Australia: Foreign language trade marks - all that's gold does not glitter

Intellectual Property Alert
Last Updated: 8 October 2013
Article by Tim Francis and Jane Owen

How the Rich Cultural and Ethnic Diversity of Australia Could Impact Your Choice of Trade Mark

A Federal Court decision, handed down this week, is a sage reminder of the danger of assuming that foreign language words are distinctive marks for the purpose of registration on the Australian Register of Trade Marks.

In a case of competing coffee brands, the Full Federal Court ordered that long-standing trade mark registrations for ORO (meaning "gold" in Italian) and CINQUE STELLE (meaning "five stars" in Italian), each registered for coffee products, be cancelled for lack of distinctiveness. The rationale for this decision was that the marks were common Italian words descriptive of quality, and given the diverse cultural heritage of Australia, they were known in the coffee trade to be descriptive of the quality of coffee products.

This was the case even though the trade mark owner had been using those words on its packaging for a significant period of time at the time they were cancelled.

Cantarella Bros Pty Ltd (Cantarella), a seller of coffee products, owned the registered trade marks ORO and CINQUE STELLE, which were registered in respect of coffee and related products. Modena Trading Pty Ltd (Modena), a competitor of Cantarella, sold coffee products in Australia with packaging bearing the words "Oro" and "Cinque Stelle". Cantarella then sued Modena for infringement of its registered marks.

Modena in turn sought cancellation of Cantarella's trade marks because it said the marks were not distinctive of Cantarella's products, and sought removal of those marks because Cantarella had not used them as trade marks, but rather to describe its goods.

At first, the Federal Court found that the meanings of "Oro" and "Cinque Stelle" were not so obvious to "ordinary English-speaking persons in Australia" that they were not able to distinguish Cantarella's products from those of other people. In other words, those marks were inherently distinctive of Cantarella's goods and should not be cancelled. The Court also found that both parties had used the marks as trade marks, resulting in Modena being found to have infringed the marks, and Modena's claim for removal of the marks, because Cantarella had not used them, failing.

Modena appealed these findings. On Monday 30 September, the Full Federal Court upheld Modena's appeal, and cancelled Cantarella's registrations.

Distinctiveness of Non-English Words

In Australia, to register a trade mark, it must be capable of distinguishing your goods or services from those of other persons. This generally means that you cannot register a trade mark that consists of words that describe your goods or services - unless you can show that you have used the mark to such an extent that it has become distinctive of your goods or services.

In the first decision, the Federal Court found that only "a very small minority of English-speaking people in Australia" would understand the allusions made by "Oro" and "Cinque Stelle". The Federal Court said this meant that the marks were sufficiently distinctive.

On appeal, the Full Court said that, where the marks were common Italian words descriptive of quality, the test was not whether ordinary English-speaking people in Australia would recognise the mark. The Full Federal Court remarked that "there is no necessity to approach the enquiry from an Anglocentric perspective in the Australian context which has rich cultural and ethnic diversities within its population". Instead, the distinctiveness of the marks should be assessed against the collective diverse heritage of Australia.

The question should be whether other traders, including people who are, or would become, traders in the relevant goods and services in Australia, would want to use the relevant words.

Relevant considerations for deciding whether other traders would want to use a word included:

  • what consumers in the relevant market knew of those words (and in that regard, it was not necessary for consumers to know what the words meant in English for the purpose of ascertaining whether other traders might want to use the words)
  • whether other traders had actually used the words.

In this particular case, the Full Federal Court said the question was whether other traders in Italian coffee products would want to use the words "Oro" and "Cinque Stelle" in connection with their goods. The Full Federal Court found that those Italian words were known in the coffee trade to be descriptive of the quality of coffee products and so they were not capable of distinguishing Cantarella's goods.

The decision was based on the wording of section 41 the Trade Marks Act 1995 before it was replaced by entirely new wording in April 2013. However, the principles discussed in this alert are equally applicable to the new wording of that section.

Removal for Non-use

A trade mark can be removed from the Register of Trade Marks if it is not used as a trade mark for a continuous three year period (with some qualifications not relevant to this discussion).

Modena claimed Cantarella had not used its marks as trade marks.

In light of the appeal findings above regarding the inability of "Oro" and "Cinque Stelle" to distinguish Cantarella's goods, the Full Federal Court said that Cantarella's extensive use of "Oro" and "Cinque Stelle" was not use as a trade mark. Consequently the marks would have been vulnerable to removal for non-use.

The Full Federal Court ordered cancellation of the registration of Cantarella's marks because of their lack of distinctiveness.

How Can This Impact Trade Mark Choice?

Whilst there can be an appearance of distinctiveness by using non-English words as trade marks, if they are descriptive of your goods or services, albeit in another language, then they may not be registrable.

This may be the case even where you are able to demonstrate that you have made significant use of that mark.

In choosing a trade mark that comprises a non-English word, it is prudent to consider how the use of that word is viewed by:

  • traders in Australia in the relevant goods or services
  • Australian consumers generally.

The Full Federal Court also noted that the same principles may apply in relation to English words that are not commonly understood by most Australians as descriptive of anything in particular, but which mean something to traders in the relevant products.

Case: Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110 (30 September 2013)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

K&L Gates has been awarded a 2012 EOWA Employer of Choice for Women citation acknowledging our commitment to workplace diversity.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.