Cantarella Bros. Pty Ltd has imported raw coffee beans into Australia since 1958. Once imported, Cantarella roasts, grinds and packages the coffee under the trade mark Vittoria. Cantarella registered the words ORO and CINQUE STELLE as trade marks with respect to coffee and coffee-related products in mid-to-late 2000 and uses them as set out below. In late 2009, Modena Trading Pty Limited (Modena) entered into a distribution agreement with Caffe Molinari SpA to import various Caffe Molinari brands, several of which bore the terms ORO and CINQUE STELLE.

Trial judge test for foreign word mark

Cantarella sued Modena for infringement of the ORO and CINQUE STELLE trade marks. Modena cross-claimed seeking that the trade marks be revoked as they were allegedly not inherently adapted to distinguish the goods of Cantarella. The trial judge court concluded that the appropriate test for determining whether a foreign word mark was inherently adapted to distinguish goods and services from those of other persons, was:

  1. not a matter of considering whether the words translated to English were distinctive; or
  2. whether the language was widely spoken within Australia;

but rather, whether the foreign words in question would be commonly understood to have a particular meaning within Australia. Accordingly, the question in this case was whether the words ORO and CINQUE STELLE were commonly understood within Australia to mean gold and five star, respectively. The court concluded that the words were distinctive. In reaching this position the court found that the Italian language was not so common that it could be concluded that the meaning of the words could be considered “generally understood” and that only a “very small minority of ordinary English-speaking people in Australia would understand the allusions made by the words Cinque Stelle and Oro.” Subsequently, it was found that ORO and CINQUE STELLE “were sufficiently inherently adapted to distinguish goods of Cantarella from goods of other persons”.

Full Court Appeal distinguishes between traders and general public

The full court considered that the approach adopted at first instance was not correct. The question of distinctiveness was not whether the words ORO and CINQUE STELLE were commonly understood within Australia by the ordinary English-speaking people in Australia to mean gold and five star, respectively. Rather, the appropriate test for distinctiveness should focus “on the likelihood of traders in the relevant goods or services thinking of and wanting to use the words in suit although not as a mark”. This follows a long line of authority in Australia. It does not focus on what consumers may or may not understand the words to mean. The marks were revoked. See the full court judgment. Ultimately, whether a mark has acquired a secondary meaning and has become distinctive is a question of fact for the judge. In this instance, the following were instructive:

  1. ORO and CINQUE STELLE are descriptive Italian words which are often used to signify quality;
  2. coffee in Australia is commonly associated with Italy, as such the use of Italian words to identify the quality of such goods is obvious;
  3. there are many people within Australia that speak Italian;
  4. Cantarella were using ORO and CINQUE STELLE to describe the high quality of its respective brands; and
  5. other traders used the ORO and CINQUE STELLE in relation to coffee and coffee products to describe the quality of their products. By way of example: LavAzza was first imported into Australia in 1955.

Sources: Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8; Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110 (30 September 2013)

This article was prepared by Cameron Harvey (cameron.harvey@nortonrosefulbright.com / +61 3 8686 6662) and Jonathan Joyce-Hess (jonathan.joyce-hess@nortonrosefulbright.com / +61 3 8686 6673) of Norton Rose Fulbright Australia’s Intellectual property group.