Cantarella Bros Pty Ltd v Modena Trading Pty Ltd

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.

High Court Judgment [2014] HCA 48 3 December 2014
Result Appeal allowed
High Court Documents Modena Trading
Full Court Hearing [2014] HCATrans 157  5 August 2014
Special Leave Hearing [2014] HCATrans 53 14 March 2014
Appeal from FCAFC [2013] FCAFC 110 30 September 2013
Trial Judgment FCA
[2013] FCA 8 13 February 2013
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About Martin Clark

Martin Clark is a PhD Candidate and Judge Dame Rosalyn Higgins Scholar at the London School of Economics and Political Science and Research Fellow at Melbourne Law School. He holds honours degrees in law, history and philosophy from the University of Melbourne, and an MPhil in Law from MLS. While at MLS, he worked as a researcher for several senior faculty members, was a 2012 Editor of the Melbourne Journal of International Law, tutor at MLS and various colleges, a Jessie Legatt Scholar, and attended the Center for Transnational Legal Studies Program.