Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Wednesday, November 6, 2013

All that glitters, part 2: when five stars is not good enough

By James Gonczi, Lawyer

For coffee enthusiasts, we bring an update on a recent dispute over the CINQUE STELLE and ORO trade marks owned by Cantarella Bros Pty Ltd, of 'VITTORIA' brand fame. 'Cinque Stelle' means 'Five Stars' in Italian. 'Oro' is the Italian word for 'Gold'.

Modena imports coffee products, some of which use the words 'Cinque Stelle' and 'Oro' on packaging and other marketing materials. Cantarella sued Modena for trade mark infringement, which Modena denied. Modena also cross claimed for cancellation or removal of the CINQUE STELLE and ORO trade mark registrations on various grounds, including that they were not inherently adapted to distinguish Cantarella's products from those of other traders.

First instance decision

Justice Emmett found that there was infringement and rejected Modena's cross claim. Modena had argued that 'Cinque Stelle' and 'Oro' are words that other traders might, without improper motive, want to use as 'varietal indicators' in relation to Italian-style coffee products. Justice Emmett concluded that the words were adapted to distinguish on the basis that Italian language usage was not so widespread in Australia that the words 'Cinque Stelle' and 'Oro' would be sufficiently well understood. However, and this was relevant on appeal, Justice Emmett concluded that, unlike their Italian counterparts, the English words 'FIVE STARS' and 'GOLD' would not be likely to be distinctive in relation to coffee products.

Decision on appeal overturned

On appeal, the Full Federal Court took a different view on whether CINQUE STELLE and ORO are inherently adapted to distinguish, pointing out that Italian is the second most used language in Australia after English, in terms of languages spoken in the home. The Full Court also noted the enormous growth of the coffee culture in Australia, including importation of coffee products from Italy. Further, other coffee traders had already used CINQUE STELLE and ORO in relation to their products. Lastly, it is the practice of the Australian Trade Mark Office that where a word would not be registrable in its English form, a similar objection should exist to any foreign language version of that word. 

The Full Court noted the decision of Kitto J in Clark Equipment Co v Registrar of Trademarks (1964) 111 CLR 511:

the question whether a mark is inherently 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 motive – 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 otherwise infringe a registered trade mark granted in respect of it.

Having concluded that the words CINQUE STELLE and ORO were not inherently adapted to distinguish, the Full Court ordered that the registrations be cancelled.

So, some fundamental laws: the hopper must be empty, the crema must be elastic, espresso must be stirred three times… and now … 'Gold' and 'Five Stars' are not good enough to distinguish the beans of one trader from those of another (unless the High Court says otherwise)*.

*  The High Court, if so minded, will probably only opine on this latter question rather than re-write all laws of coffee – grazie al cielo ('thank goodness').

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