FRENCH CJ, HAYNE, CRENNAN AND KIEFEL JJ. In this appeal from a decision of the Full Court of the Federal Court of Australia the appellant, Cantarella Bros Pty Limited ("Cantarella"), seeks to restore to the Register of Trade Marks ("the Register") two of its registered trade marks ordered to be cancelled by the Full Court.
The appeal turns upon the provisions of the Trade Marks Act 1995 (Cth) ("the Act"), and the question of whether the two trade marks are "inherently adapted to distinguish" the goods for which they were registered from the goods of other persons. The question arose on a cross‑claim of the respondent, Modena Trading Pty Limited ("Modena"), claiming as an "aggrieved person" that the two trade marks were liable to be cancelled because they were not "inherently adapted to distinguish" Cantarella's goods.
In proceedings in the Federal Court seeking declaratory and injunctive relief and damages, Cantarella claimed that Modena had infringed two of its registered trade marks. The first is Australian trade mark registration No 829098 for the trade mark "ORO", registered since 24 March 2000 in class 30 in respect of "Coffee; beverages made with a base of coffee, espresso; ready‑to‑drink coffee; coffee based beverages". The second is Australian trade mark registration No 878231 for the trade mark "CINQUE STELLE", registered since 6 June 2001 in class 30 in respect of "Coffee, coffee essences and coffee extracts; coffee substitutes and extracts of coffee substitutes; coffee‑based drinks; tea, tea extracts and tea‑based drinks; cocoa, cocoa‑based preparations and drinks".
Before the primary judge, Cantarella succeeded in establishing infringement. Modena failed in its defence that it had merely used the marks as an indication of quality, and in its cross‑claim that the trade marks were not "inherently adapted to distinguish" Cantarella's goods. Modena did not appeal from the primary judge's findings concerning infringement. As to the cross‑claim, the primary judge found that, although an Italian speaker would appreciate that "oro" signifies some connection with gold, and that "cinque stelle" signifies five stars, it could not be concluded that "oro" and "cinque stelle" would generally be understood in Australia as having those meanings. Those findings were not disturbed on appeal. Rather, the Full Court said that the test of whether a mark was "inherently adapted to distinguish" certain goods turned not on what a word constituting the mark was generally understood to mean, but on whether other traders would want to use the word in connection with the same goods.
In setting aside orders made by the primary judge and ordering rectification of the Register, the Full Court purported to apply a test stated by Kitto J in Clark Equipment Co v Registrar of Trade Marks ("Clark Equipment"). A panel constituted by French CJ and Crennan J granted special leave to appeal from the whole of the judgment and orders made by the Full Court.
The only question on the appeal in this Court is whether Cantarella's trade marks "ORO" and "CINQUE STELLE" are "inherently adapted to distinguish" Cantarella's goods within the meaning of s 41(3) of the Act.
For the reasons which follow, the appeal to this Court should be allowed and the orders made by the Full Court, including the order for rectification of the Register, should be set aside.
The facts
Both Cantarella and Modena advertise, offer for sale and sell coffee products in the Australian coffee industry.
Cantarella
Cantarella has, since 1958, imported raw coffee beans sourced globally, which are then roasted, ground, and packaged under the registered trade marks "VITTORIA", "AURORA", "DELTA" and "CHICCO D'ORO". Evidence of the state of the Register on 25 May 2011 showed that Cantarella was the registered proprietor of the trade mark "ORO NERO", registered in class 30 in respect of goods which included "coffee", and the composite trade marks "MEDAGLIA D'ORO", registered in classes 29, 30 and 32 for a variety of foodstuffs and beverages, and "CHICCO D'ORO", registered in class 30 in respect of "coffee". Each of these registrations preceded the registration for "ORO" on its own.
The trade marks "ORO" and "CINQUE STELLE" are used by Cantarella in relation to specific coffee blends. There was no issue at trial that the trade marks "ORO" and "CINQUE STELLE" are in fact distinctive of Cantarella's goods. Each registered trade mark is used by Cantarella not only in Australia, but also in other countries, and Cantarella's trade marks are registered in many of those countries.
