee-based preparations and beverages and various other goods in Class 30 filed in the name of Société des Produits Nestlé S.A. (“Nestle”) in Cantarella Bros Pty Ltd v Societe des Produits Nestle S.A. [2009] ATMO 62.
The only ground of opposition relied at the hearing was that the trade mark was not capable of distinguishing Nestle’s goods from those of other traders as it was primarily descriptive.
Nestle submitted that substantial effort and thought had gone into the creation of the trade mark, that it was distinctive and striking in that the rim of the coffee cup fades out into the darkness to create the allusion of a “halo”. Cantarella submitted that suggestions that the image brought to mind flying saucers, halos or heavenly bodies were far fetched and that the image was simply that of an ordinary cup of coffee. Consequently, Cantarella submitted that if the image had any inherent adaptability to distinguish, such capacity was slight. The Hearing Officer agreed and found that the mark was only to some extent inherently adapted to distinguish Nestle’s goods from others and that the provisions of section 41(5) applied.
Although Nestle was able to point to substantial post filing use of the mark in relation to coffee, such use was found by the Hearing Officer to be, at best, use in a “limping” role in conjunction with the well known house mark Nescafe and was not enough to overcome the ground of objection under section 41 of the Act.