Registering foreign word marks in Australia (the effect
of the High Court decision in Cantarella Bros Pty Limited v Modena
Trading Pty Limited concerning the trade marks "ORO" and
It appears from the recent High Court decision in Cantarella
Bros Pty Limited v Modena Trading Pty Limited that it should now be
easier to obtain trade mark registration in Australia for marks
containing foreign words. This case considered the registrability
of the Italian words "ORO" and "CINQUE STELLE"
which mean "gold" and "five stars" respectively
The High Court has clarified that the registrability of foreign
words should be assessed in the same way as English words, namely
by examining whether the word will convey a "tangible"
meaning to anyone in Australia and the "ordinary
significance" of that word to anyone who will encounter the
goods in Australia. In applying the "ordinary
signification" test, the Court noted that the Italian words
"oro" and "cinque stelle" did not convey a
meaning or idea "sufficiently tangible to anyone in
Australia concerned with coffee goods". Further, the
Court noted that the words "oro" and "cinque
stelle" are not "directly descriptive" of coffee,
but rather "allusive" and metaphorical. Accordingly, the
Court held that the marks "oro" and "cinque
stelle" are inherently adapted to distinguish Cantarella's
goods from the goods of other traders and are therefore
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