Modena
Modena imports coffee from Molinari, a company based in central northern Italy. Molinari has, since 1965, produced a blend of coffee using the marks "CAFFÈ MOLINARI" and "ORO". Molinari exports globally, and began exporting products to Australia in about July 1996. From 1996 to 2009, various businesses distributed Molinari products in Australia, using the marks "CAFFÈ MOLINARI" together with "ORO" (from 1996) and "CAFFÈ MOLINARI" together with "CINQUE STELLE" (from 1998). In November 2009, Modena was appointed as Molinari's exclusive Australian distributor. During the period December 2009 to June 2011, Modena distributed various Molinari products, under and by reference to the abovementioned marks used by Molinari. Approximately 18 months before the trial Molinari ceased using the mark "ORO" on its own on its coffee products and substituted the phrase "QUALITÀ ORO", about which Cantarella has no complaint. Further, "CINQUE STELLE" has come to be used by Molinari in respect of its premium blend of coffee.
Other matters
There was evidence at trial that coffee products were advertised, offered for sale and sold by companies operating in the coffee industry other than Cantarella and Modena, under and by reference to composite marks which included the Italian word "oro" or the form "d'oro" or the expression "five star" and, in one instance, the word "stelle". That included evidence of the state of the Register led by Cantarella, and evidence of screen shots and packaging samples relied on by Modena.
Only Cantarella and Modena used "cinque stelle" in respect of their coffee products. However, Modena attached significance to the circumstance that the expression "five star" was commonly employed in Australia in relation to a variety of businesses including businesses providing accommodation and hospitality services.
The proceedings were conducted on the basis that the word "oro" is an Italian word meaning "gold" and that the words "cinque stelle" are Italian words meaning "five stars". As it happens, the word "oro" is also a Spanish word meaning "gold"; Italian and Spanish are Romance languages deriving the word "oro" from the Latin noun "aurum", meaning gold.
As in English, "gold" is used in Italian as a noun and has adjectival forms. Therefore, both the word "oro" and the form "d'oro" readily combine with other words to form composite trade marks, as in Cantarella's registered trade marks "MEDAGLIA D'ORO" and "CHICCO D'ORO". This can also be seen in examples of registered trade marks of numerous other registered proprietors in evidence at trial - "LAVAZZA QUALITA ORO plus device", "CDO CASA DEL ORO plus device", "PIAZZA D'ORO plus device", "TAZZA D'ORO plus device", "STELLA D'ORO" and "CREMA D'ORO plus device" - which are registered in respect of a variety of goods, including coffee. It was not contended that these registered composite marks, which included foreign words, were deceptively similar, whether visually, aurally or semantically.
It should also be noted that the entry in the Register for Cantarella's trade mark "CINQUE STELLE" recorded that the English translation is "five star", although "cinque stelle" means "five stars" in Italian. The expression "five star" is defined in the Macquarie Dictionary as an adjective meaning excellent quality owing to its derivation from the highest rating in a system of grading hotels, restaurants and the like.
The Act
Section 17 of the Act relevantly defines a trade mark as a "sign" to distinguish one trader's goods from those of another, and "sign" is defined in s 6 to include a word, or a word plus a device. Although the Act does not set out the kinds of trade marks which are registrable, s 17 reflects the objects and policy of all Commonwealth trade marks legislation: (1) that the Register will protect distinctive trade marks; (2) that the monopoly following registration is a sufficient basis upon which to seek relief from infringement; and (3) that the likelihood of deception and confusion between trade marks should be avoided.
Sections 27, 31 and 33 of the Act govern the administrative steps required for the registration of a trade mark. Section 27 provides that a person may apply for the registration of a trade mark in respect of goods if the person claims to be the owner of the trade mark and the person is using, or intends to use, the trade mark in relation to the goods. Section 31 provides that the Registrar of Trade Marks ("the Registrar") must examine and report on whether the application has been made in accordance with the Act and whether there are grounds for rejecting it. Section 33 provides that the Registrar must, after the examination, accept the application, unless satisfied that the application has not been made in accordance with the Act or that there are grounds for rejecting the application.
Division 2 of Pt 4 of the Act (ss 39-44) specifies the grounds upon which an application to register a trade mark must be rejected. Section 41 relevantly covers one of these grounds. At the time relevant to these proceedings, s 41(2) provided that an application for registration must be rejected if the trade mark "is not capable of distinguishing the applicant's goods ... in respect of which the trade mark is sought to be registered ... from the goods ... of other persons".
Section 41(3), which is central to this appeal, stated that in deciding whether s 41(2) applies to an application the Registrar must first take into account the extent to which the trade mark "is inherently adapted to distinguish the designated goods ... from the goods ... of other persons".
