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

Friday, June 12, 2015

The battle for gold continues

By Nadia Guadagno, Senior Associate

The fight for the right to own ORO (which means 'gold' in Italian and Spanish) is on again – this time between biscuit and snack food companies in the EU.

You may recall that at the end of last year, the High Court ruled that Cantarella's mark ORO was inherently adapted to distinguish its coffee products from those of other traders in Australia. This was based on the finding that ORO does not convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee products. (See our Scintilla blog for a summary of the High Court's decision in Cantarella v Modena).

The position, albeit in relation to biscuits, is the same in Europe.

Kraft Foods Italia, the owner of various ORO trade marks registered in respect of biscuits and related products, opposed Nutrexpa's application to register the following trade marks in respect of similar goods.

Nutrexpa counter-argued that Kraft's ORO marks had a low distinctive character as their meaning would be understood by consumers throughout Europe.

The General Court disagreed. While Italian and Spanish consumers would understand the meaning of ORO and that it is indicative of the product being of superior quality, the average consumer elsewhere in Europe would not. The court noted that it cannot be assumed that the Portugese or French average consumer will understand the word ORO, nor that it will appreciate its signification of superior quality. Accordingly, Nutrexpa's challenge to the marks' distinctive character failed.

It is interesting that even in Europe, where the Italian and Spanish lanugages are common and well understood (clearly so in a number of countries thereof), the simple word ORO is not presumed to be understood by the average consumer and thus marks comprising the word are distinctive. While obviously those in Italy and Spain would understand the word's meaning, the court is looking at consumers in the whole of Europe. It seems that Nutrexpa, like Modena in Australia, would have been assisted by actual evidence that consumers in the various EU states do understand the meaning and signification of ORO.

At the end of the day, Kraft took home gold. The court found that Kraft's marks had the necessary distinctive character and that consumers were likely to confuse both companies' marks - so Nutrexpa's applications failed.

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