The Italians are as famous for their coffee as Australians are for drinking it.  So it is no surprise that many coffee brands carry a trade mark in the Italian language.

In the recent case of Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8, Cantarella Bros, the company behind the Vittoria coffee label, successfully sued Modena for infringement of its registered trade marks ORO and CINQUE STELLE– Italian for GOLD and FIVE STAR.

Among the issues the court considered, was whether ORO and CINQUE STELLE were inherently adapted to distinguish coffee products.   This was a critical issue, because if the marks were found not to be inherently adapted to distinguish, the registrations would be invalid (assuming the marks were not found to have acquired distinctiveness through use) and the infringement claim would fail.

Modena’s argument was that as the English words GOLD and FIVE STAR were not inherently capable of distinguishing coffee products the marks’ foreign equivalents, ORO and CINQUE STELLE, were also not capable of distinguishing.  In other words, the terms were descriptive or laudatory when applied to coffee products.

Whilst the court agreed that the English words FIVE  STAR and GOLD would not be distinctive when applied to coffee products,  it stated the question was whether ORO and CINQUE STELLE were validly registered.

Arthur J ran through a three-step test to apply in determining whether a foreign word was inherently capable of distinguishing.  Incidentally, this test had been applied in a previous case concerning Cantarella Bros and the term GELATERIA.  The test involved determining whether:

  1. The foreign language is well-known in Australia;
  2. The translation provided is the most common meaning attributed to the word; and
  3. The common meaning has an inherent capacity to distinguish (applying the tests required by s.41 of the Trade Marks Act 1995 (Cth)).

Whilst noting this was a useful approach, Arthur J framed the relevant question as “whether the particular words ORO and CINQUE STELLE are sufficiently well understood in Australia as meaning gold and five star”.  Despite evidence of the large number of Italian speakers and those of Italian birth in Australia,  Arthur J was not persuaded that the trade marks ORO and CINQUE STELLE would be generally understood in Australia as meaning GOLD and FIVE STAR.    Cantarella Bros’ marks were therefore considered to be inherently adapted to distinguish and valid.

Some interesting foreign marks have been considered by the Australian Trade Marks Office and the courts including:

Click here to view table.

Foreign words can make very distinctive trade marks but this will not always be the case particularly, if the foreign word is commonly understood in Australia.   Where a foreign word is the trade mark, a trade mark attorney can advise you on whether distinctiveness will be an issue.