coffee

Motherland, Mothersky and Mother

The Full Court has allowed Energy Beverages’ (EB) appeal opposing Canteralla’s registration of MOTHER as a trade mark for coffee and related products. However, the Full Court rejected EB’s appeal against the removal of its MOTHERLAND trade mark for non-use. In the process, the Full Court provided helpful clarification of the role of Trade Marks Act s44(3)(b) “other circumstances”.

Some background

Cantarella applied to register MOTHERSKY in class 30 in respect of coffee, coffee beans and chocolate, coffee beverages and chocolate beverages and in class 41 in respect of coffee roasting and coffee grinding (TMA 1819816).

EB – the producer and distributor of the MOTHER energy drink – opposed, relying on its prior registered trade marks for MOTHERLAND (TM 1345404), MOTHER LOADED ICED COFFEE (TM 1408011) and MOTHER (TM 1230388) all registered, amongst other things, for non-alcoholic beverages.

Cantarella countered by seeking the removal of the MOTHERLAND and MOTHER LOADED ICED COFFEE marks for non-use under s 92 and deleting coffee beverages and chocolate beverages from its specification of goods.

The delegate ordered removal of MOTHERLAND (here) and MOTHER LOADED ICED COFFEE (here) from the Register for non-use. The delegate also dismissed EB’s opposition to the registration of MOTHERSKY. On appeal, the primary Judge upheld the delegates’ decisions.

EB sought leave to appeal the decisions in respect of MOTHERLAND and allowing the registration of MOTHERSKY. The Full Court refused leave to appeal the MOTHERLAND decision but allowed leave and upheld the appeal against registration of MOTHERSKY.[1]

MOTHERLAND

At [61], the Full Court quoted the well settled principles for trade mark use from Nature’s Blend:

(1) Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at 19; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645 at [43] (Lion Nathan).

(2) A mark may contain descriptive elements but still be a “badge of origin”: Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 347–8; 101 ALR 700 at 723; 21 IPR 1 at 24 (Johnson & Johnson); Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; 33 IPR 161; Aldi Stores Ltd Partnership v Frito-Lay Trading GmbH (2001) 190 ALR 185; 54 IPR 344; [2001] FCA 1874 at [60] (Aldi Stores).

(3) The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 422; [1963] ALR 634 at 636; 1B IPR 523 at 532 (Shell Co).

(4) The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”: Johnson & Johnson at FCR 347; ALR 723; IPR 24 per Gummow J; Shell Co at CLR 422; ALR 636; IPR 532.

(5) Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words: Johnson & Johnson at FCR 347; ALR 723; IPR 24; Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182; [2002] FCA 390 (Anheuser-Busch).

(6) In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited.

The problem for EB was that its product is the energy drink MOTHER and its uses of MOTHERLAND focused on it being a fictional fantasyland tailored to “MOTHER-drinking” consumers.

An example of its use, taken from one of two commercials using MOTHERLAND, is:

Another example of use – the description in the “About Us” page of EB’s YouTube channel was “Welcome to MOTHERland”.

The Full Court considered that EB used only MOTHER as a trade mark in respect of energy drinks; MOTHERLAND was just used as the name of the fictional theme park and no more. Accepting that there could be more than one trade mark used in relation to a product, in context MOTHERLAND was not being used as a trade mark to indicate the trade source of the drink. At [67] – [68]:

The depiction of MOTHERLAND in the commercial with the prominent MOTHER in the well-known gothic script representation in contradistinction to LAND, appended in plain red font, emphasises the use of the distinctive gothic script MOTHER mark as the only mark possessing the character of a brand. MOTHERLAND was the name of the fictional theme park, and no more.

The presence of the dominant gothic script MOTHER mark each time MOTHERLAND appears in the commercial, including as the central part of the mark itself, is part of the context relevant to the assessment of the role of MOTHERLAND: Anheuser at [191]. The focus on the well-known gothic script MOTHER, including as part of MOTHERLAND, supports the conclusion that the gothic script MOTHER is the only mark being used to distinguish the MOTHER energy drinks in the commercial from the energy drinks of others.

There was a further problem with reliance on the commercials. The commercials had been run on television well before the non-use period. The commercials had also remained publicly available during the non-use period as they had been uploaded to EB’s YouTube and Facebook pages. There was no evidence, however, that anyone in Australia had accessed the commercials on either site. At [76], the Full Court explained:

Under existing authority, which has not been challenged in the present application, the mere uploading of trade mark content on a website outside Australia is not sufficient to constitute use of the trade mark in Australia …

citing Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471; 143 FCR 479; Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; 186 FCR 519; Christian v Societe Des Produits Nestle SA (No 2) [2015] FCAFC 153; 327 ALR 630.

