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
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
Late last year, owners of copyright in various films and television programs successfully applied to the Federal Court of Australia for orders requiring a number of Australian ISPs to take steps to block access to five overseas copyright-infringing sites.
We look at some patents behind technologies related to space telescopes.
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”
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).