February 1, 2015
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AUSTRALIA: High Court Tests the Registrability of Foreign Words as Trademarks
he High Court of Australia has recently confirmed the test for assessing distinctiveness of trademarks, including trademarks comprising foreign words. Cantarella Bros Pty Limited v. Modena Trading Pty Limited  HCA 48 (December 3, 2014).
Cantarella Bros Pty Limited (Cantarella) owned trademark registrations for ORO and CINQUE STELLE for coffee. It brought trademark infringement proceedings against Modena Trading Pty Limited (Modena). Modena argued that its use of ORO and CINQUE STELLE (Italian words meaning “gold” and “five stars”) indicated the quality of its goods. Modena also counterclaimed that Cantarella’s trademark registrations should be canceled because the words were not inherently adapted to distinguish Cantarella’s coffee products from those of other coffee companies, citing their common use by other traders.
The primary judge ruled that Modena had infringed Cantarella’s trademark registrations. Although Italian speakers would understand the meaning of ORO and CINQUE STELLE, “ordinary” Australians would not understand the significance. Cantarella’s registrations were therefore upheld.
Modena appealed to the Full Federal Court to cancel Cantarella’s registrations for ORO and CINQUE STELLE. The Full Court applied a test focusing on whether other coffee traders would wish, acting honestly, to use ORO and CINQUE STELLE in relation to their own goods. Modena’s appeal was successful.
The High Court (by a majority of four to one) allowed Cantarella’s appeal. Modena’s applications to cancel the registrations failed. The Court held that the trademarks ORO and CINQUE STELLE are distinctive when used for coffee.
The judges noted that, when assessing the registrability of a trademark, its “ordinary signification” is important. Determining the “ordinary signification” is equally important if the trademark is a word in a foreign language. However, it is not the translated meaning of the word which is critical (although it may be relevant). “What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods” (paragraph 48).
The majority judges emphasized the importance of differentiating between words which make a “covert and skilful allusion” to the goods in question versus words which make a “direct reference” to the goods
Also important is who compromises the “audience.” The High Court affirmed that the consumer, rather than trader, was the focus of its assessment as to the “ordinary signification” of words. In the context of coffee being “a commodity and a familiar beverage consumed by many” the target audience is to be widely construed.
The judges found that the available evidence did not establish that ORO and CINQUE STELLE “convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods” (paragraph 73). Modena’s evidence as to the apparent descriptiveness of the terms when used by traders was not, in the opinion of the High Court, sufficient to detract from this finding.
The High Court therefore concluded that in Australia, ORO and CINQUE STELLE are inherently adapted to distinguish Cantarella’s coffee products from those of other traders. The trademark registrations were reinstated.
Due to an editorial error, the emphasis of the original version of this article suggested that the High Court’s assessment of the ordinary signification of the words focused only on a consumers’ understanding of the words. The article has been amended to clarify that the High Court held that assessment of "ordinary signification" must consider whether the words convey a sufficiently tangible meaning or idea to "anyone in Australia concerned with coffee." This would include persons who purchase, consume or trade in the goods.
© 2015 International Trademark Association
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