A majority of the High Court has allowed an appeal against the decision of the Full Federal Court in Modena Trading Pty Ltd v Cantarella Bros Pty Ltd. Cantarella claimed that Modena had infringed its trademarks on the terms ‘Cinque Stelle’ and ‘Oro’ (meaning, respectively, ‘five stars’ and ‘gold’ in Italian) by importing Molinari products containing those terms on the packaging. On appeal, Modena successfully argued that Cantarella’s trade marks be cancelled under s 88(1)(a) of the Trade Marks Act 1995 (Cth). The FCAFC held that the trial judge took the wrong approach to the question of distinctiveness, and resolved that question itself, holding that coffee traders were likely, in the ordinary course of business and without any improper motive, to use the terms to describe the quality of coffee (and had done so prior to Cantarella’s registration of the terms in 2000 and 2001). The words were therefore not distinctive.

The only issue on appeal to the High Court was whether Cantarella’s trade marks of Cinque Stelle and Oro are ‘inherently adapted to distinguish’ Cantarella’s products within the meaning of s 41(3). A majority of the High Court (French CJ, Hayne, Crennan and Kiefel JJ) held that they were. After surveying several relevant UK and Australian decisions (see [35]ff), the Court stated that interpreting s 41(3) required examining the ‘ordinary signification’ of the words to people in Australia concerned with the goods in question (see [70] and [71]). The ‘ordinary signification’ of the Cinque Stelle and Oro did not convey a meaning or idea that was sufficiently tangible to anyone in Australia as directly referring to the character or quality of the goods (at [73]), and evidence led by Modena failed to show that honest traders might legitimately use those words to describe the character or quality of their goods. Gageler J agreed with the FCAFC’s construction of s 41, and would have dismissed the appeal.