Consequently, EB failed to demonstrate that the primary judge’s order to remove MOTHERLAND for non-use in respect of non-alcoholic beverages etc. was attended by sufficient doubt to warrant leave being granted to appeal.

MOTHERSKY

Despite the deletion of coffee beverages from Cantarella’s specification of goods, both parties conducted the proceedings on the basis that “coffee” included coffee beverages, not just the product of the coffee plant or coffee beans.

In contrast to the MOTHERLAND proceeding, the Full Court found that the primary judge made two material errors. First, his Honour had examined whether coffee beverages were similar goods to energy drinks and the powders and syrups for bottling energy drinks and concluded that the respective products had fundamentally different taste and flavour and were presented for sale and consumed in different circumstances.

This was in error. Section 44(1) calls for comparison of Cantarella’s “coffee” across the full scope of its normal and fair meaning to the full scope of EB’s specification. The correct comparison therefore was between “coffee” and “non-alcoholic beverages”.

Given the way the case had been conducted, the Full Court had little difficulty concluding that coffee beverages were “non-alcoholic beverages” within the scope of EB’s registration.

The fact that coffee as a beverage was classified in class 30 and not class 32 was a matter of administrative convenience and, at [132], irrelevant given Cantarella contended “coffee” covered “coffee beverages”.

Further, contrary to the primary judge’s approach, Cantarella’s claim for “coffee beverages” was not limited to “pure” coffee but extended across a range of beverages. Cantarella argued that coffee beverage did not include coffee flavoured milk. The Full Court accepted at [129] that there may be “a penumbra of uncertainty” about when a coffee flavoured beverage is not “coffee”. Treating “coffee” as meaning “coffee beverage”, however, at [128]:

there is nothing in the specification, so construed, which would limit the meaning of “coffee” to any particular coffee beverage or to any particular kind or type of coffee beverage. For example, there is nothing to limit “coffee” to black coffee as opposed to white coffee or coffee made with milk. There is nothing to limit “coffee” to coffee that does not include some additive such as, for example, a flavoured syrup. Further, there is nothing to limit “coffee” to a hot beverage or a freshly-brewed beverage as opposed to a cold or iced beverage. Further still, there is nothing to limit “coffee” to coffee produced by a particular process or prepared in a particular way, or to coffee packaged and promoted in a particular way. There are many permutations of what constitutes “coffee” as a beverage. Thus, coffee beverages cover a range of goods.

Further still, there was a sufficient body of evidence demonstrating that, at the priority date of the MOTHERSKY application, drinks such as pre-packaged iced coffee were regarded in the trade as non-alcoholic beverages and, further, of overlap between the trade channels through which coffee beverages and energy drinks were marketed and sold.

Secondly, the Full Court considered the primary judge materially erred when undertaking the deceptive similarity comparison.

The Full Court recognised that the comparison the test of deceptive similarity called for involved matters of judgment and degree about which opinions could reasonably differ. In the absence of legal error, mere difference of opinion was not enough. In undertaking the comparison, however, the primary judge’s assessment was heavily coloured by his Honour’s conclusion that “coffee beverages” and the goods covered by EB’s MOTHER registration were not the same or even of the same description.

Further, the primary judge erred by comparing only the specific way Cantarella actually used its trade mark with the specific way EB used its mark rather than comparing how notionally the competing marks could fairly be used across their full scope.

Undertaking the comparison themselves, the Full Court concluded that MOTHERSKY was deceptively similar to MOTHER.

First, at [167], while “mother” is a commonly used English word, it is not in any way descriptive of “non-alcoholic beverages” and was inherently distinctive of such goods. This was of considerable importance in the assessment. (emphasis supplied)

Secondly, at [168], “mother” was wholly incorporated in MOTHERSKY and did not lose its identify merely by the addition of “sky”.

Thirdly, at [169] to [170], “sky” did not have a well-understood meaning when added to “mother”. It might for example be understood according to its ordinary signification. Or it might be treated as some sort of playful variant or as creating a diminutive of “mother”. The Full Court considered that “mother” remained the dominanting element and, consequently, the likelihood of confusion arose.

