There is no special test for using foreign words as a trade mark
– the ordinary test for inherent adaptability to distinguish
will apply, following today's High Court decision in Cantarella
Bros Pty Limited v Modena Trading Pty Limited  HCA 48.
Clayton Utz acted for the successful applicant Cantarella Bros.
Describing a really good cup of coffee
Cantarella Bros owned the registered marks "ORO" and
"CINQUE STELLE" registered for its coffee products.
"Oro" is Italian for "gold"; "cinque
stelle" means "five stars".
Modena was found to have infringed these marks, but argued they
should never have been registered as they were not inherently
adapted to distinguish. Modena sought to have them cancelled on
Generally, a word that has not acquired a secondary
meaning/reputation through use cannot be registered as a trade mark
if it is not inherently adapted to distinguish the goods in
question. A mark will lack inherent adaptation to distinguish if
has "direct" reference to the character and quality
of goods; or
is a laudatory epithet; or
is a geographical name; or
is a common surname; or
is otherwise not capable of distinguishing one trader's
goods from those of another.
Modena alleged that "oro" and "cinque
stelle" would be understood as laudatory by enough people in
Australia, and so they should not have been registered as trade
The High Court says "sě": the correct test for
"inherently adapted to distinguish"
The High Court found that the relevant test requires a
determination of what is the ordinary signification of a word to
anyone who buys, trades or consumes the goods, and there is no
special test for foreign words. The correct approach is:
first, look at what the words (English or foreign) ordinarily
signify to any person in Australia concerned with the goods to
which the trade mark is to be applied; then
ask if other traders might legitimately need to use the word(s)
in respect of their goods.
The test is not what the foreign words mean
when translated into English (although that might be relevant)
– what is relevant is how they are understood by the target
If an English or foreign word contains an allusive (indirect)
reference to the relevant goods it is prima facie registrable. If a
foreign word is understood by the target audience
as having a directly descriptive meaning in
relation to the relevant goods, then prima facie it is not
registrable. In the context of the trade and consumption of coffee
in Australia, Modena had failed to show that neither
"oro" nor "cinque stele" had been used by other
traders, though some composite use was shown such as "qualita
d'oro" and "casa del oro".
The High Court said that the Full Court's rejection of an
"Anglocentric" approach misunderstood the meaning of
"ordinary signification". In the context of trade and
consumption of coffee in Australia, neither "oro" nor
"cinque stelle" conveys a meaning or idea sufficiently
tangible to amount to a direct reference to the character or
quality of the goods. The registrations of ORO and CINQUE would not
stop honest traders from describing their products as premium
coffee products, or Italian coffee products, or as premium Italian
coffee products. Accordingly "oro" and "cinque
stelle" were inherently adapted to distinguish
Cantarella's coffee and the registrations should not be
A clear test for any word mark
This decision is one of significant practical importance because
of the increasing globalisation of trade. As part of this tendency
to globalisation, trade marks using words from foreign languages
are increasingly common. This decision will give guidance
particularly to foreign brand owners seeking to protect their
rights in Australia.
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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