Two big, caffeinated trade mark cases have given a
little more guidance on a couple of the trickier issues that get IP
lawyers all hot and sweaty: registering a foreign word as a trade
mark; and how far you can protect a shape trade mark.
Cantarella – foreign language marks
A fundamental principle of trade mark law is that you can't
register a mark which isn't capable of distinguishing your
goods or services. For example, a law firm wouldn't be able to
register the word "Professional" as a trade mark for its
legal services, because it's just too commonplace to ever be
able to mark out that firm's services against anyone
Cantarella Bros registered the words "Oro" and
"Cinque Stelle" as trade marks for its coffee products. A
competitor, Modena, challenged the registrations on the grounds
that these terms are the Italian words for "gold" and
"five stars" respectively, and that those terms are
really generic and, well, boring.
The High Court went with Cantarella. While it's true that
calling your coffee brand "Gold" or "Five Star"
would be so unimaginative that you don't deserve a trade mark,
and in law terms they shouldn't be registrable, the Court said
that the translation into English isn't the key thing. The
marks were the Italian terms, and Modena couldn't show that
those Italian terms convey a meaning to Australians which ties them
directly to coffee products. Possibly the lack of Italians on the
High Court bench influenced this conclusion.
The point is that there's more scope for registering foreign
language words or phrases as Australian trade marks than might have
been thought. Basically, the translation to English isn't
relevant. Someone should tell IP Australia that.
Coke v Pepsi – the classic bottle shape
Coca Cola registered the shape of the classic Coke
"contour" bottle as a trade mark many years ago, in
respect of all soft drinks. It had a crack at Pepsi in respect of
Pepsi's own classic bottle shape, which it calls the Carolina
Coke says Pepsi's bottle shape is deceptively similar to the
contour bottle trade mark, meaning it is likely to deceive or
confuse consumers. And – no, it doesn't. At least not
according to the Federal Court, and we agree. Yeah, we all know the
Pepsi bottle was invented many years after the Coke bottle and
yeah, we all know it's not a billion miles away in terms of how
it looks. But, seriously, has anyone ever accidentally bought a
Pepsi bottle thinking it was a Coke? Everyone knows the Pepsi
bottle doesn't have quite the same hour-glass profile, and the
way it fits into your palm doesn't evoke quite the same
"mmm, Cooookkke..." sensation, true?
So, the superior courts of Australia have rounded out 2014 with
two statements of strong common sense. For that we give them two
thumbs up and now we are really craving some caffeine.
We do not disclaim anything about this article. We're
quite proud of it really.
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