The purpose of a trade mark is to distinguish a trader’s goods and services from those of another. Generally, a mark is not capable of trade mark registration if it is descriptive of the goods and services in relation to which it is used or it is a mark that other traders of the same or similar goods and services should be allowed to use legitimately.

So, can a party obtain trade mark registration for a foreign language word that appears to be unique in relation to its use on certain goods or services, but which would not be unique if it was a word in English?

This is the question that faced the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48. In that case, the Court had to consider whether the Italian words “ORO” and “CINQUE STELLE” were capable of distinguishing a company’s coffee products from another company’s coffee products?

Background

Both Cantarella Bros Pty Ltd (Cantarella) and Modena Trading Pty Ltd (Modena) are suppliers of coffee products in Australia. Cantarella was the registered owner of the trade marks “ORO”, meaning gold in Italian, and “CINQUE STELLE”, meaning five stars.

Modena began using the trade marked words in relation to its own coffee products and was subsequently sued by Cantarella. Modena counterclaimed asserting, essentially, that the marks were not properly registered because they were not ‘inherently adapted to distinguish’ Cantarella’s goods from the goods of another person.

At first instance, Cantarella was successful. Modena appealed the decision and was successful. Cantarella then appealed to the High Court.

The High Court’s Decision

The question before the High Court was whether the words “ORO” and “CINQUE STELLE” in respect of goods including coffee were inherently adapted to distinguish those goods from the goods of other persons.

The High Court set about answering this question in two stages. First, it needed to determine the ordinary meaning conveyed by the Italian words to any person in Australia concerned with the goods to which the trade mark was applied. Once the ordinary meaning of the words was determined, an enquiry was then made into whether other traders might legitimately need to use the words in respect to their goods.

In addressing the first stage of the inquiry the High Court considered that if the ordinary meaning of the Italian words was understood as having a directly descriptive meaning in relation to the quality or character of the goods, the marks were on the face of it unregistrable. Examples of words in relation to coffee products that may have a directly descriptive meaning and are therefore unregistrable include ‘strong’ and ‘black’. The High Court held that the words “ORO” and “CINQUE STELLE” did not convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods so as to be words having a direct reference to the character or quality of the goods.

Having found that the ordinary meaning of the Italian words would not be understood by everyday Australians as having a direct or tangible reference to the character or quality of Cantarella’s goods, the majority, in relation to the second stage of inquiry held that it could not then be said that honest traders might legitimately wish to use the words to directly describe, or indicate, the character or quality of their goods.

The majority found in favour of Cantarella concluding that the registered trade marks “ORO” and “CINQUE STELLE” are inherently distinctive and therefore capable of distinguishing Cantarella’s coffee products from those of another company’s coffee products.

What Does This Mean For You?

When considering trade mark registration for a foreign language word in Australia, you should bear in mind that the literal translation of that word is not determinative of whether or not it can be registered as a trade mark. Instead, it is the meaning conveyed by that word to persons (for example, customers) in Australia concerned with your goods or services that is important.