Cantarella Bros Pty Ltd v Societe des Produits Nestle S.A. [2009] ATMO 62.

Synopsis

In a recent decision the Australian Trade Marks Office had to consider the interesting question of whether a photograph of part of a cup of coffee could be registered as a trade mark.

FACTS OF THE CASE

On 19 August 2005, Nestle applied for Australian trade mark registration of a photograph of the top of a cup of coffee in relation to a range of foods, including coffee. The trade mark application was opposed by Cantarella Bros Pty Ltd, a major supplier of European food and owner of the Vittoria Coffee brand.

THE DECISION

It was argued on behalf of Nestle at the hearing before the Trade Marks Office in July 2009 that the mark was inherently adapted to distinguish the coffee products in class 30 on the basis that the trade mark was created as a result of a “complicated and lengthy design process“, and because the rim of the cup fading into the darkness created an illusion to a halo or rings of Saturn giving a celestial appearance. Cantarella Bros filed evidence in support of the opposition that a great many images of coffee and coffee cups were in general use in relation to coffee products. There was also evidence from declarants (presumably coffee traders) that if the trade mark was to proceed to registration there would be uncertainty as to what signs (e.g. photographs of cups of coffee) other traders might use without fear of infringement.

The Hearing Officer accepted submissions made on behalf of Cantarella Bros that the trade mark was immediately suggestive of a cup of coffee. He decided that the trade mark had some capacity to distinguish (as it showed the top of the coffee cup only). However, he decided that there was insufficient use to support registration of the mark (despite sales of an instant coffee product totalling approximately AU$5.5million in the period March 2006 – August 2008, representing a market share of about 1.1%). The Hearing Officer appeared to have found the supporting use evidence to be inadequate because the trade mark was always used in close proximity to the NESCAFE house mark despite use by Nestle of the trade mark symbol.

The Hearing Officer appeared to give little weight to the extensive evidence relating to traders' uncertainty about what representations of coffee cups would infringe any registration. This view was taken by him on the basis that the issue of the effect of registration is separate from the issue of the mark qualifying for registration. Thus, the effect of the registration would only be considered in the context of an infringement action.

COMMENTARY

For practical purposes, this decision will please coffee retailers and café owners who may have been hampered in their ability to advertise their coffee products if the registration had been granted, as they would have been uncertain as to what representation of coffee cups may constitute an infringement of a registration.