Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8

The dispute in this decision turns on the use of the words “Cinque Stelle” and “Oro” (“the Trade Marks”) in relation to coffee products and the inherent adaptation to distinguish of foreign word marks in relation to goods in Australia.

Background

Cantarella Bros Pty Ltd (“Cantarella”) is the owner of registrations for the trade marks CINQUE STELLE, which means “five stars” and ORO which means “gold” in the Italian language. Both marks have been registered since the early 2000’s in respect of coffee and coffee products in Class 30 (“the Goods”).

Modena Trading Pty Ltd (“Modena”) imports coffee products supplied by the Italian company, Caffe Molinari SpA into Australia. Some of these products contained the words “Cinque Stelle” and “Oro” on packaging for the coffee products imported and Modena also used these words to market the coffee products in Australia.

Cantarella instituted proceedings in the Australian Federal Court against Modena for infringement of the Trade Marks and to restrain Modena from continuing to sell or offer for sale the Goods under the Trade Marks. Modena cross claimed for cancellation of Cantarella’s registrations for the Trade Marks.

In order to determine whether Modena’s use of “Cinque Stelle” and “Oro” infringed Cantarella’s registrations for the Trade Marks, the Court needed to consider the extent to which foreign word marks could be adapted to distinguish the Goods. It was Modena’s contention that its use of “Cinque Stelle” and “Oro” respectively could not infringe Cantarella’s registrations for the Trade Marks because the Trade Marks should not have been registered in the first place as they were not inherently adapted to distinguish and do not in fact distinguish the Goods. Modena could also avoid infringement if the Court determined that its use of Cinque Stelle and Oro respectively was not trade mark use.

Outcome

In assessing the validity of Cantarella’s registrations for the Trade Marks, Justice Emmett was not persuaded on the evidence before him that “… there are a sufficient number of Italian speakers in Australia to render the common meaning of Cinque Stelle and Oro sufficiently well understood in Australia” and “… that the Italian language is so widely spread that the conclusion should be drawn that Cinque Stelle and Oro would be generally understood in Australia as having those meanings”. The Trade Marks were therefore found to be capable of distinguishing and the registrations for the Trade Marks should not be cancelled.

On the question of whether Modena’s use of the Trade Marks infringed Cantarella’s registrations for the Trade Marks, Justice Emmett was not persuaded that Modena’s use of Cinque Stelle and Oro was simply as an indication of quality and therefore not trade mark use. Justice Emmett found that on the material before him, and considering various examples of prominent use of Cinque Stelle and Oro on and in relation to the Goods, Modena had used Cinque Stelle and Oro as trade marks in relation to the Goods. This use constituted an infringement of Cantarella’s registrations for the Trade Marks and the Court made an order restraining Modena from further infringing use of the Trade Marks.

Modena has filed an appeal against the decision which will be heard in due course.

Take home message

Whether a foreign word mark which has an ordinary meaning in a foreign language is inherently registrable depends on whether that word is commonly understood by Australians to have that ordinary meaning. In order to avoid difficulties, trade mark owners should not readily adopt words which have descriptive or laudatory meanings for use as trade marks, whether in English or in a foreign language.