If your trade mark comprises foreign language words, do not assume that it is registrable as a trade mark in Australia. Under the Trade Marks Act 1995 (“the Act”) a trade mark must be capable of distinguishing he applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons. In other words, the trade mark must be distinctive.  Depending on the nature of the goods or services of the application, the foreign language words may not be distinctive.

In a recent case before the Full Federal Court of Australia, the Court ordered the removal of two Italian language word marks from the Register as not being distinctive notwithstanding long use of both in Australia by the trade mark owner.

Background

Cantarella Bros Pty Limited (“Cantarella”), is the owner of Australian Trade Marks Nos. 829098 ORO and 878231 CINQUE STELLE registered in class 30 in relation to coffee and related products, including ground coffee, roasted coffee beans and coffee-related goods. The two trade marks were applied for on 24 March 2000 (ORO) and on 6 June 2001 (CINQUE STELLE).

In 1958, Cantarella began to import into Australia raw coffee beans and then to roast, grind and package coffee products, under its Vittoria house mark.

Cantarella began using the ORO mark in approximately 1996. From 2000 to March 2011, Cantarella sold approximately 3,578,867 kilograms of ORObranded coffee, (the equivalent to 511.27 million cups of coffee!). The CINQUE STELLE branded coffee was first marketed in 2000. From 2000 to March 2011, Cantarella sold approximately 403,618 kilograms of CINQUE STELLE coffee (or to approximately 57.66 million cups of coffee).

Modena Trading Pty Limited (“Modena”), imports into Australia coffee products supplied by Caffè Molinari SpA (“Molinari”) of Italy. In about November 2009, Molinari entered into a distribution agreement with Modena, under which Modena was appointed as its exclusive distributor in Australia for a period of 6 years. From December 2009 Molinari supplied various coffee products to Modena for distribution in Australia. The products included various products including Caffè Molinari Cinque Stelle and Caffè Molinari Oro.

Molinari had first exported products to Australia in 1996, having a series of other importers before appointing Modena, with sales of Caffè Molinari Oro in Australia in or about July 1996 and Caffè Molinari Cinque Stelle coffee since at least October 1998.

Use of “Oro” and “Cinque Stelle” in Australia

The Italian word “Oro” means “gold” and the Italian words “Cinque Stelle” mean “Five Stars”. The trade marks would be considered descriptive of high quality coffee if Cantarella had sought to register them in the English language.

The evidence showed that many different manufacturers use the word oro or d’oro to market their coffee products in Australia.

The primary judgment

Before the primary judge, Cantarella brought proceedings for infringement of each trade mark. Modena denied trade mark use, and alternatively sought to cancel Cantarella’s registrations by way of cross-claim. The primary judge found infringement and rejected Modena’s cross-claim.

Central to Modena’s cancellation cases was that “Oro” and “Cinque Stelle” are words that other traders might, without improper motive, want to use as varietal indicators on their Italian-style coffee products. Modena contended that the words were not distinctive at their respective filing dates and that the words were commonplace words in marketing generally and particularly in the marketing of Italian-style coffee in Australia.

The primary judge considered that the words were distinctive. This conclusion was reached upon application of the test of inherent adaptation to distinguish by reference to the probability of ordinary persons understanding the words, in their application to the goods, as describing, indicating or calling to mind either their nature or some attribute they possess.

With reference to the 2001 Census, the primary judge considered the number of Italian speakers in Australia and whether the Italian words “Oro” and “Cinque Stelle” were sufficiently well understood in Australia. The judge was not persuaded that any more than a very small minority of English-speaking people in Australia would understand the allusions made by Cinque Stelle and Oro, or that the Italian language was so widely spread that it could be concluded that the words would be generally understood.

Consequently the primary judge concluded that both CINQUE STELLEand OROwere sufficiently inherently adapted to distinguish goods of Cantarella from goods of other persons.

Modena appealed on three grounds including that the primary judge erred in finding that ORO and CINQUE STELLE are sufficiently inherently adapted to distinguish the designated goods from the goods of other persons.

The appeal

In determining whether a trade mark is adapted to distinguish, under ss 41(2) and (3), the following general principle is instructive:

"[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it" per Kitto J in Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 (emphasis added).

On appeal, the Full Court did not agree with the primary judge’s Anglocentric perspective to the enquiry whether the Italian words were “commonly understood” or “generally understood” in Australia by “ordinary English speaking persons”. Rather, in recognition of Australia’s “rich cultural and ethnic diversities within its population”, the Full Court though that the words should be considered against this collective diverse heritage. Thus, the “common heritage” was found to include traders in coffee products sourced from Italy (who may be Italian or local importers), and the local distributors (who are likely to want to service the large Italian speaking population in Australia and other Australians wanting a coffee with an Italian look and feel). The Full Court considered that much of the language of Australia’s coffee heritage has its provenance in the Italian language (e.g. caffèlatte; cappuccino; affogato; caffè machiatto and espresso).

Therefore, the Full Court did not consider it necessary that consumers know what the words mean in English. Although the Court did opine that as Italian is the second most spoken language in Australia, many people in Australia would in fact know what the words meant.

Application of the test

There were a number of factual findings which the Full Court accepted support the conclusion that other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the ORO and CINQUE STELLE marks, or some mark nearly resembling them, upon or in connection with their own coffee-related goods:

  • Oro and Cinque Stelle are Italian words meaning "gold" and "five stars", respectively, which signify the highest quality;
  • pure coffee in Australia is often associated with Italy, with the result that it is obvious to use Italian words to describe the quality of a coffee blend;
  • there are many Italian speakers in Australia;
  • Cantarella uses ORO and CINQUE STELLE to describe according to their known ordinary significance its highest quality coffee blends; and
  • other coffee traders have used the words ORO and CINQUE STELLE.

Accordingly, the Full Court found, upon the application of the general principle described by Kitto J in Clark Equipment, that Cantarella’s ORO and CINQUE STELLE trade marks are not inherently adapted to distinguish the designated goods from those of other traders in the relevant goods, notwithstanding that they may well distinguish goods within Cantarella’s range from other goods in that range.