In brief: Two recent trade mark cases have widened the field of marks that are potentially registrable in Australia on the basis that those marks are inherently adapted to distinguish. Partner Tim Golder (view CV) reports.

INTRODUCTION

Under the Australian Trade Marks Act 1995 (Cth), one route to registration of a trade mark is to show that it is inherently adapted to distinguish in relation to the goods or services to which the mark is applied. Generally, that means the mark should not be descriptive.

MASTRONARDI PRODUCE LTD V THE REGISTRAR OF TRADE MARKS [2014] FCA 1021

In the first case, Mastronardi Produce Ltd v The Registrar of Trade Marks [2014] FCA 1021, Justice Gordon of the Federal Court of Australia was asked to overturn a decision by the Registrar of Trade Marks to refuse an application by our client to register the word ZIMA in relation to tomatoes.

The Registrar refused registration on the grounds that ZIMA described a cultivar of tomato or its fruit, and was therefore entirely descriptive of tomatoes. The Registrar relied on evidence of use of the mark by the applicant in which consumers (and in some cases, representatives of the applicant) referred to the applicant's products as 'ZIMA tomatoes' or 'ZIMA variety' tomatoes.

On appeal, on behalf of the applicant we contended that the test of inherent distinctiveness should ignore all actual use of the mark because a mark is either inherently adapted to distinguish (that is, its distinctiveness is innate to the mark and that inherent distinctiveness cannot change with use) or it is not.

Justice Gordon agreed with our submissions, and held that even though the date at which a mark is tested is the date of filing for registration, any use of the mark prior to that day is irrelevant.

This limits the kind of evidence that the Registrar can use against a mark in order to hold that it is not inherently distinctive, making it easier to show that a mark is inherently distinctive.

CANTARELLA BROS PTY LIMITED V MODENA TRADING PTY LIMITED [2014] HCA 48

In the second case, Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, the High Court of Australia considered an appeal against a decision of the Full Federal Court in which that court held that Cantarella's ORO and CINQUE STELLA marks in relation to coffee products be struck from the register.

Modena, which was held to have infringed Cantarella's marks at trial, contended that the marks should be removed from the register because they were not inherently adapted to distinguish. In particular, Modena argued that the test of whether a mark is inherently adapted to distinguish only required that the court ask whether other traders in the industry would have a legitimate desire to use that mark.

By contrast, Cantarella contended that the test required that the court first ask whether the mark is directly descriptive of the goods on which the mark is used. If not, then the second test described by Modena is not enlivened.

The majority of the High Court (comprising Chief Justice French and Justices Hayne, Crennan and Kiefel) held that Cantarella's contention was correct. If the mark is not directly descriptive of the good, then other traders can be precluded from using the mark even if they might have a legitimate desire to use it.

One of the interesting aspects of this case is that it was conducted on the basis that the marks in question, ORO and CINQUE STELLE, are Italian words for 'gold' and 'five stars' respectively. The majority's decision highlights two things: first, just because a mark might have a meaning in another language does not mean that it is not inherently adapted to distinguish. Whether that fact is relevant will depend on the industry in which the mark will operate. Second, in order for a mark to fail the inherently adapted test, it must make a direct reference to the good in question – metaphorical, allusive or indirect references may be registrable.

CONCLUSION

When considered together, Mastronardi and Cantarella v Modena widen the range of marks that may be considered inherently adapted to distinguish, and should make registering those marks substantially easier.