recently commented on Cantarella's ground breaking High
Court decision in relation to the use of the word 'ORO'
(meaning 'gold' in Italian and Spanish). There is now
further judicial reasoning supporting this decision.
No longer confined to Australia, the General Court of the
European Union considered a similar case (relating to biscuits
instead of coffee) in Nutrexpa v OHMI – Kraft Foods Italia
Intellectual Property (Cuétara Maria ORO1).
Kraft's ORO trade marks
Kraft Foods Italia (Kraft) owns several trade
marks with the word 'ORO' in relation to biscuits and snack
foods. Nutrexpa, a rival company, applied to register the Community
Trade Mark (in relation to similar goods) as depicted below:
Kraft opposed the application on the grounds of a likelihood of
confusion with its own 'ORO' marks. Nutrexpa
counterclaimed, arguing that Kraft's 'ORO' mark lacked
However, the General Court held that Kraft's 'ORO'
was sufficiently distinctive; and
would not be construed as a descriptive word given that most
European consumers do not understand the meaning of 'ORO'
(despite the fact that Italian and Spanish consumers translate it
into the descriptive word 'gold' ).
For these reasons, Nutrexpa failed to prove that Kraft's
mark was low in distinctive character and Kraft was successful.
What does ORO really mean?
This raises an interesting point in relation to what the Court
regarded as an average consumer in Europe. People familiar with
Italian and Spanish languages (common languages throughout Europe)
would understand that 'ORO' means 'gold' when
translated from Italian and in Spanish. But that was not enough to
sway the General Court as no presumption of the understanding of
'ORO' was found in respect of the majority of other EU
So, what now?
It is a well-accepted trade mark principle that marks
descriptive of their goods / services are not registrable (think
'gold' as being a descriptive expression of a superior
product – now that's a no no). Kraft's decision,
however, illustrates a new trend for choosing words of a
descriptive nature for trade marks, but in a
foreign language (this time, don't think 'gold', but
think 'oro'). Here, the European judiciary allowed
Kraft's trade mark to continue on the grounds that most of
Europe (except for Italians and Spanish) would not understand the
word 'ORO' by reference to superior quality products. As
was the case with the Cantarella decision in Australia, the effect
of this Kraft decision will be wide reaching – far beyond the
borders of Spain and Italy.
1Nutrexpa, SL v Office for Harmonisation in
the Internal Market (Trade Marks and Designs) (OHIM) Case
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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