Section 41(6) provided that a trade mark which lacks "inherent adaption to distinguish" may nevertheless be registered if it can be established that the extent of use before the date of application was such that factual distinctiveness could be established.
The Act effected significant changes to Australian trade mark law: earlier legislation had specified the kinds of trade marks which were registrable; for the first time in Australia, the Act only specified the kinds of trade marks which were not registrable. However, it was common ground that the provisions of the Act which specify the applications for registration which must be rejected cannot be understood fully without some reference to the interpretation of provisions in the Trade Marks Act 1905 (Cth) ("the 1905 Act") and the Trade Marks Act 1955 (Cth) ("the 1955 Act") which specified the kinds of trade marks which were registrable. This is because the statutory language which gives rise to the question on this appeal has a well-understood provenance.
Before turning to that provenance, it is worth briefly noting some additional relevant provisions. Section 88 of the Act provides for the cancelling of trade mark registrations. Section 92 provides grounds for their removal for "non‑use". A trader who uses a description of goods in good faith has a defence under s 122(1)(b) to infringement proceedings brought pursuant to s 120.
"Inherently adapted to distinguish" - s 41(3)
The Full Court recognised, correctly, that settled principles of trade mark law concerning trade marks which are registrable apply to s 41(3) of the Act, much as they applied to earlier provisions. The language of s 41(2) and (3) derives from earlier Australian trade marks legislation, which followed in many respects statutory language used in trade marks legislation in the United Kingdom.
It is convenient to start with s 26 of the 1955 Act, which relevantly provided:
"(1) For the purposes of this Act, a trade mark is not distinctive of the goods of a person unless it is adapted to distinguish goods with which that person is or may be connected in the course of trade from goods in respect of which no such connexion subsists, either generally or, where the trade mark is sought to be registered, or is registered, subject to conditions or limitations, in relation to use subject to those conditions or limitations.
(2) In determining whether a trade mark is distinctive, regard may be had to the extent to which -
(a) the trade mark is inherently adapted so to distinguish; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish."
Plainly s 41(3) of the Act derives from s 26(2)(a) of the 1955 Act. Equally plainly, the concept of a trade mark acquiring distinctiveness through use, deployed in s 41(5) and (6) of the Act, was expressed in s 26(2)(b).
In considering s 26 of the 1955 Act in Clark Equipment, Kitto J explained that whether a trade mark consisting of a word is "adapted to distinguish" certain goods is to be tested:
"by reference to the 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." (emphasis added)
The purport of the emphasised parenthesis was a particular focus of dispute before the Full Court, which dispute was reiterated in this Court.
Cantarella relied on the emphasised passage to support the proposition that the inherent adaptability of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is, the "ordinary signification") of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods, characterised by Cantarella as "the target audience".
Modena asserted that the emphasised language was not essential to the test because Lord Parker of Waddington in Registrar of Trade Marks v W & G Du Cros Ltd ("Du Cros") stated the test in terms of the likelihood that other traders might legitimately desire to use the word in connection with their goods.
The debate makes it necessary to refer to some historical matters which inform and explain the test stated by Kitto J. A consideration of those matters and relevant authorities shows that Cantarella's submissions are correct and must be accepted.
Some historical matters
In response to public pressure, the Trade Marks Registration Act 1875 (UK) first instituted a register of trade marks to overcome the limitations of passing‑off actions, which depended, for their success, on proof of reputation with the public. A grant of a monopoly under the statute simplified the costs and processes needed to protect a mark. However, significant concerns about granting a monopoly of the use of a word meant that trade marks were first admitted to registration in respect of goods in the United Kingdom on the strict condition that they consist of one or more "essential particulars". It quickly became clear that the "essential particulars", which confined the kinds of trade marks which were registrable, also operated to exclude certain distinctive marks from being properly included on the Register. This led to substantial amendment and consolidation in the Trade Marks Act 1905 (UK). Of particular relevance in that consolidation was a new s 9(5), which provided that distinctive marks other than those listed by reference to "essential particulars" could be deemed "distinctive" by the Board of Trade or the courts, provided that they satisfied a new condition - drawn from a new statutory definition of distinctiveness - that they be marks "adapted to distinguish". There was no reference to "inherent adaption" in s 9(5).
