The Full Court in Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110 upheld an appeal against the Federal court’s decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8. The Full court ordered that two trade marks consisting of words having a foreign meaning be cancelled.
The first mark ‘ORO’ had a descriptive meaning of “gold” in Italian. The mark was cancelled on the basis that there was high likelihood of traders thinking of, and wanting to use the word on their labelling. An important consideration was how the marks were used in conjunction with other words to describe the quality of the goods. The second mark ‘CINQUE STELLE’ had a meaning of “five stars” in Italian/Latin. Even though the expression is not a commonly understood phrase, as it is combination of Cinque (Latin for ‘five’) and Stella (Italian for ‘star’), it was seen that traders and consumers would understand a meaning. Given that high quality coffee beans mostly originate from Italy, it was seen that the phrase CINQUE STELLE would call to mind an attachment to coffee. The Court stated that monopolising the use of the words was not allowable.
The case demonstrates the need to carefully consider the use of foreign words in Australian trade mark applications.
The first mark ‘ORO’ had a descriptive meaning of “gold” in Italian. The mark was cancelled on the basis that there was high likelihood of traders thinking of, and wanting to use the word on their labelling. An important consideration was how the marks were used in conjunction with other words to describe the quality of the goods. The second mark ‘CINQUE STELLE’ had a meaning of “five stars” in Italian/Latin. Even though the expression is not a commonly understood phrase, as it is combination of Cinque (Latin for ‘five’) and Stella (Italian for ‘star’), it was seen that traders and consumers would understand a meaning. Given that high quality coffee beans mostly originate from Italy, it was seen that the phrase CINQUE STELLE would call to mind an attachment to coffee. The Court stated that monopolising the use of the words was not allowable.
The case demonstrates the need to carefully consider the use of foreign words in Australian trade mark applications.
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