The Full Federal Court found that Cantarella Bros’ trade mark registrations for ORO and CINQUE STELLE, being “gold” and “five stars” in Italian, lacked any inherent capacity to distinguish coffee in Australia.
Last Friday, 14 March, the High Court granted Cantarella special leave to appeal from that decision.
[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
Canatarella’s complaint seems to be that the Full Court found the words lacked capacity to distinguish even though it did not overturn the trial judge’s finding that the words had no meaning to the general public. That is, the question seems to be in applying that test, particularly in the context of foreign language words, must the word(s) have a descriptive meaning to the consuming public (as opposed to the traders in the goods).
Transcript of special leave application here.