The 1905 Act, which was modelled on the Patents, Designs, and Trade Marks Act 1883 (UK) (as amended by the Patents, Designs, and Trade Marks Act 1888 (UK)), was amended in 1912 to follow the consolidation of trade mark law effected by the Trade Marks Act 1905 (UK).
Following s 9 of the Trade Marks Act 1905 (UK), s 16(1) of the 1905 Act relevantly provided that a registrable trade mark must consist of:
"(a) ...
(b) ...
(c) An invented word or invented words[];
(d) A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
(e) Any other distinctive mark [other than those which fell within the preceding paragraphs, if deemed distinctive by the Registrar, Law Officer or court]." (emphasis added)
Section 16(2) provided that "'distinctive' means adapted to distinguish the goods of the proprietor of the trade mark from those of other persons". To the extent that the meaning of a word needed to be determined for the purposes of registration, enquiries were conducted on the basis that Australia is an English speaking nation.
Relevant authorities
In the United Kingdom a trio of cases concerning the scope of the new s 9(5) of the Trade Marks Act 1905 (UK) soon came before the Court of Appeal. The enlargement of the category of registrable marks by reference to the new statutory definition of distinctiveness stirred afresh familiar anxiety about the grant of a monopoly of the use of a word. Prefacing their statements as to the legal principles to apply to the new provisions, members of the Court of Appeal confirmed that the word "direct" had been added to the provisions governing registrability in order to permit the entry on the Register of words containing a skilful, covert or allusive reference to goods. That addition gave statutory force to what had been said by Lord Macnaghten in the Solio Case. It was also explained that the words "according to its ordinary signification" had been added to deal with the difficulty that a word may have an "ordinary signification" other than as a geographical name, even though it is also the name of a place somewhere. Deeming a word having a direct reference to goods or a geographical name to be distinctive - a task now permitted under the new s 9(5) - was not to affect the bona fide use by other traders of a description of their goods or to cause confusion in view of their rights. The nature of the words or past use of them were the factors which "limited the possibility of other traders safely or honestly using the words".
After stating that "[w]ealthy traders are habitually eager to enclose part of the great common of the English language" (which echoed their Lordships in the Solio Case), Cozens‑Hardy MR explained why no monopoly could be granted under s 9(5) for laudatory epithets used as adjectives. Words such as "good" or "best" are incapable of developing a secondary meaning as indicating only an applicant's goods. Accordingly "Perfection" was not registrable as a trade mark for soap as it was a word which should be open to use by both other traders and members of the public.
Equally, no monopoly could be granted to words consisting of geographical names if their "ordinary signification" described the place of the manufacture or sale of goods. If, however, a geographical name was part of a composite mark, identified by long use as associated only with the goods of an applicant, it could be registered (as exemplified by "California Syrup of Figs" for an aperient medicine).
No monopoly could be granted to trade marks which were merely phonetic equivalents of directly descriptive words, such as "Orlwoola" for textile fabrics.
In explaining those disparate circumstances in which the "ordinary signification" of a word affected a grant of a monopoly of its use, their Lordships recognised that any word in English could prima facie be used as a trade mark but would not necessarily qualify to be registered as one. In drawing their conclusions in respect of the three trade marks under consideration, their Lordships indicated that the determination of whether a word has "direct reference" to goods (prima facie precluding a monopoly of its use) depends critically on the goods themselves, because a word containing a direct reference to goods in one trade may not convey any such direct reference to goods in another trade. An example given later was the use of the words "North Pole" for bananas.
It was thus established early in the development of trade mark law in the United Kingdom that the "ordinary signification" of any word, or words, constituting a trade mark is important, whether a challenge to the registrability of a trade mark is based on the word having a laudatory or directly descriptive meaning, or on the word being, according to its "ordinary signification", a geographical name (or, in those times, a surname).
In Du Cros, Lord Parker's speech was also directed to s 9(5) of the Trade Marks Act 1905 (UK). Lord Parker was not dealing with a word but with two applications for registration of a trade mark consisting of two letters of the alphabet joined by an ampersand. The question was whether those marks were registrable under s 9(5), being "adapted to distinguish" certain goods, as letters of the alphabet were not included in the "essential particulars" in sub‑ss (1), (2), (3) or (4) of s 9. Lord Parker said that the registrability of a trade mark as "distinctive" should:
"largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods."
