Two big, caffeinated trade mark cases have given a little more guidance on a couple of the trickier issues that get IP lawyers all hot and sweaty: registering a foreign word as a trade mark; and how far you can protect a shape trade mark.
Cantarella – foreign language marks
A fundamental principle of trade mark law is that you can't register a mark which isn't capable of distinguishing your goods or services. For example, a law firm wouldn't be able to register the word "Professional" as a trade mark for its legal services, because it's just too commonplace to ever be able to mark out that firm's services against anyone else's.
Cantarella Bros registered the words "Oro" and "Cinque Stelle" as trade marks for its coffee products. A competitor, Modena, challenged the registrations on the grounds that these terms are the Italian words for "gold" and "five stars" respectively, and that those terms are really generic and, well, boring.
The High Court went with Cantarella. While it's true that calling your coffee brand "Gold" or "Five Star" would be so unimaginative that you don't deserve a trade mark, and in law terms they shouldn't be registrable, the Court said that the translation into English isn't the key thing. The marks were the Italian terms, and Modena couldn't show that those Italian terms convey a meaning to Australians which ties them directly to coffee products. Possibly the lack of Italians on the High Court bench influenced this conclusion.
The point is that there's more scope for registering foreign language words or phrases as Australian trade marks than might have been thought. Basically, the translation to English isn't relevant. Someone should tell IP Australia that.
Coke v Pepsi – the classic bottle shape
Coca Cola registered the shape of the classic Coke "contour" bottle as a trade mark many years ago, in respect of all soft drinks. It had a crack at Pepsi in respect of Pepsi's own classic bottle shape, which it calls the Carolina Bottle.
Coke says Pepsi's bottle shape is deceptively similar to the contour bottle trade mark, meaning it is likely to deceive or confuse consumers. And – no, it doesn't. At least not according to the Federal Court, and we agree. Yeah, we all know the Pepsi bottle was invented many years after the Coke bottle and yeah, we all know it's not a billion miles away in terms of how it looks. But, seriously, has anyone ever accidentally bought a Pepsi bottle thinking it was a Coke? Everyone knows the Pepsi bottle doesn't have quite the same hour-glass profile, and the way it fits into your palm doesn't evoke quite the same “mmm, Cooookkke...” sensation, true?
So, the superior courts of Australia have rounded out 2014 with two statements of strong common sense. For that we give them two thumbs up and now we are really craving some caffeine.