Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48

In the case of Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, the High Court has found, by majority, in favour of the appellant. The court ruled that the trade marks “ORO” and “CINQUE STELLE”, as registered by the appellant Cantarella Bros Pty Ltd, were inherently adapted to distinguish the goods for which they were registered from the goods of other persons in unity with s41 of the Trade Marks Act 1995.

Facts

Cantarella produces coffee in Australia from imported beans.  It promotes and sells its coffees using various registered trade marks including “Vittoria”, “Oro” and “Cinque Stelle”.  Cantarella widely promoted its Oro branded coffee through supermarkets, and its Cinque Stelle coffee was served in many restaurants and by Qantas. Modena imports and markets coffee supplied by an Italian company, Caffè Molinari SpA (“Molinari”).  Molinari’s coffees include blends named “Oro” and “Cinque Stelle”, which are sold in Italy and are exported to many countries.  Many other producers and importers of coffee also use the word “Oro” in their brands in Australia.  In Italian, “Oro” means gold, and “Cinque Stelle” means five stars.

The matter originally concerned proceedings brought before the Federal Court by Cantarella claiming that Modena had infringed upon its trade marks “ORO” and “CINQUE STELLE” (both Italian words). Modena argued that the registration of the trade mark did not conform to s 41 of the Trade Marks Act 1995 (Cth) and therefore should be cancelled.

The Law

At the time, s 41(2) of the Act provided that the Registrar of Trade Marks must reject an application for registration of a trade mark if the trade mark "is not capable of distinguishing the applicant's goods ... in respect of which the trade mark is sought to be registered ... from the goods... of other persons". Section 41(3) stated that, in deciding whether s 41(2) applies to an application, the Registrar must first take into account the extent to which the trade mark "is inherently adapted to distinguish the designated goods ... from the goods ... of other persons".

Proceedings

At first instance Justice Emmett declared that Modena had infringed Cantarella’s trade marks.  His Honour held that the words “Oro” and “Cinque Stelle” were sufficiently distinctive because only a small minority of people in Australia would understand the meaning of the words, and thus the allusions to quality made by them.


The Full Court of the Federal Court unanimously allowed Modena’s appeal. Their Honours held that instead of focusing on the knowledge of the general population, the focus ought to have been on the knowledge of traders in coffee.   Italian was so commonly used in relation to coffee in Australia that traders other than Cantarella would readily understand, and indeed had long used, the words “Oro” and “Cinque Stelle” to signify quality of goods.  The Full Court ordered that the registration of the trade marks of those words be cancelled.

The matter was appealed once again and brought before the High Court of Australia.

High Court Decision

The High Court, by majority ruled in favour of Cantarella and determined the correct application of the test for distinctiveness of trademarks, particularly as it relates to trademarks which are not commonly understood by the general public, in this case foreign language words.

The court reasoned that in determining whether a certain word or words is inherently adapted to distinguish it, it should be necessary to consider the “ordinary signification” of the word or words to persons in Australia concerned with the goods to which the trade mark is to be applied. The court found that "ORO" and "CINQUE STELLE" were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. Consequently, the court allowed the appeal and found that the trade marks were inherently adapted to distinguish the goods within the meaning of the Act. 

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Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48

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