Non Parlo Inglese - Australian High Court Takes on Foreign Words as Trademarks

As the world's become evermore global, the mixing of different cultures, conventions and languages is completely inevitable. With this intermingling comes variety and novelty in expression, yet another perspective in this is added confusion and the potential for a well-known foreign brand to be completely overlooked or missed in these new markets with their introduction through immigrants or other people who wish to have access to these goods or services, especially if the mark in question is in a language not commonly used in that new country. This in mind, as trademarks have to distinguish specific goods or services, can a foreign mark achieve this and be considered a trademark, or will the language barrier potentially deter their use in a country? Luckily this matter was recently brought to the Australian High Court, which ultimately decided the fate of foreign marks in Australia, and whether they can inherently distinguish the goods or services provided.

The case in question was Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, which dealt with the ever-loved subject matter of coffee. The claim dealt with two registered trademarks held by Cantarella Bros, an Italian coffee company: Australian Trademark 829098 "ORO" ('gold' in Italian) and 878231 "CINQUE STELLE" ('five stars' in Italian). Modena, an importer of Italian coffee, used similar marks indicating their coffee products, including both of the marks in question, using them in conjunction with their coffee brands as marks of quality.  Modena argued, after being sued for trademark infringement by Cantarella Bros, that the marks are merely signs of quality and cannot inherently distinguish Cantarella's products from others, and therefore be valid trademarks.

The question hinged largely on the Australian Trade Marks Act 1995, more specifically section 41, under which a trademark has to be "...inherently adapted to distinguish the designated goods ...from the goods ...of other persons". If the mark does not do so, due to it being merely descriptive for example, it will be deemed an invalid mark. The High Court saw that the question which needs to be answered, basing their decision quite heavily on UK precedent, is "...an enquiry into the word's ordinary signification and whether or not it has acquired a secondary meaning". To put things in simpler terms, it is an assessment of what the word means ordinarily, and whether that particular meaning has acquired a secondary meaning, indicating a specific origin or quality of product in relation to a brand of goods or services, even if its ordinary meaning can be said to be descriptive or generic.

After a discussion of relevant precedent, the court formulated its final question regarding foreign marks:

Other languages can be very confusing

"The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the "ordinary signification" of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a "direct reference" to the relevant goods (prima facie not registrable) or makes a "covert and skilful allusion" to the relevant goods (prima facie registrable). When the "other traders" test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, "inherent adaption to distinguish" requires examination of the word itself, in the context of its proposed application to particular goods in Australia".

Effectively what the court is saying, is that the mark has to be examined so it does not impair its use unduly from other traders in a similar field (for example, trademarking the word 'fresh' in relation to bubblegum), and the end assessment is whether the public who will buy and consume that product or service will see a connection between that good or service and the provider. The reference to the goods or services has to be covert and skilful, and not a purely direct usage of that word.

Justices French, Hayne, Crennan and Kiefel, in the majority's decision, saw that, on the face of the evidence given that the marks have are not merely descriptive, and Cantarelle got to keep their trademarks. The general public were not seen as understanding the words sufficiently commonly as to convey a signature of quality, rather than an indication of origin, as there are few people in Australia who speak Italian.

To this writer the decision of the Court is an odd one, especially since the marks are, by their definition in Italian, purely descriptive, with the added issue that the marks have been commonly used even before the marks' registration. Nevertheless, the evidence produced was not enough to establish a case for Modena and the common understanding of these words, and it is hard to argue against that.

Source: Lexology