Foreign words may be validly used as trademarks


In Cantarella Bros Pty Limited v Modena Trading Pty Limited ([2013] FCA 8, February 13 2013), the Federal Court of Australia has upheld a claim of trademark infringement by coffee guru Cantarella Bros Pty Limited against Modena Trading Pty Limited in relation to coffee products, and dismissed all cross claims. This case verified that foreign words may be validly used as trademarks in the right context.

The applicant, Cantarella, is registered as the owner of Australian trademarks 878231 (CINQUE STELLE) and 829098 (ORO) for goods in Class 30 of the Nice Classification, including coffee products. These trademarks were registered on March 24 2000 and June 6 2001, respectively (but had been used since 1996 and 2000).

The respondent, Modena, is incorporated in Australia, and has imported Australian coffee products supplied by the Italian corporation, Caffe Molinari SpA, since 2009. Molinari has produced coffee under the names 'Caffe Molinari Cinque Stelle', 'Caffe Molinari Cinque Stelle 100 per cent Arabica', and 'Caffe Molinari Oro' (subsequently rebranded as 'Caffe Molinari Qualita Oro' in 2011).  

Cantarella filed an application on February 10 2011 asserting that Modena had infringed its trademarks and contravened the Trade Practices Act 1974 (Cth) and the Australian Consumer Law. Modena defended these claims and further cross-claimed that the trademarks were invalid and should be removed from the register.

Cantarella asserted that, since 2009, Modena had offered for sale, and sold, products that used the words 'Cinque Stelle' and 'Oro' prominently on its packaging as a sub-brand and as a trademark.

In finding that use by Modena had infringed Cantarella's trademarks, Emmett J held that, although Modena often used the marks in conjunction with the trademark CAFFE MOLINARI, an analysis of the packaging and the company website showed use of the words separately as distinguishing the product and as a badge of origin for the brand.

The court held that, even if Modena did not intend to make deliberate use of any goodwill in Cantarella's products, they were not entitled to a defence under Section 122 of the Trademarks Act 1995 (Cth).

The court rejected Modena's claim of invalidity, finding that use of the words 'Cinque Stelle' and 'Oro' were used as trademarks and adapted to distinguish Cantarella's goods from those of other persons.

'Cinque Stelle' is noted on Cantarella's registration as being the English translation of the Italian phrase 'five star'. While a translation is not listed for 'Oro', it is commonly known as meaning 'gold'. Modena claimed that the Cantarella's marks were invalid as use of these words is commonly used in business names in Australia to describe the quality of the goods and did not distinguish Cantarella's products. Modena provided examples of other coffee packaging displaying similar terms.

In analysing the validity of using foreign words as trademarks, the court considered whether the particular foreign words are sufficiently well understood in Australia. Emmett J held that the words 'Cinque Stelle' and 'Oro' were not so obvious to ordinary English-speaking persons in Australia that they had a specific meaning.

Modena also unsuccessfully asserted that Cantarella's marks were only being used to distinguish between products in Cantarella's Vittoria range rather than between products in the market at large.

Cantarella claimed that Modena's use of the MOLINARI marks would confuse customers who, due to the similarity with Cantarella's marks, would not necessarily understand that they had different origins. Cantarella asserted that it had an established reputation in Australia due to extensive use and brand awareness campaigns including an advertisement featuring Al Pacino.

The court held that Modena's use of Cantarella's marks did not give rise to representations contravening Australian consumer protection law, having considered whether there was an impression of deceptive similarity (according to a person or ordinary intelligence and memory and allowing for imperfection based on recollection of the two marks).

It was also held that there was no separate good will in each of Cantarella's marks and that the allegation of passing off was not established.

The court granted an injunction restraining Modena from future use of the marks. It rejected Cantarella's request for damages for past infringement and loss of reputation, but awarded Cantarella costs as it was "substantially successful".

Jessica Norgard and Lisa Ritson, Ashurst Australia, Sydney

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