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ARTICLE · 19 MARCH 2015

Cantarella has the last laugh in coffee brouhaha over foreign language trade marks

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Foreign language trade marks are easier to register in Australia where the ordinary meaning is not clearly understood.

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

KEY ISSUES

Foreign word trade marks - assessing inherent distinctiveness

FACTS

CB owned CINQUE STELLE and ORO in class 30 in respect of coffee and similar products/beverages.

In Italian, CINQUE STELLE means 5 stars and ORO means gold.

CB used the marks in connection with its well-known Vittoria branded coffee.

MT imported Caffe Molinari branded coffee with packaging that included Cinque Stelle and Oro.

CB claimed MT infringed its CINQUE STELLE and ORO trade marks.

MT argued that it was not using the words as trade marks but descriptively, as an indication of quality.

MT cross-claimed that the marks should be cancelled pursuant to section 41(3) of the Trade Marks Act 1995 on the grounds that they were not inherently adapted to distinguish CB's goods.

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