As Lord Parker explained when applying the principle (since much relied upon), even though a mark may have acquired some distinctiveness through use, a person should not be given a monopoly of letters of the alphabet, which other traders may legitimately desire to use because they have the same initials.
Earlier that same year, a similar point had been made in respect of s 9(5) and the distinctiveness of a surname, which others may share and wish to use. In In re R J Lea Ltd's Application ("R J Lea") Hamilton LJ said:
"Further the Act says 'adapted to distinguish'; the mere proof or admission that a mark does in fact distinguish does not ipso facto compel the judge to deem that mark to be distinctive. It must be further 'adapted to distinguish,' which brings within the purview of his discretion the wider field of the interests of strangers and of the public."
The requirement that a proposed trade mark be examined from the point of view of the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business (Lord Parker), and from the wider point of view of the public (Hamilton LJ), has been applied to words proposed as trade marks for at least a century, irrespective of whether the words are English or foreign. The requirement has been adopted in numerous decisions of this Court dealing with words as trade marks under the 1905 Act and the 1955 Act. Those decisions show that assessing the distinctiveness of a word commonly calls for an enquiry into the word's ordinary signification and whether or not it has acquired a secondary meaning.
Foreign words
Establishing the "ordinary signification" of a trade mark consisting of a word is just as critical if the word is to be found in a dictionary of a foreign language. This is particularly so when an objection to registrability is based on an assertion that the mark is not an invented word because it makes direct reference to the character or quality of the goods in question. The Solio Case concerned the registrability of "SOLIO" for photographic papers. It had been contended that "solio" (a word in Italian and Latin) was not an invented word and moreover was a word containing a "reference" to the goods. Lord Macnaghten stated the principle to be applied to a word put forward as an invented word:
"If [a word] is an invented word, if it is 'new and freshly coined' (to adapt an old and familiar quotation), it seems to me that it is no objection that it may be traced to a foreign source, or that it may contain a covert and skilful allusion to the character or quality of the goods. I do not think that it is necessary that it should be wholly meaningless."
That was followed by Parker J (as his Lordship then was) in Philippart v William Whiteley Ltd ("the Diabolo Case") when he found a trade mark consisting of the Italian word "diabolo" unregistrable, because it applied to a well-known game in England called "the devil on two sticks", for which reason it could not be treated as an "invented word". Parker J explained:
"To be an invented word, within the meaning of the Act, a word must not only be newly coined in the sense of not being already current in the English language, but must be such as not to convey any meaning, or at any rate any obvious meaning, to ordinary Englishmen."
In Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd ("Howard"), Dixon J stated what was required for a word to qualify as an invented word. Citing Lord Macnaghten in the Solio Case, his Honour said that although a word should be:
"substantially different from any word in ordinary and common use ... [it] need not be wholly meaningless and it is not a disqualification 'that it may be traced to a foreign source or that it may contain a covert and skilful allusion to the character or quality of the goods.'"
These authorities show that it is not the meaning of a foreign word as translated which is critical, although it might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.
In Kiku Trade Mark, the Supreme Court of Ireland approved Parker J's speech in the Diabolo Case and held that the Japanese word "kiku", meaning chrysanthemum, was registrable for perfume because the word had no "direct reference" to the character or quality of the goods. The Court considered that a word which required translation could not be said to have any signification to ordinary people living in Ireland who see and hear it. That approach accords with Dixon J's statement of principle in Howard.
Words containing a reference to goods
The practical difference between a word making some "covert and skilful allusion" to the goods (prima facie registrable) and a word having a "direct reference" to goods (prima facie not registrable) is well illustrated in two Australian cases decided under the 1905 Act. Understanding the distinction is the key to resolving this appeal.
In Howard, this Court was considering whether a trade mark consisting of the word "rohoe" was registrable as an invented word in respect of agricultural implements. Parker J's reference in the Diabolo Case to a word (in that case a foreign word) having an "obvious meaning" to "ordinary Englishmen" was considered by Dixon J. Because of the special nature of the goods to which "rohoe" was to be applied, Dixon J said the question was whether the word "rohoe" would appear as an obvious contraction of "rotary hoe" and be so understood by "a farmer, a horticulturist, a trader in agricultural and horticultural implements or a person otherwise concerned with them".
