Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110: Foreign Word Marks
Wednesday 2 October 2013 @ 12.06 p.m. | IP & Media
The full court of the Federal Court of Australia has upheld an appeal against the decision of Emmett J in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8 (25 February 2013). In Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110 (30 September 2013) the full court has reversed the initial decision that where the marks, the subject of the case, had an ordinary meaning in a foreign language, then whether or not it is possible to register them, and maintain registration depends upon whether the marks themselves are commonly understood by Australians as having that ordinary meaning.
Background and Facts
Cantarella Bros Pty Limited (Cantarella) were the registered owner of Australian trade marks for ORO and CINQUE STELLE in respect of coffee and coffee related products going back to early 2000 and mid 2001 respectively. The term ORO is the Italian word for “gold” and the term CINQUE STELLE is the Italian words for "Five Stars”.
Modena Trading Pty Limited (Modena) had a distribution agreement with Caffe Molinari SpA (Molinari) entered into September 2010 relating to the importation into Australia of coffee products. Several of the Molinari coffee and coffee related products within imported into Australia by Modena bore the trade marks ORO and CINQUE STELLE.
At Trial
As a result of the above, Cantarella began Federal Court proceedings in early 2011 seeking to restrain Modena from importing, selling and offering for sale coffee and coffee related products that bore the marks ORO and CINQUE STELLE. Modena resisted the claims and by way of cross-claim sought orders that the marks be cancelled or removed from the Register of Trade Marks arguing that the marks were not "inherently adapted to distinguish and did not in fact distinguish Cantarella coffee and coffee related products from the similar goods of others".
Emmett J found it was not relevant to consider whether the words as translated would be distinctive, or whether the foreign language itself was well understood by many Australians.
Cantarella claimed the terms were not Used as trade marks but only to distinguish different types of coffe. At trial Emmett J did not agree, finding that the marks were being used as trade marks. As to use as trade marks by Modena, Emmett J was not persuaded that Modena had been using them simply as an indication of quality. Emmett J concluded that Cantarella was entitled to declarations that Modena had infringed the marks and ordered injunctions restraining future infringement.
On Appeal
On appeal seeking orders pursuant to the Trade Marks Act 1995 (Cth) s88(1)(a) the validity of the trade marks was again challenged on the basis of whether the Italian words “ORO” and “CINQUE STELLE” were inherently adapted to distinguish the coffee products of the registered owner and whether the primary judge erred in determining distinctiveness by reference to the probability of Australians understanding the words and calling to mind their attachment to the coffee products, the goods described by the marks.
As well, the full court considered whether other traders acting with proper motives would want to use the trade marks in connection with goods citing the principle in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 as support for this approach, namely that inquiry into the validity of a mark is to be informed by the likely use of the marks by traders as informed by potential consumers.
The Result
The full Federal Court has upheld the appeal saying at [105]:
"The primary judge found (at [129]) that Cantarella’s use of the trade marks in suit together with other words was a “conjunctive use”. Such a finding was open to the primary judge given his primary conclusion that the words were distinctive. We have concluded that the primary judge was wrong to so find. It follows that the primary judge was in error in finding that Cantarella has used and is using “ORO” and “CINQUE STELLE” as trade marks within the meaning of ss 17 and 92 of the Trade Marks Act 1995".
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Sources:
- Decision in Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110
- Lost in translation: When is a foreign word mark inherently adapted to distinguish? (Clayton Utz - 18 March 2013)
