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Selected cases

High Court of Australia · [2014] HCA 48

Cantarella v Modena

A High Court trade mark case about whether Italian words for coffee products were distinctive enough to be registered.

High Court of Australia3 Dec 2014

Plain-English explainers, not legal advice. Check the linked official source before you rely on a specific section, and get advice for your situation.

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Quick read

  • Brand names do not have to be invented words to be registrable, but descriptive or foreign-language words need careful clearance.
  • A High Court trade mark case about whether Italian words for coffee products were distinctive enough to be registered.

Use this to check

  • Foreign-language words can be registrable where ordinary Australian consumers do not read them as descriptive.
  • Distinctiveness is assessed for the relevant goods and market.
  • Brand clearance should consider likely competitor use, not only exact matches.

Decision snapshot

  1. 1

    What happened

    • Cantarella registered the Italian words ORO and CINQUE STELLE as trade marks for coffee products.
    • Modena imported and sold coffee using those words, arguing the marks should not have been registered because they were descriptive Italian words meaning gold and five stars.
    • The dispute turned on whether those words were inherently adapted to distinguish Cantarella's goods in Australia.
  2. 2

    What the court had to decide

    • The High Court had to decide whether the marks were inherently adapted to distinguish Cantarella's coffee goods.
    • That required considering the ordinary signification of the words to people in Australia who would purchase, consume or trade in the goods.
  3. 3

    What the court decided

    • The High Court allowed Cantarella's appeal and held the marks were inherently adapted to distinguish the goods.
    • The decision remains a leading Australian authority on distinctiveness and ordinary signification for trade mark registration.

Practical impact

Practical read

  • Brand names do not have to be invented words to be registrable, but descriptive or foreign-language words need careful clearance.
  • The question is how ordinary Australian consumers would understand the word in context.

Useful next steps

  • Foreign-language words can be registrable where ordinary Australian consumers do not read them as descriptive.
  • Distinctiveness is assessed for the relevant goods and market.
  • Brand clearance should consider likely competitor use, not only exact matches.
  • Check how your proposed brand would be understood by ordinary Australian customers.
  • Search competitor use of the word in the same product category.

Practical read

Cantarella is a naming case for founders who like elegant words, foreign words or words that hint at quality. The fight was not simply about what the words meant in Italian. The Court asked how the words would be understood by ordinary Australian consumers of the goods.

The business lesson is that trade mark clearance is not a dictionary exercise. A word can be descriptive to some people and still distinctive in the relevant Australian market, but that depends on evidence, the goods and how traders in the market are likely to use the word.

Checks to run

Key points

  • Check how your proposed brand would be understood by ordinary Australian customers.
  • Search competitor use of the word in the same product category.
  • Be careful with words that describe quality, origin, ingredients or features.
  • Get trade mark advice before building packaging and launch creative around the name.

Key takeaways

  • Foreign-language words can be registrable where ordinary Australian consumers do not read them as descriptive.
  • Distinctiveness is assessed for the relevant goods and market.
  • Brand clearance should consider likely competitor use, not only exact matches.

Related topics

IP & Brand Protection

How Sprintlaw can help

Trade Mark Registration