As a result, s 44(1) operated to preclude registration of MOTHERSKY in the face of EB’s MOTHER registration for non-alcoholic beverages.

Other circumstances

It is well established that the registrability of a trade mark application falls to be determined at the date of the application.

Cantarella’s tactic of applying to clear the way for its MOTHERSKY application by removing EB’s blocking registrations for non-use is also long-standing although, of course, as at the date of the MOTHERSKY application, EB’s registrations were still in the way – removal for non-use being prospective, not retrospective.

At [176] – [178], however, the Full Court endorsed the Registrar’s practice (albeit by way of obiter dicta) of allowing an application to proceed to registration if the blocking citation was removed for non-use as “other circumstances” for the purposes of s44(3)(b). There would be “something perverse” in testing the registrability of the application against a mark which will be removed from the Register.

It is understood that an application for special leave to appeal to the High Court has been filed.

Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44 (Yates, Stewart and Rofe JJ)


  1. Leave to appeal being required under s 195(2) and so EB needed to persuade the Full Court that “(a) whether, in all the circumstances, the decision below is attended with sufficient doubt to warrant it being considered by a Full Court; and (b) whether substantial injustice would result if leave were refused, supposing the decision to be wrong.” citing Decor Corp Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 at 398 – 399 and Primary Health Care Ltd v Commonwealth [2017] FCAFC 174; 260 FCR 359 at [206].  ?

Motherland, Mothersky and Mother Read More »

ORO and CINQUE STELLE are registrable as trade marks for coffee in Australia

In what might (with respect) be seen as a surprising decision, the High Court, by majority,[1] has allowed Cantarella’s appeal and restored its trade mark registrations for ORO and CINQUE STELLE in respect of coffee to the Register of Trade Marks. Gageler J dissented and would have dismissed the appeal.

Modena, which had been importing and selling Caffe Molinari’s Oro and Cinque Stelle “brands”, was found to have infringed Cantarella’s registrations[2] but for its successful cross-claim invalidating the registrations on the grounds that the marks were not capable of distinguishing the products.[3] As a result of the High Court’s decision, therefore, this infringed Cantarella’s rights:[4]

Unknown

Some facts

Cantarella registered ORO and CINQUE STELLE as trade marks for coffeee in Australia in, respectively, 2000 and 2001. Cantarella had first started using ORO to designate one of its lines of VITTORIA coffee in 1996 and CINQUE STELLE in 2000.

Caffe Molinari has been selling its Caffe Molinari Oro blend of coffee in Italy since 1965 and its Caffe Molinari Cinque Stelle blend since 1997. Its Caffe Molinari Oro products had been imported into Australia since 1996 and the Caffe Molinari Cinque Stelle products after their introduction.

Mr Pagent, one of the principals of Modena, had been selling VITTORIA products, including ORO and CINQUE STELLE in one of his previous businessnes since the mid–1990s. After he sold those businesses, through Modena he began importing and selling Caffe Molinari’s products in the UK and then, from 2009, in Australia. By the time the litigation started, there were literally “dozens” of “ORO” coffee brands in the market.

The legal question

In the High Court, the question was whether ORO and CINQUE STELLE iwere “capable of distinguishing” Cantarella’s coffee products under s 41.[5] That in turn turned on whether each was “inherently adapated to distinguish [coffee] … from the [coffee products] … of other persons”.

Both the majority and Gageler J agreed that “inherently adapted to distinguish” was to be interpreted in accordance with the longstanding case law and the statement of the basic test from the Clark Equipment case. That is:

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.

The words in italics were emphasised by the majority. Their Honours held that those italicised words imposed an additional and limiting requirement to the test for signs which lacked inherent adaptation to distinguish. It was not enough that another trader might with improper motives wish to use the sign, the sign must also have direct reference to the quality or some other characteristic of the products in question. So, at [59], French CJ, Hayne, Crennan and Kiefel JJ said:

The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

In the case of foreign words, as here, their meaning translated into English was relevant, but not necessarily critical.[6] What was critical was the meaning conveyed by the foreign term, if any, to those “who will be concerned with the relevant goods”. That is, what is the ordinary meaning, if anything, of that foreign word or expression to those in Australia who will purchase, consume or trade in the relevant products?

