Modena Trading Pty Ltd v Cantarella Bros Pty Ltd  FCAFC 110 (30 September 2013)
Successful appeal by Modena overturning decision of primary judge finding infringement of Cantarella’s trade mark registrations for ORO and CINQUE STELLE for coffee. The Full Court ordered these registrations to be cancelled.
As reported previously, the trial judge, Emmett J held that Cantarella’s ORO and CINQUE STELLE trade marks were distinctive and validly registered. Consideration was given to the extent of Italian speakers in Australia and his Honour concluded that only a very small minority of ordinary English-speaking people in Australia would understand the allusions made by the words Cinque Stelle and Oro. His Honour was not persuaded that the Italian language is so widely spread that the conclusion should be drawn that these words would be generally understood as meaning “Five Stars” and “Gold” respectively. The Full Court considered this approach was wrong.
Cantarella used CINQUE STELLE and ORO for specific blends of coffee from 1996 and 2000 respectively. Such use was in conjunction with its Vittoria house mark.
Caffè Molinari SpA began exporting ORO and CINQUE STELLE coffee to Australia from about July 1996 and October 1998 respectively. These coffee products also carried the Caffe Molinari house mark. Modena became the exclusive Australian distributor for Modena in November 2009.
Significantly, other coffee traders had used the Italian words “Oro” and “Cinque Stelle” which were known in the coffee trade as words descriptive of the quality of the coffee products and used in that sense, although not as trade marks, for a significant period of time extending well before Cantarella’s registration of its marks and afterwards. This was particularly relevant to the enquiry as to whether other traders might wish to use these words.
The Full Court was satisfied that Cantarella’s ORO and CINQUE STELLE trade marks are not inherently adapted to distinguish the designated goods from those of other traders, notwithstanding that they may well distinguish goods within Cantarella’s range from other goods in that range.
The Full Court also concluded the trial judge was in error in finding that Cantarella has used and is using “Oro” and “Cinque Stelle” as trade marks.