Cantarella Bros Pty Limited v Modena Trading Pty Ltd  HCA Trans 53, High Court of Australia, 18 March 2014
Journal of Intellectual Property Law & Practice (2014), doi: 10.1093/jiplp/jpu089, first published online: May 22, 2014
For the first time ever, Australia's highest court will consider the inherent distinctiveness of foreign laudatory trade marks.
The capacity to distinguish foreign laudatory words has come under scrutiny by Australia's highest court. The ongoing legal battle between Cantarella and Modena concerns Cantarella's registered trade marks CINQUE STELLE and ORO in relation to coffee. CINQUE STELLE means ‘Five Star’ in Italian, and ORO means ‘gold’. At issue is whether, and to what extent, the English meaning of foreign laudatory words is relevant to determining the capacity to distinguish.
The Full Federal Court came to the opposite conclusion and, in a unanimous decision, held that CINQUE STELLE and ORO lacked any inherent adaption to distinguish coffee, as traders would understand each word to describe the quality of coffee. It pointed to the various uses by traders of ORO. The Full Federal Court also expressly stated that it is unnecessary for consumers to know what the words mean in English, but that in any event a sizeable part of the Australian community spoke Italian and would understand the meaning of each mark in relation to coffee. It ordered the cancellation of both registrations.
Neither side disputed the nature of the test, but each differed on its characteristics. Canteralla's counsel argued that if the ordinary signification of each word was not such as to suggest that they were part of the common heritage in relation to coffee, how relevant is it that other traders used ORO in relation to coffee? What if much of this use occurred subsequent to the date of registration? Modena's counsel suggested that the law was flexible and involved a practical evaluation of foreign words' inherent distinctiveness, including of foreign words common in the trade, which meant that the Full Federal Court's decision was correct, in all the circumstances.
Aspects of this dispute go to the oft-times vexed question of how a trade mark's inherent adaptation to distinguish is to be assessed when it is laudatory, let alone when it is a foreign laudatory word. What, to add spice to the debate, if it is a laudatory word that catches on as a trade mark? To what extent does a multifactorial consideration of the issue help in regulating subsequent skirmishes in the marketplace? We are hopeful of five-star guidance on the freedom to use and protect foreign laudatory words in the Australian marketplace.