Then, at [71], their Honours explained:

…. Once the “ordinary signification” of a word, English or foreign, [if any, to those in Australia who purchase or consume or trade in such products] is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly[90]. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it[91]. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish. (footnote citations omitted)

The problem (for Modena) in this case is that apparently there are only 350,000 people in Australia speaking Italian at home.[7] However, the trial judge found:[8]

only a “very small minority” of English speakers in Australia would understand the meaning of the words, and that the Italian language is not “so widely spread” that the words would be generally understood as meaning “gold” and “five stars” respectively.

As a result, the majority explained at [73]:

Like “TUB HAPPY” in respect of cotton goods, “ORO” and “CINQUE STELLE” 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.

Gageler J’s dissent

In broad terms, Gageler J, especially at [92] – [95] disagreed that the words from Clark Equipment emphasised by the majority were an additional and limiting requirement. Rather they were merely a “parenthetical reference”, a subset of the overall test which focussed:

on the extent to which the monopoly granted on registration of a trade mark would foreclose options otherwise available to rival traders acting in the ordinary course of their businesses without any desire to benefit from the applicant’s reputation.

For example, his Honour pointed out that in Clark Equipment itself, which conerned the trade mark MICHIGAN, there was no evidence that any other trader manufactured the farm machinery in question in Michigan. Indeed, as the trade mark was registered in the USA, no-one probably could.

Extraordinary or just a decision on its facts

Given the trial judge’s finding of fact, one could argue that this case is just a decision on its facts.

That overlooks the important difference in principle on how one tests inherent adaptation to distinguish between the majority and Gageler J. It is also hard to resist an impression that Gageler J’s approach adopted a broader or more “multicultural” perspective.

One consequence of the decision is that Caffe Molinari’s products, which had been imported into Australia since 1996 / 1997 have been found to infringe so many years after the event even though Cantarella’s trade marks were registered after the infringing conduct commenced.[9] Of course, as s 124 and s 44 illustrate, an assiduous infringer cannot gazump a trade mark owner.

Another “oddity”: Cantarella accepted that it could not stop Modena using QUALITA ORO, presumably because it is descriptive?

Further, by 2011, the evidence showed dozens of other traders in Australia using Oro or D’oro to identify their coffee products. These included Lavazza Qualità Oro, Caffè Incas Oro, Coffee Mio Brazil Oro …. A number of these uses appear to have predated Cantarella’s registrations. There were also one or two Five Stars or 5 Stelle and, of course, hundreds of businesses have Five Star in their names.[10]

French CJ, Hayne, Crennan and Kiefel JJ discounted these; for example at [75]:

The evidence led by Modena purporting to show that rival traders used (or desired to use) the word “oro” to directly describe their coffee products showed no more than that the word “oro” or the form “d’oro” had been employed on internet sites and coffee product packaging in respect of coffee products in a range of composite marks featuring Italian words which ostensibly were distinguishable aurally, visually and semantically. Further, the presence on the Register, before Cantarella’s trade mark “ORO” was registered, of another proprietor’s composite mark “LAVAZZA QUALITA ORO plus device” and Cantarella’s own composite mark “MEDAGLIA D’ORO” in respect of coffee products fell well short of proving that the word “oro”, standing alone, is understood in Australia by persons concerned with coffee products to be directly descriptive of the character or quality of such goods. (emphasis supplied)

One might hope that, being “distinguishable aurally, visually and semantically”, these other traders’ uses would not infringe Cantarella’s trade marks. But, putting Woolworths Metro to one side, one does not usually avoid infringement by making it clear from the surrounding circumstances that the trade source is different from, (i.e., not) the trade mark owner.[11] Correspondingly, would someone who uses “5 star” to designate its premium coffee infringe?

Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48


  1. French CJ, Hayne, Crennan and Kiefel JJ.  ?
  2. Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8.  ?
  3. Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110.  ?
  4. As the trial judge, Emmett J discussed at [130] – [144], the packaging of the Molinari products made extensive use of ORO or CINQUE STELLE alone in many other respects.  ?
  5. This was s 41 in the form as originally enacted not in its current form following the commencement of the “Raising the Bar” amendments.  ?
  6. At [48] – [49].  ?
  7. This figure was apparently taken from the 2001 Census. As Gageler J pointed out in dissent [103], even this figure made Italian the second most spoken language in Australia.  ?
  8. French CJ, Hayne, Crennan and Kiefel JJ at [61].  ?
  9. The evidence is not entirely clear about the extent, if any, to which Modena’s use was different to what Caffe Molinari originally did. Gageler J and, according to his Honour, the Full Federal Court were prepared to infer it was not relevantly different.  ?
  10. Per Gageler J at [111].  ?
  11. Saville Perfumery Ltd v June Perfect Ltd (1939) 1B IPR 440; 58 RPC 147.  ?

