In Cantarella Bros Pty Limited v Modena Trading Pty Limited the High Court made a finding on when words used as trade marks can be inherently adapted to distinguish goods of one trader from another. The expression “inherently adapted to distinguish” first appeared in the UK Trade Marks Act 1938 and made it into Australian legislation by way of the Trade Marks Act 1955.
Cantarella had registered ORO and CINQUE STELLE in respect of various coffee products in class 30. After Modena made use of the marks, which mean ‘gold’ and ‘five stars’ respectively in Italian, Cantarella initiated infringement proceedings, while Modena cross-claimed for cancellation on the basis that the marks are not inherently adapted to distinguish the goods for which they are registered. Cantarella succeeded in its infringement action before the Federal Court, but this was overturned by the Full Court of the Federal Court, who held that the registrations should be cancelled.
A point of contention in the High Court proceedings was the correct test to be applied for determining when words being used as a mark are inherently adapted to distinguish. Cantarella favoured previous High Court precedent, which applied the following test:
“by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – 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 infringe a registered trade mark granted in respect of it.”
However, Modena favoured the earlier UK House of Lords precedent in the W & G Du Cros case, which held that the registrability of a trade mark as distinctive should:
“largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.”
In its majority decision the High Court applied its previous precedent, including the Mark Foy’s TUB HAPPY case, to hold that determination of words inherent adaption to distinguish requires consideration of the ordinary signification of the words to persons in Australia concerned with the goods to which the trade mark is to be applied. Whereas the Full Court criticised the Federal Court Judge’s view of common heritage and ordinary signification as ‘Anglo-centric’, the High Court considered the Full Court had wrongly found that the evidence showed the words to be words that other traders have and were likely to want to use in trade.
The Court found that ORO and CINQUE STELLE were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. Accordingly, the Court held that the trade marks were inherently adapted to distinguish the goods for which they were registered from the goods of other traders.
