14 Mar 2014

Foreign word trade marks: Cantarella granted application for special leave to appeal to High Court

by Mary Still, Dean Gerakiteys

The Cantarella Brothers case promises to be a major decision on trade marks.

Can foreign word marks be inherently adapted to distinguish goods for the purposes of the Trade Marks Act 1995, even where the foreign language in question is Italian? This has been a live question since the decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8, which said yes.

This was reversed by the Full Court of the Federal Court in September 2013, which unanimously found that the marks in question were not inherently adapted to distinguish Cantarella's goods from the goods of other traders of the kind to which the marks related, namely coffee products.

On 14 March 2014 Cantarella's application for special leave to appeal to the High Court of Australia was granted. We expect that this appeal will take place in mid-2014.

More broadly, it's also the first opportunity the High Court has had to consider a trade mark dispute since E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15.

Clayton Utz is acting for Cantarella Bros. 

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.