By comparison, in Mark Foy's, the trade mark "TUB HAPPY" was found registrable by a majority in this Court as a trade mark having no direct reference to the character or quality of cotton garments. In agreeing with Williams J, Dixon CJ described the test for a word having "direct reference to the character or quality of the goods" as lying "in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess". His Honour considered "TUB HAPPY" to be allusive such that it did not convey a meaning or idea "sufficiently tangible" to amount to a "direct reference" to the character or quality of the goods. Citing with approval Lord Macnaghten in the Solio Case and Parker J in the Diabolo Case, Williams J illustrated why a covert and skilful allusive reference to goods does not render a word directly descriptive of goods as that expression is used in trade mark law. His Honour said the registration of "TUB HAPPY" for cotton goods did not prevent others from describing their cotton goods as having the characteristics or qualities of "washability, freshness and cheapness".
The provenance of "inherently adapted to distinguish" - s 41(3)
United Kingdom
In the United Kingdom the statutory conditions for registration of a trade mark were further liberalised by the introduction of Part B of the Register in 1919. In essence, Part B was reserved for marks not considered registrable in Part A as "adapted to distinguish", but which were nevertheless "capable of distinguishing" an applicant's goods from those of other traders. At first the British courts struggled to articulate the difference. The notion that a mark fully distinctive in fact might nevertheless not be "capable of distinguishing" in law was not easy to apply. This led to an amended and more expansive statutory definition of "distinctiveness" by reference to whether a mark was "inherently adapted to distinguish", and by reference to whether a mark had acquired distinctiveness "by reason of ... use".
In Smith Kline & French Laboratories Ltd v Sterling‑Winthrop Group Ltd, Lord Diplock referred to that first appearance of the term "inherently adapted to distinguish" in s 9(3) of the Trade Marks Act 1938 (UK) (which influenced s 26(2) of the 1955 Act and which in turn influenced s 41(3) of the Act):
"[L]ong before the reference to inherent adaptability had been incorporated in the current statutes dealing with trade marks, it had been held upon grounds of public policy that a trader ought not to be allowed to obtain by registration under the Trade Marks Act a monopoly in what other traders may legitimately desire to use. The classic statement of this doctrine is to be found in the speech of Lord Parker in [Du Cros] ... The reference to 'inherently adapted' in s 9(3) of the Consolidation Act of 1938, which was first enacted in 1937, has always been treated as giving statutory expression to the doctrine as previously stated by Lord Parker."
Australia
In Australia, the 1955 Act again followed legislation in the United Kingdom by instituting a Part B of the Register for marks "capable of becoming distinctive" of an applicant's goods (being the provisions of immediate concern in Clark Equipment and Burger King). The institution of Part B provided the context for the inclusion of the expanded definition of "distinctiveness" in s 26(1) and (2) extracted above. As explained by Gibbs J in Burger King, although the concepts and statutory language concerning Part B followed the United Kingdom, the drafting of those provisions differed.
"Ordinary signification" and "inherently adapted to distinguish"
In Faulding, this Court considered whether the registered trade mark "BARRIER", for skin creams which protected against industrial dermatitis, should be removed from the Register because the word directly described the character or quality of the goods. In the context of the general principle stated by Lord Parker in Du Cros, Kitto J said that, but for the evidence, it might have been supposed that the word "barrier" was not a word which others might wish to use in respect of the goods. However, the evidence showed that persons concerned with skin creams - persons in industry, pharmacists and other persons (ie not just rival traders) - were all persons who might have a "need for a word ['barrier'] to describe succinctly and yet exactly the essential characteristic of protection which distinguishes the whole of the relevant class of creams". Kitto J went on to explain the facts and the relevance of an enquiry into the ordinary signification of a word when deciding whether a monopoly of the use of a word granted under trade marks legislation should be withdrawn:
"[A]t least by the year of the initial registration of the appellant's trade mark (1943) the word Barrier had caught on as a word peculiarly apt, according to its ordinary signification, for descriptive use in connexion with skin protective creams, so that any trader in such creams would be very likely indeed, in the ordinary course of business and without any improper motive, to desire to use the word in order to distinguish such creams in general from creams intended for other purposes ... What matters is that at all material times the word has had such a place in the vocabulary of persons concerned with skin protective creams that according to the principle which must be applied under the Trade Marks Acts the appellant cannot be allowed a monopoly of its use in connexion with such creams."
