Business Law: Cantarella Bros Pty Ltd

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Introduction On 30th September 2013 Cantarella Bros Pty Ltd (Cantarella) sued Modena Trading Pty Ltd (Modena) for breach of its registered trade marks ORO (the italian for “gold”) and CINQUE STELLE (the italian for “five stars”). Cantarella is the registered owner of Australian trade marks ORO and CINQUE STELLE since 2000 and 2001 respectively. Both trade marks are registered in respect of class 30 with regards to coffee and coffee-related products. Modena imports Australia coffee products supplied by Caffe Molinari SpA in Italy. Some of the products imported contain the words Oro and Cinque Stelle on their packaging, and Modena has used these words to promote and sell their imported coffee products in Australia. In relation to this case,…show more content…
The validity of the trademarks was analyses mainly on whether the words are sufficiently distinctive for the goods to be distinguished from other goods and services. Emmet J held that it does not matter per se that the english translations of Oro and Cinque Stelle would not be distinctive and therefore could not have been registered as trade marks. It is the distinctiveness of the actual italian words themselves that matters. Furthermore, Emmett J held that the words Oro and Cinque Stelle would not be generally be understood as “gold” and “five stars” in Australia. Therefore, the words are then sufficiently inherently adapted to distinguish the goods of Cantarella from the goods of others under s 41 of Trade Marks Act 1995. The lesson learnt here is, in using foreign words as a trade mark, the distinctiveness of the words are based on whether general population understood the words, which makes the English translation of the words to be irrelevant in this…show more content…
Sign is defined as any combination of any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, used as and identifying symbol. Application to register the intended sign as trade marks has to be made in accordance with the Trade Marks Act and that there are no grounds to reject it. The proposed trade mark could be rejected if it is scandalous or its use would be contrary to law, is likely to cause confusion, and is substantially identical with or deceptively similar to an existing registered trade mark. Most importantly, the proposed trade marks has to adequately distinguish the applicant’s goods or services from the goods or services of others. The registered owner of a trade mark has the exclusive right to use the trade mark, authorise other persons to use the trade mark in relation to the goods or services in respect of which the trade mark is registered. Therefore, they have the right to obtain relief if the trade mark has been infringed. They can also prevent infringing goods being
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    √ The High Court of Australia has recently heard an appeal, Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCATrans 157 (5 August 2014). The appeal was from the decision of the Full Court of the Federal Court in Modena Trading Pty Limited v Cantarella Bros Pty Limited [2013] FCAFC 110, in which the Full Federal Court upheld an appeal against the decision of Emmett J in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8. The case concerns whether the trademarks

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