Decision in Cantarella Bros clarifies test for
distinctiveness of trade marks in Australia and treatment of
foreign word marks
The High Court of Australia (High Court) this week handed down
only its third decision considering trade mark law since the
enactment of the Trade Marks Act 1995 (Cth). This decision
could reduce barriers to registration for foreign language words as
In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd
 HCA 48, the High Court was called upon to determine the
correct test for assessing whether a particular trade mark, filed
in Australia, is sufficiently distinctive to warrant registration.
Under the Trade Marks Act 1995, trade marks that are not
"inherently adapted to distinguish" the claimed goods
and/or services of the applicant from those of other traders face
additional barriers to registration.
Coffee Wars: Litigation History
Cantarella Bros and Modena Trading are competing suppliers of
coffee products in Australia. Cantarella Bros was the registered
owner of trade marks for the words 'ORO' and 'CINQUE
STELLE' in respect of coffee and coffee related products. Both
'ORO' and 'CINQUE STELLE' are Italian words,
meaning 'gold' and 'five stars', respectively.
Modena Trading was successful in the Full Court of the Federal
Court of Australia in its attempt to have the trade marks cancelled
on the basis that they were merely descriptive, and did not
distinguish Cantarella Bros' coffee products from those of
In the High Court decision, the majority of the High Court held
that the trade marks 'ORO' and 'CINQUE STELLE' were
distinctive, and should be reinstated on the Register of Trade
The High Court's Interpretation of the Test for
The majority of the High Court found that the test applied by the
Full Court, which asked whether other traders would be at least
likely, in the ordinary course of business and without improper
motive, to want to use the words in connection with the same goods,
Instead, the High Court proposed a two-stage test for
determining whether a trade mark is inherently adapted to
distinguish the claimed goods or services, under which decision
makers must determine:
What is the 'ordinary signification' of the words
proposed as trade marks, to any person in Australia concerned with
the relevant goods claimed by the trade mark?
Will other traders legitimately need to use the word in respect
of their own goods?
To answer the first question, the High Court found that a
decision maker must consider whether the ordinary meaning of the
word is prima facie (at first appearance) unregistrable on
the basis that it is:
"not an invented word and it has
'direct' reference to the character and quality of goods,
or because it is a laudatory epithet or a geographical name, or
because it is a surname, or because it has lost its
distinctiveness, or because it never had the requisite
distinctiveness to start with."
Each of these categories of words is likely to be considered to
lack the ability to distinguish the relevant goods or services.
Examples of marks that would fall foul of this requirement include
applications for trade marks for words such as 'SOAP',
'BEAUTIFUL', 'SMITH' or 'MELBOURNE' for a
brand of soap.
Crucially, foreign words which by their 'ordinary
signification' have only a metaphorical or allusive reference
to the goods or services claimed, were considered likely by the
High Court to be capable of distinguishing those goods, and
The High Court's Decision: ORO and CINQUE STELLE are
In the High Court's view, the words 'ORO' and
'CINQUE STELLE' would not be understood by ordinary
Australians as having a direct or tangible reference to the quality
of the relevant goods sold by Cantarella Bros, being coffee
products. The Court also found that there was not sufficient
evidence that honest rival traders needed to use the marks to
describe the quality of their products. For those reasons, it
appears that the trade marks were considered to have the quality of
distinctiveness required to establish that they were prima
Effects of the Decision for Trade Mark
The effects of this decision could be wide reaching. While in our
experience, applicants have faced significant challenges when
attempting to register many foreign language trade marks, it seems
likely that words not commonly used in Australia will now generally
be considered registrable for a wide range of goods and services.
Similarly, words that are only tangentially connected to the goods
and services claimed may be more likely to pass examination than
Watch this space!
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.
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