In Clark Equipment, Kitto J considered for the purposes of registration in Part B the word "Michigan", which had acquired distinctiveness through 20 years of use in respect of the applicant's goods despite the fact that it was a geographical name of a State in America. After approving Lord Parker's test in Du Cros and Hamilton LJ's observation in R J Lea, his Honour explained that directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly because use of them as trade marks will rarely eclipse their "primary" (that is, ordinary) signification. Such a word, his Honour said, "is plainly not inherently, ie in its own nature, adapted to distinguish the applicant's goods". Traders may legitimately want to use such words in connection with their goods because of the reference they are "inherently adapted to make" to those goods. Kitto J's elaboration of the principle, derived from Lord Parker's speech in Du Cros, applies with as much force to directly descriptive words as it does to words which are, according to their ordinary signification, geographical names.
In Burger King, Gibbs J applied Kitto J's test to a directly descriptive word when his Honour declined to find "WHOPPER" registrable in Part B in respect of hamburgers. His Honour explained that "whopper" is not "inherently adapted" to distinguish hamburgers because it is an ordinary English word, apt to describe a characteristic of hamburgers, namely their size, and moreover could be used in a laudatory sense. It is because of the ordinary signification or meaning of the word "whopper" to anyone concerned with hamburgers that a rival trader might, without improper motive, desire to use "whopper" to describe that trader's hamburgers.
The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the "ordinary signification" of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a "direct reference" to the relevant goods (prima facie not registrable) or makes a "covert and skilful allusion" to the relevant goods (prima facie registrable). When the "other traders" test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, "inherent adaption to distinguish" requires examination of the word itself, in the context of its proposed application to particular goods in Australia.
The proceedings below
The primary judge
Before the primary judge, in reliance on s 41(3) of the Act, Modena contended that "oro" and "cinque stelle" were words that other traders might, without improper motive, wish to use as "varietal indicators on their Italian-style coffee products", and that the word "oro" was already used in Australia in relation to coffee by other traders. It was submitted that the words were not distinctive at their respective filing dates, and that the evidence indicated the words were commonplace in marketing generally, and particularly in relation to Italian-style coffee, in Australia. Thus it was said that the words were directly descriptive of characteristics of Cantarella's goods and that they had acquired no secondary meaning - that is, distinctiveness - in respect of Cantarella's goods.
In rejecting those arguments, the primary judge held that Cantarella's trade marks were distinctive, following authorities in this Court. The primary judge then considered the number of Italian speakers in Australia, and the degree to which the words "oro" and "cinque stelle" are understood in Australia. His Honour concluded that only a "very small minority" of English speakers in Australia would understand the meaning of the words, and that the Italian language is not "so widely spread" that the words would be generally understood as meaning "gold" and "five stars" respectively. His Honour concluded that Cantarella's trade marks "ORO" and "CINQUE STELLE" are sufficiently inherently adapted to distinguish the goods of Cantarella from the goods of other persons. The primary judge found that Modena had infringed Cantarella's trade marks, made orders to that effect, and dismissed Modena's cross-claim.
Full Court
The Full Court overturned the decision of the primary judge, holding that Cantarella's trade marks "ORO" and "CINQUE STELLE" should be cancelled and removed from the Register pursuant to s 88 of the Act.
The Full Court considered, correctly, that the applicable principle to apply, in interpreting s 41(3), had been stated by Kitto J in Clark Equipment. However, their Honours considered that the passage italicised above was a broad guiding principle, "not to be applied as though it were a statute". The Full Court considered that, in interpreting s 41(3), the primary judge had not applied the correct test and had fallen into error. Their Honours said that Kitto J's references in Clark Equipment to the "common right of the public" and the "common heritage" are "fluid and their content will vary according to the particular case" and interpreted Kitto J's reference to the "common right of the public" as referring to "members of the public who are or may become traders". Rejecting an "Anglocentric perspective" and having considered Clark Equipment as explained, the Full Court said of Cantarella's trade marks "ORO" and "CINQUE STELLE" that "[t]he words in Italian are entirely descriptive of their quality as premium coffee products" and that it was "unnecessary ... that consumers know what the words mean in English" because the "common heritage" included "traders in coffee products sourced from Italy".
Then the Full Court turned to the factual issue of "distinctiveness" and stated that "in judging the likelihood of what traders may wish to do, it is relevant to know whether or not other traders have also used the words". As to the evidence, the Full Court considered that "oro" and "cinque stelle" were Italian words signifying the highest quality, that other coffee traders had used the words "according to their ordinary signification as words descriptive of the quality of the coffee products" and that they "have been 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".
