Best Australian trade mark cases of 2013-2014

In 2013, the Federal Court of Australia has provided useful guidance on some key aspects of trade mark infringement and protection including:

how registrability of trade marks consisting of foreign language words should be assessed (but stay tuned because this case has now gone to the High Court) the Court's attitude to survey evidence (don't bother?) when an application will be considered to be lodged in bad faith; and application of the infringement defence of use of own name in good faith to an Australian importer Unlike the bumper year of 2012, there were no cases addressing the vexed issue of parallel importation and application of the trade mark with the owner's consent.

We hope you enjoy our annual roundup of the key cases for 2013, with a small foray into decisions in early 2014.

Distinctiveness test for foreign language marks: Modena Trading v Cantarella Bros (2013) 215 FCR 16 (FCAFC) Background

Cantarella was the registered owner of trade mark no. 829098 for the word ORO and 878231 for the words CINQUE STELLE in respect of a variety of coffee products. In the Italian language, the word "oro" means "gold" and the words "cinque stelle" mean five stars.

Modena imported coffee in packaging bearing the words "oro" and "cinque stelle". That coffee was produced by Caffè Molinari SpA, an Italian company.

Cantarella sued Modena for infringement of its ORO and CINQUE STELLE trade marks.

At first instance, the trial judge rejected Modena's challenge to the validity of the trade marks based on non-distinctiveness and upheld Cantarella's trade mark infringement claim.

Distinctiveness

On appeal, the Full Court of the Federal Court held that the trial judge erred in adopting a test that distinctiveness for foreign language marks should be assessed by the probability that ordinary persons would understand the foreign words.

The Full Court affirmed the classic test of distinctiveness stated by Justice Kitto in Clark Equipment v Registrar of Trade Marks, namely:

"[T]he likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it." That test requires a practical evaluative judgment about the effects of a trade mark in the real world. Whether consumers know the meaning of a foreign word is only relevant insofar as it informs the likelihood of traders wanting to use a particular word; consumer knowledge is not the focus of the inquiry.

Findings

The Full Court held that the relevant trade was the trade of coffee products from Italy. The relevant traders include Italian exporters, local importers and local distributors.

Applying the test in Clark Equipment, the Court held that the ORO and CINQUE STELLE marks were not distinctive, having regard to the following factors:

the meaning of "oro" and "cinque stelle" as signifying a product of the highest quality Australian preference for Italian-style coffee the large population of Italian speakers in Australia Cantarella uses the ORO and CINQUE STELLE marks on its highest quality coffee products other traders have used the words "oro" and "cinque stelle", the earliest since 1955 Caffè Molinari SpA have exported coffee with the words "oro" and "cinque stelle" before the filing dates of the trade mark applications for ORO and CINQUE STELLE word marks including the word "oro" had been filed well before the filing date of the trade mark application for ORO Trade Mark Office decisions have held that the English words "gold" and "five stars" are not distinctive. Accordingly, the Full Court dismissed Cantarella's trade mark infringement claim and ordered that the ORO and CINQUE STELLE trade marks be cancelled for non-distinctiveness.

Appeal to the High Court

In March 2014, the High Court granted Cantarella special leave to appeal from the Full Court's decision. At the time of writing, the appeal has not yet been heard by the High Court.

The bottom line

The take home message from this case is that distinctiveness for foreign language trade marks is assessed primarily by whether other traders in the relevant market would want to use the words, rather than whether the general public understands what the words mean.

Interlocutory injunction refused in trade mark infringement case: Snack Foods v Premier 1st (2013) 99 IPR 629 (FCA) Background

A US company, Medora, had sold POPCORNERS snack...