Cantarella Bros Pty Limited, the owner of Vittoria Coffee, has succeeded in obtaining exclusive trademark protection for the use of the Italian descriptive words for “gold” and “five star” in relation to coffee branding.

The High Court of Australia decision handed down on 3 December 2014 overturned an earlier decision by the Full Federal Court of Australia which had previously taken the view that the words were “descriptive” and therefore available for use by rival companies.

Terms cannot be trademarked under Australian law if they are merely descriptive words that are commonly used and likely to be used by other traders and members of the public – for example, previous judgments have held “good”, “best”, and “perfection” as not being permissible trademarks.

This case differed because it was the first instance where Australia’s top Court had to determine whether the same rule applied for descriptive foreign words.

High Court links foreign word to relevant goods

In the High Court decision, Chief Justice Robert French and Justices Kenneth Hayne, Susan Crennan and Susan Kiefel, in the majority decision, ordered rectification of the Trade Mark Register to re-allow trade marking by Cantarella Bros of the terms “ORO” (which is Italian for ‘gold’) and “CINQUE STELLE” (which is Italian for ‘five star’). In their judgment these trademarks “were not shown to 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”.

The key issue of the case was to determine whether the foreign words had a widespread meaning “to anyone ordinarily purchasing, consuming or trading in the relevant goods”.

It was argued by the respondent Modena Trading Pty Limited that the Court should be considering “the likelihood that other traders might legitimately desire to use the word in connection with their goods” and “without improper motive”.

The majority judgment stated “it is not the meaning of the foreign words as translated which is critical, although it might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.”

The High Court considered a 1908 UK decision that held the term “diabolo” could not be registered for exclusive use as an English trademark– despite the fact that the word was an Italian word. This was because the foreign word had already gained an ordinary meaning within the English population. Yet, a 1978 Supreme Court of Ireland decision permitted trade marking of the Japanese word “kiku” (meaning chrysanthemum) because it “did not have any signification to ordinary people living in Ireland who see or hear it”.

Dissenting judgment

Justice Stephen Gageler was the only dissenter in the Australian High Court decision. He noted the Federal Court had considered that “the 2001 census revealed that Italian was then the second most spoken language in Australia, spoken at home by more than 350,000 people”. He also expressed the view that a strong association existed in Australia between Italy and the Italian language and the Australian coffee culture and that the Court ought to have regard to the high number of Italian speakers in Australia.

In his dissenting judgment, Justice Gageler considered that the purposes of the Trade Marks Act also included the implementation of Australia’s obligation under the Agreement on

Trade-Related Aspects of Intellectual Property Rights (TRIPS), and said:

“Gold and Five Star are ordinary English words. Used in respect of goods or services, they signify quality. They always have. No authority is necessary to establish that, used alone, they are not inherently adapted to distinguish goods or services of one person from goods or service of another. They are words which any person in the ordinary course of business might legitimately seek to use.”

Implications of decision

Commenting on the case, FoodLegal Managing Principal Joe Lederman said that the decision may create additional opportunities in Australia for adaptation of foreign words in trade marking products for the Australian market.

However, he also cautioned that “the English language is fluid and constantly adopting terms from other languages and the prospect of successful registration of a foreign word will depend on the specific facts in any given case”.

Mr Lederman noted that the majority judgment had referred back to the decision of the primary judge in the first Federal Court hearing who “concluded only a “very small minority” of English speakers in Australia would understand the meaning of the word and that the Italian language is not “so widely spread” that the words would be generally understood”. Mr Lederman said that this was a key factual issue.

He also warned food companies to be very careful to check the trademark status of product names of products before importing into Australia.

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