Ditelo in Italiano! Five Star Inventiveness makes a golden trade mark brew
Published on December 10, 2015 by Patricia Monemvasitis and Kim Leontiev
Ditelo in Italiano! Five Star Inventiveness makes a golden trade mark brew in Cantarella Bros Pty Limited v Modena Trading Pty Limited  HCA 48
The fight over the registrability of Italian laudatory expressions as trade marks for coffee in Australia has finally reached the bottom of the cup last week (3 December 2014) with the High Court delivering its verdict. In a 4:1 ruling the High Court has read the grounds in favour of Cantarella Bros Pty Limited (“Cantarella”), overturning the decision of the Full Federal Court and thus allowing the maintenance of registration of Cantarella’s trade marks: “Oro” and “Cinque Stelle,” which translate from Italian as “gold” and “five star.”
The decision marks an important clarification by the High Court on the capacity for inherent distinctiveness of foreign language words used as trade marks in Australia, and one that has significantly expanded the possibilities of registration for present and future trade mark owners.
The proceedings were first brought before Justice Emmett in the Federal Court as an infringement action against Modena Pty Limited by (Modena) by Cantarella over two of its registered trade marks: “Oro” and “Cinque Stelle” both registered in Class 30 in respect of “coffee” and related descriptors. Modena in turn brought a cross-claim that the registration of Cantarella’s trade marks was liable to be cancelled on the basis that they were not inherently adapted to distinguish Cantarella’s goods in accordance with Section 41 of the Trade Marks Act 1995 (Cth). Whilst Cantarella succeeded at first instance in its action and defence of the cross-claim, on appeal, the Full Federal Court upheld Modena’s cross-claim finding that Cantarella’s trade marks were in fact not inherently adaptive to distinguish.
In its decision, the Full Federal Court agreed with the primary judge that although an Italian speaker would appreciate that “oro” denotes some connection to gold, whilst “cinque stelle” means “five stars” it was not possible to conclude that these words would be generally understood to have those meanings in Australia. It did not however agree with the primary judge that if these words were not understood to carry the translated meaning: “gold” and “five stars” that they would therefore be inherently adaptive to distinguish. Instead, the Full Federal Court found that the correct application of the test for inherent adaptiveness to distinguish, being the test set by Kitto J in Clark Equipment v Registrar of Trade Marks (1964) 111 CLR 511 (“Clark Equipment”), is to consider not what the words constituting the trade mark are understood to mean, but rather whether other traders would without improper motive want to use those same or similar words in connection with their own goods and/or services of the same or related kind. Noting that the words “oro” and “cinque stelle” are laudatory words commonly used in Italian in connection with the sale and promotion of various goods, including coffee, the Full Federal Court concluded that these words would on the Clark Equipment test be words legitimately sought by other traders in connection with same or similar goods (coffee and related products).
High Court Appeal:
The question before the High Court was therefore whether the Full Federal Court was correct in its finding that Cantarella’s trade marks were not inherently adapted to distinguish its goods on the basis that other traders would have a legitimate interest to use the same or similar words.
In its submissions, Cantarella argued that the inherent adaptability of a trade mark to distinguish should be tested by checking the ordinary meaning of the word to anyone ordinarily purchasing or consuming the relevant goods (“target audience”), that is, the language and its meaning are essential to the test.
In a joint judgment, the majority (French CJ, Hayne, Crennan and Kiefel JJ) considered the historical development of the legislative and judicial interpretations of the inherent adaptiveness to distinguish requirement, finding that Cantarella’s submissions were correct. In particular, the majority judgment noted:
- That historically, UK case law had established that the test for inherent adaptiveness to distinguish is a test involving reference to the interests of other traders (per Lord Parker’s judgment Du Cros  AC 624 (“Du Cros”)) and the general public (Lord Justice Hamilton’s judgment in In re R J Lea Ltd’s Application  1 Ch 446 (“R J Lea”)) whereby even where a trade mark has through use acquired distinctiveness, it does not necessarily mean it will be inherently adaptive to distinguish –especially where registration would be contrary to the legitimate interests of other traders and the public in those words.
- The approach developed under UK case law to the consideration of foreign word trade marks through the prism of invented words as explained by Lord Macnaghten in the Solio Case  AC 571 whereby an objection to registration merely on the basis that a word is traceable to a foreign source will not be sustained and so long as the word remains “a covert and skilful allusion to the character or quality of the goods.” This was confirmed in the Diabolo Case (Philipart v William Whiteley Ltd  2 Ch 274 where the importance of the word not having an “obvious meaning to ordinary Englishmen” was emphasised.
- The adoption of the above approach into Australian case law in Howard v Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175 where the inventive word rohoe as a contraction of the English words “rotary” and “hoe” was deemed not registrable given the ordinary signification recognisable to farmers (other traders) made it a word that other trades would have legitimate interests to use. The High Court also contrasted this decision with the Mark Foy’s Case where the words “Tub Happy” for cotton garments were found to be sufficiently covert, skilful allusion to the quality of the goods so as to not make them within the legitimate purview of other traders.
In light of the above observations on case law developments in considering the test of inherent adaptiveness to distinguish and its application to foreign words, the majority concluded that:
“in relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself in the context of its proposed application to particular goods in Australia” [at 59].
Therefore, in applying the Clark Equipment test the ordinary signification of the words comprising the trade marks was crucial. When taking into account the ordinary signification of “oro” and “cinque stelle” in relation to coffee (and related goods), the majority determined there was no meaning or idea conveyed that is 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.
The reason for the above finding was also explained by the fact that the evidence led by Modena attempting to show that use by other traders of the words “oro” and “cinque stelle” did not in fact show the use of those words apart from being incorporated into a logo or device and in the midst of other words such as “D’Oro.”
In dissent, Justice Gageler emphasised that the Tub Happy Test in Mark Foy’s Case ought not to be confused with the test for whether other traders would have legitimate interests in using the particular words. In Mark Foy’s Case the High Court determined that the use of the words “tub happy” as a trade mark for selling cotton garments was capable of being inherently distinctive because whilst the words “tub happy,” did carry an allusion to the washable nature of the garments, they were not making a direct reference so as to be descriptive of the quality or character of the goods that would prevent other traders from describing their goods as having qualities like “washability, freshness and cheapness.” Yet, as Justice Gageler pointed out in difference to the majority, the Tub Happy test relates to inventiveness which is related to but ought not to be confused with the test for whether other traders would have legitimate interest in using the particular words. On the majority’s approach, considerations of foreign word marks becomes effectively subsumed into the same principles as developed for invented words or newly coined expressions.
In treating the foreign word trade marks through the prism of the distinctiveness of inventive expressions as set in the Tubby Happy test in Mark Foy’s Case the High Court majority has significantly expanded the possibility of trade mark registration of foreign words in Australia and will be welcome news to trade mark holders and entrepreneurs.