Who would have thought a spat between two Australian coffee sellers – Cantarella and Modena – would create such a stir? Not a mere battle between baristas, but a ground breaking High Court decision with wide ranging implications for trade mark owners.
In Cantarella Bros Pty Ltd (Cantarella) v Modena Trading Pty Ltd (Modena), the High Court found that the words ‘oro’ and ‘cinque stelle’ were ‘inherently adapted to distinguish’ and could be registered by Cantarella (of the coffee giant Vittoria) as trade marks.
This may come as a surprise to a good spoonful of the coffee drinking hordes on Lygon and Norton Streets, as most of them will know that ‘oro’ and ‘cinque stelle’ translate to ‘gold’ and ‘five star’ respectively, when translated from Italian. And descriptive words like ‘gold’ and ‘five star’ are clearly accepted in the trade mark world as not capable of being registered. The High Court however, had other thoughts in handing down the majority judgement, maybe one too many coffee plungers some may say.
And plunge they did, meaning it is now easier to register foreign, descriptive words that might otherwise not be registrable as English words.
There was evidence that a number of coffee distributors use the words ‘five star’ and ‘gold’. Even still, Modena ‘fell well short’ of proving that ‘oro’ and ‘cinque stelle’ were recognised as words directly descriptive of the character or quality of the coffee. Apparently, only a small minority of English-speaking people in Australia would understand the laudatory meaning of those words.
This case emphasised that it is not the meaning of the foreign words as translated that is critical, although it might be relevant. What is critical is the meaning conveyed by the foreign words to those who will be concerned with the relevant goods.
The effect of this decision will be wide reaching – far beyond the barista community. Indeed foreign words, that ordinarily could not be registered, may now be registrable for a wide range of goods and services. Given the multi-cultural disposition of Australia’s melting pot and especially with large numbers of Italian speakers, it is surprising that common Italian words (like ‘oro’ and ‘cinque stelle’) are not considered familiar enough for the High Court for trade mark purposes. Could it be a case of deja brew?
Posted on: 10 March 2015