Trade marks exist in the minds of consumers

The recent high court case of Modena Trading Pty Ltd v Cantarella Bros Pty Ltd considered

The principal role of a trade mark is to assist consumers find the products of certain manufacturers they know and like and which they expect to have certain characteristics .In Re Powell's Trade-Mark, Bowen J explained the function of a trade mark in the following way1:

"The function of a trade-mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods - to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market." This primary role of a trade mark is recognized in Section 17 of the Trade Marks Act 1995, which defines a trade mark as follows:

"A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person". Consistent with this, section 41(3) of the Act requires the Registrar of Trade Marks to consider the degree to which a sign is inherently adapted to distinguish the designated goods from the goods of others before registering it as a trade mark.

However, it is now understood by business and brand strategists that a successful trade mark can also have an important marketing function. Words carry their own intrinsic meaning and a trade mark can be an extremely effective compressed means of conveying information to the target market (which is essentially the general public for consumer products like coffee) about the benefits offered by product. Consumers can take a long time to comprehend marketing communications, but brand meaning can be conveyed through a suitable trade mark within a few seconds.

It is because of this marketing advantage that many businesses adopt trade marks that describe the attributes of the product to which they are applied (i.e. the "brand proposition"). However, in their eagerness to unambiguously communicate the brand proposition the primary role of the trade mark. When it is too descriptive the trade mark no longer functions to differentiate the product and, in terms of the Act, cannot be registered as a trade mark.

A trade mark, inextricably connects a product with the consumer in these ways and so how consumers recognise, interpret and assimilate the information conveyed by any trade mark is critical to the fundamental role of a trade mark and its capacity to distinguish.

The recent High Court Decision of Cantarella Bros Pty Limited v Modena Trading Pty Limited2 confirmed the importance of considering a trade mark's capacity to distinguish from the consumer's point of view.

A key issue in the case was whether the Italian terms ORO and CINQUE STELLE were too descriptive to be registered as trade marks and specifically whether the term" inherently adapted to distinguish" in section 41 of the Act requires a consideration of what the ordinary signification or meaning of words would be to the ordinary Australian consumer.

Facts

This case, involved use of the product sub brands ORO and CINQUE STELLE

Cantarella has sold its ORO and CINQUE STELLE branded coffee in Australia since 1996 and 2000 respectively. It owned registered trade marks for both. "Oro" and "Cinque Stelle" are Italian words which translate in English to "Gold and "Five Stars" respectively. As suggested by the name itself, Cinque Stelle was promoted to the fine dining and first class traveller segments as a premium blend.

In late 2009 Modena began distributing "CAFFÈ...