In a landmark trade mark judgment delivered on 3 December 2014, the High Court in Cantarella Bros v Modena Trading [2014] HCA 48 has clarified a critical aspect of Australian trade mark law relating to the test for inherent adaptation to distinguish (inherent distinctiveness) under section 41.  The majority of the High Court found that the words ORO and CINQUE STELLE, which mean “five star” and “gold” in Italian, were inherently adapted to distinguish coffee products in Australia and therefore registrable, reversing the decision of the Full Federal Court.

The majority of the High Court applied a predominantly consumer (or target audience) focussed test to the question of inherent adaptation, whereas the Full Federal Court and Justice Gageler (in dissent) preferred a predominantly trader focussed test.