Cantarella Bros Pty Limited v Modena Trading Pty Limited  FCA 8 (13 February 2013)
Cantarella Bros Pty Limited v Modena Trading Pty Limited (No 2)  FCA 130 (25 February 2013)
Modena’s use of ORO and CINQUE STELLE for coffee infringed Cantarella’s trade mark registrations for these words. These were valid registrations despite being for Italian words having meanings of GOLD and FIVE STAR. In use, Cantarella’s VITTORIA trade mark appeared in conjunction with the words ORO and CINQUE STELLE, whereas Modena used its CAFFE MOLINARI trade mark in proximity to the words ORO and CINQUE STELLE. Nonetheless, in the context in which they appeared, these words functioned as trade marks and not descriptively as an indication of quality. Significantly, the judge found that Modena’s conduct did not also constitute misleading or deceptive conduct under the former Trade Practices Act or the current Australian Consumer Law, or passing off at common law. The judge was not persuaded there was a separate goodwill in the words ORO and CINQUE STELLE. It was also significant that Modena always used these words in conjunction with CAFFE MOLINARI.
This case highlights the benefits of trade mark registration and the advantage of an action for infringement. Unfortunately for Cantarella, the judge was not persuaded that it suffered any loss or damage by reason of the infringement (and Cantarella did not pursue an account of profits). Consequently, the only relief granted was an order restraining the infringing conduct in the future, but Cantarella did subsequently obtain an order for most of its costs.