28 Mar 2013
Lost in translation: When is a foreign word mark inherently adapted to distinguish?
by Mary Still, Dean Gerakiteys
Where a mark has an ordinary meaning in a foreign language, registration as a trade mark will depend upon whether the mark itself is commonly understood by Australians as having that ordinary meaning.
Foreign word marks can be inherently adapted to distinguish goods for the purposes of the Trade Marks Act 1995, even where the foreign language in question is one which is relatively common in Australia, as demonstrated by the recent Federal Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited  FCA 8.
This note deals only with that aspect of the matter relating to the Trade Marks Act 1995.
CantarellaBros Pty Limited has been the registered owner of Australian trade marks ORO and CINQUE STELLE in class 30, in respect of coffee and coffee related products, since early-2000 and mid-2001 respectively. ORO is the Italian word for “gold”. CINQUE STELLE is the Italian expression for "Five Stars”.
Modena Trading Pty Limited entered into a distribution agreement with Caffe Molinari SpA in September 2010 to import into Australia coffee products. However, several of the coffee and coffee related products within the Caffe Molinari range imported into Australia by Modena Trading bear the trade marks ORO and CINQUE STELLE.
Cantarella Bros commenced Federal Court proceedings in February 2011 seeking to restrain Modena Trading from importing for sale, selling and offering for sale coffee and coffee related products bearing the trade marks ORO and CINQUE STELLE.
Modena Trading denied these allegations and sought by way of cross-claim orders that the trade marks be cancelled or otherwise removed from the Register of Trade Marks. It argued that the marks were not inherently adapted to distinguish and did not in fact distinguish Cantarella Bros’ coffee and coffee related products from similar such goods of others.
The key issues for the Court were whether:
the marks were inherently adapted to distinguish in light of their ordinary Italian meaning;
Cantarella Bros had used the signs ORO and CINQUE STELLE as trade marks;
Modena Trading had used signs that were substantially identical with or substantially similar to the marks;
Modena Trading had been using the signs as trade marks; and
Modena Trading had been using the signs in good faith to indicate the kind, quality or other characteristic of its products (for example “gold quality” or “five star quality”).
Inherently adapted to distinguish?
Justice Emmett found that the words GOLD and FIVE STARS would not be distinctive and could not have been registered as trade marks by Cantarella Bros. However, he said that this was not the appropriate question. In respect of foreign word marks the appropriate test is whether the foreign words themselves (ORO and CINQUE STELLE) would be commonly understood in Australia.to mean "Gold" and "Five Stars", not whether the words as translated would be distinctive, nor whether the foreign language is well understood by many people in Australia.
Justice Emmett was not persuaded, on the material before him, that the Italian language was so widespread that ORO and CINQUE STELLE would be generally understood in Australia as meaning Gold and Five Stars respectively. Accordingly, both marks were capable of distinguishingCantarella Bros’ goods from the goods of others.
Used as trade marks by Cantarella Bros?
Modena had sought to argue that Cantarella Bros' use ofCINQUE STELLE andORO in conjunction with its house markVITTORIA, meant that both signs had only ever been used for the purpose of distinguishing different categories of coffee products within the VITTORIA range, such that the signs themselves had never actually been used as trade marks. Justice Emmett did not agree, finding that, notwithstanding they were being used in conjunction with the VITTORIA mark, the marks were being used as trade marks.
Used as trade marks by Modena?
Justice Emmett concluded that Modena had used signs that were substantially identical with or similar to both of the registered marks and that they were being used as trade marks in relation to products within the same class as those in which the marks were otherwise registered.
Used in good faith by Modena?
While Modena had sought to argue it had been using the marks in good faith, Justice Emmett was not persuaded that Modena had been using them simply as an indication of quality.
While he did not conclude that Modena had intended to make deliberate use of any goodwill Cantarella Bros had garnered in the marks, Justice Emmett was nonetheless persuaded that Modena was not entitled to rely on any defence that its use was in good faith.
Having found that the marks were inherently adapted to distinguish and not liable to be cancelled or removed from the Register, Justice Emmett concluded that Cantarella Bros was entitled to declarations that Modena had infringed the marks, and injunctions restraining future infringement.
The case demonstrates that where a mark has an ordinary meaning in a foreign language, whether or not it is able to be registered, and whether a registration can be maintained, will depend upon whether the mark itself is commonly understood by Australians as having that ordinary meaning.
It is irrelevant whether the words as translated would be distinctive, or whether the foreign language itself is well understood by many persons in Australia, although it is likely that this latter consideration will have some relevance to the question of whether the foreign words themselves will be commonly understood in Australia.
Modena Trading has filed a Notice of Appeal and it is expect that the appeal will be heard towards the end of 2013.
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