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

Friday, December 12, 2014

APP STORE not capable of distinguishing

By Kimberley Evans, Associate

Justice Yates of the Federal Court has declared that the words APP STORE are not to any extent capable of distinguishing Apple Inc.'s retail, telecommunications and computer-related services from those of other traders. This decision demonstrates the difficulty of registering a mark with descriptive connotations.


In 2008, Apple filed an application to register the trade mark APP STORE in Classes 35, 38 and 42, which claimed a Convention priority date from a corresponding application made in Trinidad and Tobago on 7 March 2008.

Friday, December 5, 2014

Delegate for a day

by James Gonczi, Associate

A recent decision of a delegate of the Registrar of Trade Marks has piqued some interest around our office. The issue arose in the context of an opposition involving the following trade marks: 

The NISON application covered a variety of goods and services such as shop fittings, refrigerator compressors, refrigerators and refrigerator installations, kitchen furniture and kitchen units, and the installation of kitchens and catering equipment. The NIKON mark is registered for an extensive range of goods and services such as  machines and machine tools, cooking, refrigerating and ventilating apparatus, installation services and repair or maintenance services for cooking apparatus for industrial purposes.

Before we tell you what the delegate thought, we wanted to know what you think. Click on the link below and, in the new page, select 'Yes' if you think the trade marks are deceptively similar or 'No' if you don't. Try to keep the following questions in mind:

  • Would you be potentially confused if confronted with both trade marks on similar goods or services?

  • Do you think both trade marks look alike?

  • Do you think that both trade marks may belong to the same owner?

  • Do you think that only someone being exceptionally careless or stupid would confuse the two trade marks?

We'll let you know what the delegate's answer after the jump.

Delegate for a day survey link

Wednesday, December 3, 2014

Are CINQUE STELLE and ORO inherently distinctive? High Court says YES

By Kimberley Evans, Associate

In a 4:1 judgement handed down this morning in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, the High Court of Australia has confirmed that the trade marks ORO and CINQUE STELLE (respectively, 'gold' and 'five stars' in Italian) are inherently adapted to distinguish coffee goods in Australia.


Earlier this year, trade mark owner Cantarella took its battle

with Modena over its registered trade marks CINQUE STELLE and ORO (in relation to coffee) to the High Court. CINQUE STELLE means 'five stars' in Italian, and ORO means 'gold'. Cantarella had sued for trade mark infringement. Modena had denied liability, saying that its use of CINQUE STELLE and ORO was in good faith to indicate the characteristics of the coffee products, and cross-claimed to cancel the marks. Cantarella won at first instance, but on appeal the Full Federal Court reversed the decision and ordered Cantarella's trade marks to be cancelled. Cantarella then sought leave to appeal the decision before the High Court, asking the court to consider the inherent distinctiveness of trade marks consisting of foreign words with laudatory qualities.