Cantarella Bros Pty Limited v Modena Trading Pty Limited  FCA 8
A recent Federal Court trade mark decision raises the threshold for invalidating a word trade mark which has a relevant meaning in a language other than English. The decision also addresses trade marks under Australian Consumer Law and provides a cautionary tale on the importance of trade mark clearance advice and registration, all under the backdrop of the coffee business in Australia.
The barristers involved evidently spent a good deal of time debating matters more commonly associated with baristas. The judgement includes an introduction to coffee beans and a short history of the coffee business in Australia. Legal issues aside, if you have ever wondered what the difference is between ariba and robusta beans, it’s worth a read.
Cantarella owns trade mark registrations for CINQUE STELLE (in a specified upper case font) and ORO (amongst other marks), both in respect of goods including coffee. Cantarella promotes and sells coffee, including under its well known house mark, VITTORIA. Examples of Cantarella’s products incorporating the above registered trade marks are shown below.
Modena imports coffee products supplied by Caffé Molinari into Australia. Molinari originally supplied various coffee blends in packaging which included the words CAFFÉ MOLINARI ORO and CAFFÉ MOLINARI CINQUE STELLE. One of Caffé Molinari’s products, which includes the words CAFFÉ MOLINARI, CINQUE STELLE and ORO, is also shown below.
In Italian, CINQUE STELLE means five stars and ORO means gold. Dozens of coffee distributors in Australia use ORO to denote products within their ranges or to denote their own house brand. Modena led evidence that in Australia, one trader uses 5 STELLE and five traders use FIVE STAR, in relation to coffee.
Foreign Language Distinctiveness
To be registered without providing evidence of use, a trade mark must be inherently adapted to distinguish the designated goods or services from the goods or services of other persons (s 41). The long-settled question is whether the word is one that other traders are likely, in the ordinary course of their businesses, and without any improper motive, to desire to use upon or in connection with their goods.
Applying this test, Emmett J was ‘disposed to conclude…that Five Stars and Gold would not be distinctive and, therefore, could not have been registered by Cantarella’ at the relevant time.
The question remained: how significant is the fact that the marks are the Italian equivalent of these English words?
On examining words in foreign language, both the examiner’s manual (Part 22.11) and examiners’ wording in objections, focus on a determination of whether the foreign language is well known in Australia. A standard objection will appear something like:
“Your trade mark is [insert word]. This is the [foreign] language equivalent of the word [insert English translation of the word].
This indicates that [describe connection between goods or services and the English translation].
A significant number of people in Australia understand this language. Other traders should be able to use the word in connection with goods or services similar to yours.”
This approach suggests that the relevant words are not distinctive:
His Honour indirectly criticised this approach, however, commenting (at 113):
“Some words in foreign languages may be well-known in Australia, even if the language itself is not well-known. On the other hand, the mere fact that a language is well-known in Australia does not mean that every word in that foreign language should be taken to be well-known in Australia.”
Instead, his Honour suggested that ‘the question is whether the particular words that are intended to constitute the trade mark are sufficiently well understood in Australia’ (emphasis added).
Adopting his Honour’s approach, one could be forgiven for reaching the same conclusion. The marks relate to numbers, colours and shapes. Anyone who has studied a foreign language even at a rudimentary level will tell you that these categories of words are amongst the first learnt.
Notwithstanding this, his Honour held (at 118):
“I consider that both Cinque Stelle and Oro are sufficiently inherently adapted to distinguish goods of Cantarella from goods of other persons. That is to say, the Italian words are not so obvious to ordinary English speaking persons in Australia that Cinque Stelle and Oro have a specific meaning. I am satisfied that Cinque Stelle and Oro are capable of distinguishing Cantarella’s goods from the goods of other persons.”
His Honour’s decision in this regard suggests that the bar for invalidating foreign language trade marks on the basis that they lack distinctiveness is high.
Modena infringed Cantarella’s trade mark registrations as Modena used CINQUE STELLE and ORO, as trade marks, in relation to coffee products. The s122(1)(b)(i) use ‘in good faith’ defence did not apply.
Australian Consumer Law and Passing Off
The case also illustrates the difficulty associated with succeeding in a claim under Australian Consumer Law (provisions relating to misleading or deceptive conduct) or the Common Law tort of passing off where the problematic trade mark is used only in conjunction with another mark.
Modena’s use of the trade marks CINQUE STELLE and ORO occurred only in conjunction with CAFFÉ MOLINARI. Because of this, his Honour concluded:
Trade Mark Registration and Clearance Advice
The decision highlights the importance of seeking trade mark clearance advice before commencing use, and registering a trade mark.
After receiving a letter of demand from Cantarella but before the matter was heard, Modena stopped using:
Unfortunately for Modena, these changes were not enough to stave off legal proceedings. Modena would have incurred substantial costs associated with the legal proceedings, and has subsequently been ordered to pay most of Cantarella’s costs.
The value of registering trade marks is also borne out by the fact that if Cantarella had not registered CINQUE STELLE and ORO, the Court would not have granted it any relief.
By Geordie Oldfield