Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd ' How to determine "ordinary signification" of trademark

• Published date: 06 November 2023
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Piper Alderman
• Author: Mr Tim O'Callaghan and Travis Shueard

The recent decision of Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 considers the proper interpretation of the test to determine whether a trade mark holds an "ordinary signification" for members of the public, particularly foreign words.

Facts

The applicant, Cantarella Bros Pty Ltd (Cantarella) owned two registered trade marks of the word ORO in class 30 for "coffee; beverages made with a base of coffee, espresso; ready-to-drink coffee; coffee based beverages" (collectively, ORO Marks).¹

Cantarella sued Lavazza Australia Pty Ltd and Lavazza Australia OCS Pty Ltd (collectively, Lavazza), alleging that Lavazza infringed the ORO Marks.

Cantarella submitted that Lavazza used the Italian word "oro" as a trade mark in relation to coffee, and that this word was substantially identical to the ORO Marks.²

Lavazza cross-claimed that the ORO Marks were not validly registered, seeking orders that they be cancelled because:

The ORO Marks were not inherently adapted to distinguish Cantarella's goods from the goods of other persons; and

Cantarella was not the owner in Australia of the ORO word mark in respect of coffee.³

Issues

The main issues that were required to be considered by the Court were:

Did Lavazza use the word "oro" as a trade mark?

Were the ORO Marks capable of distinguishing Cantarella's goods from the goods of other traders?

Was Cantarella the owner of the ORO Marks because it was the first person to use, in Australia, those trade marks in respect of coffee?

Findings

Infringement

Yates J found that Lavazza had used the word "oro" as a trade mark on its 2016, 2019 and NCCC Product Packaging.⁴

Lavazza argued that the use of the word "oro" on its packaging was descriptive of the quality of the coffee and that "qualità oro" played a subsidiary role to the "dominant and distinctive LAVAZZA brand".⁵ His Honour reiterated the principle that 'the use of a word ... in relation to goods or services may function as a trade mark whilst nevertheless having a descriptive element'.⁶ Additionally, his Honour held that there may be more than one sign which serves to distinguish for trade mark purposes, citing Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd, where it was found that the word CAPLETS on the packaging of PANADOL and PANADEINE products was found to function as an independent trade mark.⁷

His Honour also found that the location and depiction of the word "oro" on the packaging rendered the word as one of the...