• Steve Davey

Will my trade mark be distinctive if it contains descriptive words in a foreign language?


A trade mark has to be distinctive in order to function as a trade mark. It cannot contain terms which traders generally use to describe characteristics of their products or services.

If you use entirely descriptive terms in a common foreign language, then it is likely that your trade mark won't be registered or your registration could be revoked for lack of distinctiveness.

For example, if you branded your trade mark "Il Meglio", which means "the best" in Italian, then other traders should also be able to use those terms to describe their products, and your trade mark won't be registrable or your registration could be revoked.

In the High Court case of Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, the question was whether the trade marks "Cinque Stelle" and "Oro" were inherently adapted to distinguish one coffee brand from another. "Cinque Stelle" is Italian for "Five Stars" and "Oro" is Italian for "Gold."

The trade mark registrations were owned by Cantarella Bros. Modena was found to have infringed these registrations, but argued that "Cinque Stelle" and "Oro" are merely laudatory terms which should be available to all traders.

In the initial court case, Justice Emmett disagreed with Modena. He found that the terms were inherently adapted to distinguish as they would not be generally understood by Australians. The case was appealed to the Full Federal Court, but it disagreed with Justice Emmett. The case was then appealed to the High Court, which agreed with Justice Emmett.

The High Court found that Oro and Cinque Stelle do not convey an idea which is sufficiently tangible to amount to a direct reference to the characteristics of the goods. Coffee traders could use easily use other terms to describe the premium nature of their products. The test is not what the foreign words mean when translated into English, the test is how those words are understood by the target audience.

Accordingly, the trade mark registrations for "Oro" and "Cinque Stelle" were allowed to remain on the register and Modena was left without a defence to infringement.

#trademarks

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