Two big, caffeinated trade mark cases have given a
little more guidance on a couple of the trickier issues that get IP
lawyers all hot and sweaty: registering a foreign word as a trade
mark; and how far you can protect a shape trade mark.
Cantarella – foreign language marks
A fundamental principle of trade mark law is that you can't
register a mark which isn't capable of distinguishing your
goods or services. For example, a law firm wouldn't be able to
register the word "Professional" as a trade mark for its
legal services, because it's just too commonplace to ever be
able to mark out that firm's services against anyone
else's.
Cantarella Bros registered the words "Oro" and
"Cinque Stelle" as trade marks for its coffee products. A
competitor, Modena, challenged the registrations on the grounds
that these terms are the Italian words for "gold" and
"five stars" respectively, and that those terms are
really generic and, well, boring.
