Most readers will recognise that 'barista', 'cappuccino', and 'espresso' are Italian words, and are part of the deeply engrained Australian coffee culture. Anyone who drinks coffee knows what these words mean. We also recognise Italian words like 'rosso' (red), 'ciao' (hello or goodbye) and 'buongiorno' (good day), but what about 'ORO' (gold) and 'CINQUE STELLE' (five stars)? Would an Australian coffee snob understand what these words mean?
The Australian case of Cantarella Bros Pty Limited v Modena Trading Pty Limited was the final chapter of a heated dispute between the two traders covering both trade mark infringement, and trade mark registrability.
In short, Cantarella has two registered trade marks for 'ORO' and 'CINQUE STELLE' for coffee goods, and sued Modena for trade mark infringement. The battle made its way up to the High Court, and in the process Modena hit back with their own claim arguing that the 'ORO' and 'CINQUE STELLE' registrations should be removed from the trade marks register because they were just Italian words for 'gold' and 'five stars', and therefore not distinctive or 'unique' enough to be registrable.
The decision in Cantarella Bros has:
- sensibly clarified the test to be applied in establishing the meaning of foreign words is that of the 'ordinary signification' of the word in Australia, rather than considering the meaning of the word once translated;
- broadened the scope for registration of trade marks, by finding that words making a 'skilful allusion' to the characteristics or quality of goods are prima facie registrable, provided they do not contain a ‘direct reference’ to such characteristics or quality; and
- given hope to traders wishing to use foreign words as trade marks to 'skilfully allude' to the nature of their goods.
The High Court considered two issues.
The first issue addressed the meaning of the two words. The court accepted Cantarella’s argument that the words have to be judged by how an Australian coffee snob understands them. The court agreed that only a very small minority of Australians (those who were Italian speakers) would understand what 'ORO' and 'CINQUE STELLE' mean. To the rest of us, the words have no obvious meaning, and therefore do not signify the character or quality of the goods.
The court went further to say words making a 'skilful allusion' to characteristics or quality (such as 'ORO' as Italian for 'gold'), are generally registrable as trade marks. Critically, the court suggested that a word would need to make a 'direct reference' to the goods to be generally not registrable.
The second issue considered was whether or not other traders might legitimately want to use the words to describe their own goods or services. Because the words were not understood well enough to have any meaning in Australia, the court held that other traders would not have the need or legitimate wish to use the words to make a 'direct reference' to the character or quality of their goods.
The obvious implication being that, as learned as Australians are, we still need to brush up on our Italian. Ciao!
This article is part of BrandWrites by Bird & Bird - May 2015