ORO and CINQUE STELLE are registrable as trade marks for coffee in Australia Read More »

An oro stamp and cinque stelle (or maybe not)

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.

From the transcript, it appears that neither side disputes the basic test to be applied:

[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).

  1. Cantarella Bros Pty Limited  v Modena Trading Pty Limited (S202/2013)

Transcript of special leave application here.

An oro stamp and cinque stelle (or maybe not) Read More »

A coffee free-for-all and a trade mark cancellation

Last month, the Full Court overturned the trial Judge’s ruling that Modena had infringed Cantarella’s registered trade marks for ORO and CINQUE STELLA for coffee. Instead, revoking the registrations on the basis that they were not capable of distinguishing. Barrister Sue Gatford provides another guest post explaining why.

In 2000 Cantarella, the vendor of Vittoria coffee, applied for and obtained registration in Australia and elsewhere of the Italian words ORO and CINQUE STELLE as trade marks. Translated into English ORO means GOLD and CINQUE STELLE means FIVE STAR. Cantarella had used these words (and others) in Australia for various of its coffee blends for a very long time.

An Italian company, Molinari, had used ORO and CINQUE STELLE for its coffee for a similarly long time, and since 1997 had imported that coffee into Australia. Many other coffee companies, including Lavazza and Coffee Mio, use ORO to describe one or more of their coffee products. On the evidence, no-one other than Cantarella and Molinari appear to have used CINQUE STELLE.

In 2011 Cantarella sued Modena, Molinari’s Australian importer. It alleged that the Café Molinari Oro and Café Molinari Cinque Stella products that Modena imported and sold in Australia were infringing Cantarella’s registered trade marks. The Federal Court initially agreed. Last month though, the Full Court overturned that decision and ordered the cancellation of Cantarella’s trade marks.

The judgment revisits the long standing and often quoted test, set out by Kitto J in Clark Equipment, for determining when a mark is inherently adapted to distinguish, viz:-

[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.[1]

In Clark Equipment registration of the word MICHIGAN for tractors that came from Michigan, USA was refused. The High Court considered that as Michigan was a well known manufacturing centre at a later time other traders might, without improper motive, want to use the word Michigan in describing other tractors they wanted to sell.

Similarly, the Full Court said that Italy being a common source of coffee and the Italian language having invaded the English language in the coffee sphere with words such as cappuccino, cafe latte and the like, it was likely that other traders would, without improper motive, be likely to want to use descriptive Italian words, including ORO and CINQUE STELLE, in relation to their coffee.

The Full Court considered that the trial judge put too much emphasis on the fact that Australian consumers generally (the so called “ordinary English-speaking people in Australia”) were unlikely to know what ORO and CINQUE STELLE meant. Rather, the Court said, the proper enquiry was whether other traders would want to use those words. The Full Court was less concerned than the trial judge with whether the English meaning of the words was widely understood (How many people who order a cappuccino know what the word cappuccino means in English?) but did point out that Italian was the second most widely spoken language in Australia in any event.

In terms of the appropriate legal test, the Full Court said that the reference to “the common right of the public” by Kitto J in Clark Equipment was a reference to the common right of other traders as a sub-section of the public.[2] Crucially, they found that the evidence supported a finding that ORO and CINQUE STELLA were:-

“known in the coffee trade according to their ordinary signification as words descriptive of the quality of coffee products and have been used in that sense, although not as trade marks, for a significant period of time extending well before Cantarella’s registration of its marks and afterwards”.[3]

Interestingly, the Court did not differentiate between the evidence of the use by other traders of ORO (there were many) and the evidence as to the use by other traders of CINQUE STELLE (there were none). This is perhaps because the test is what other traders might want to do, not what they have actually done. So while proof of actual use is convincing proof of a (fulfilled) desire to use, an absence of actual use is equivocal – it may just mean that other traders haven’t as yet decided to use the particular word or words, not that they won’t ever decide to use them.

So it would seem that the Australian coffee world can resume use of the descriptive splendour of the Italian language without fear of trade mark infringement for the time being. The Clark Equipment test as clarified by the Full Court in Modena is also alive and well.

Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110 (Mansfield, Jacobson & Gilmour JJ)


  1. Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 51 at 514.  ?
  2. Modena at [74].  ?
  3. Modena at [97].  ?

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