Intellectual Property / Law / Study by subject

NZLJ Student Companions: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd

This Student Companion by Anna Kingsbury appeared in the March 2015 edition of the New Zealand Law Journal [2015] NZLJ 74.


Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48

This was a trade mark case in which the High Court of Australia considered the distinctiveness requirement for registration of trade marks, in this case in relation to foreign words. The case will be of interest to New Zealand readers, although the New Zealand Trade Marks Act 2002 distinctiveness requirement does use different language, referring to “capable of distinguishing” and “distinctive character” rather than “inherently adapted to distinguish”.

The case was about two registered trademarks belonging to Cantarella: “Oro” and “Cinque Stelle”, both used in relation to coffee. “Oro” means gold in Italian, and “Cinque Stelle” translates to five stars. The matter arose in a trade mark infringement action brought by Cantarella, in which Cantarella alleged that Modena had infringed both registered trade marks. Modena cross-claimed for cancellation of the trade marks on the basis that they were not “inherently adapted to distinguish” the goods for which they were registered from the goods of other persons, as required by s 41(3) of the Trade Marks Act 1995 (Cth). The Full Federal Court ordered cancellation of the marks, and Cantarella appealed.

In the High Court, the only issues were whether “Oro” and “Cinque Stelle” were inherently adapted to distinguish Cantarella’s goods. By majority (4-1), the High Court held that Cantarella’s marks were inherently adapted to distinguish. The majority reviewed the authorities on the meaning of inherently adapted to distinguish, and said, at [44], that “assessing the distinctiveness of a word commonly calls for an enquiry into the word’s ordinary signification and whether or not it has acquired secondary meaning.” In relation to marks consisting of foreign words, the requirement to establish this “ordinary signification” was just as critical. This was particularly the case where it was asserted that the mark was not an invented word because it made direct reference to the character or quality of the goods. The authorities showed that what was critical was not the meaning of the word as translated, but the meaning conveyed by the foreign word to people concerned with the relevant goods. It was the ordinary signification of the word, in Australia, to persons who would purchase, consume or trade in the goods, which allowed an assessment of whether the mark was registrable. Once the ordinary signification was established, an enquiry could be made into whether other traders might legitimately need to use the word in respect of their goods. The Du Cros “other traders” test referred to the legitimate desire of other traders to use a word which was directly descriptive of the same or similar goods. It did not apply to words the use of which in relation to the goods is allusive or metaphorical.

On the facts, the majority held that “Oro” and “Cinque Stelle” were not words shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as having a direct reference to the character or quality of the goods. The evidence did not show that the words were directly descriptive of coffee. The evidence did not support the claim that honest traders might legitimately wish to use them to directly describe or indicate the character or quality of their goods. The Court held that the trade marks were inherently adapted to distinguish the goods.


The full March 2015 edition of the New Zealand Law Journal is available on the LexisNexis research database.