Submissions
Cantarella
On the appeal in this Court, Cantarella submitted that the primary judge approached the question of the meaning of Cantarella's trade marks "ORO" and "CINQUE STELLE" correctly, in the light of settled authority in which this Court has approved Lord Parker's speech in Du Cros and interpreted relevant provisions (prior to s 41(3)).
It was also submitted that the Full Court erred in assessing the inherent adaptability to distinguish of "ORO" and "CINQUE STELLE" by focussing on them as Italian words, as they occurred in disparate composite marks in the relevant trade (including two prior registered trade marks, one of which belonged to Cantarella), rather than determining how the words would be understood in Australia by the target audience.
Cantarella submitted that assessing whether a foreign word is inherently adapted to distinguish is no different from assessing any word in English, including invented words, for the same purpose. The first step is to ask what is the ordinary signification (ie the ordinary meaning) of a word. The second step is to test the likelihood that honest traders may wish to use the word in connection with their goods because of its ordinary meaning.
Modena
Modena sought to uphold the Full Court's reasoning by contending that the "inherent adaptability to distinguish" of a word, proposed as a trade mark, is not to be tested by whether the word has an "ordinary signification" or "ordinary meaning" or "a meaning to ordinary people". Relying particularly on Lord Parker's speech in Du Cros, Modena contended that the test is confined to whether other traders would be at least likely, in the ordinary course of their business and without any improper motive, to desire to use the word in connection with a particular product.
It was submitted that the evidence available at trial proved that it was not just likely but certain that rival traders would want to use "oro" and "cinque stelle" in connection with coffee. This was said to reflect the circumstance that Australia has large ethnic populations such that rival traders will readily want to use "oro" and "cinque stelle" in connection with coffee products because they understand Italian or because they may be importers of Italian coffee, or because they routinely use those words in connection with such products.
Interpretation of s 41(3)
In accordance with the principles established in Mark Foy's and restated in Clark Equipment, Faulding and Burger King, determining whether a trade mark is "inherently adapted to distinguish", as required by s 41(3), requires consideration of the "ordinary signification" of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.
As shown by the authorities in this Court, the consideration of the "ordinary signification" of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has "direct" reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the "ordinary signification" of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.
Application of s 41(3)
Because coffee is a commodity and a familiar beverage consumed by many, the consideration of the "ordinary signification" of the words "oro" and "cinque stelle" in Australia undertaken by the primary judge accorded with settled principles. The Full Court's rejection of what it called an "Anglocentric" approach revealed a misunderstanding of the expression "ordinary signification" as it has been used in Australia (and the United Kingdom) since at least 1905 to test the registrability of a trade mark consisting of a word or words, English or foreign.
Both Modena in argument and the Full Court in its reasons misunderstood Lord Parker's reference in Du Cros to the desire of other traders to use the same or similar mark in respect of their goods. Lord Parker was not referring to the desire of traders to use words, English or foreign, which convey an allusive or metaphorical meaning in respect of certain goods. What Lord Parker's "other traders" test means in practice is well illustrated by the fate of the marks considered in Faulding, Clark Equipment and Burger King. Like "TUB HAPPY" in respect of cotton goods, "ORO" and "CINQUE STELLE" were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods.
The evidence, relied on by Modena at trial, did not show that "ORO" and "CINQUE STELLE" should not be registered as trade marks (and should be removed from the Register as trade marks) because their registration would preclude honest rival traders from having words available to describe their coffee products either as Italian coffee products or as premium coffee products or as premium blend coffee products.
The evidence led by Modena purporting to show that rival traders used (or desired to use) the word "oro" to directly describe their coffee products showed no more than that the word "oro" or the form "d'oro" had been employed on internet sites and coffee product packaging in respect of coffee products in a range of composite marks featuring Italian words which ostensibly were distinguishable aurally, visually and semantically. Further, the presence on the Register, before Cantarella's trade mark "ORO" was registered, of another proprietor's composite mark "LAVAZZA QUALITA ORO plus device" and Cantarella's own composite mark "MEDAGLIA D'ORO" in respect of coffee products fell well short of proving that the word "oro", standing alone, is understood in Australia by persons concerned with coffee products to be directly descriptive of the character or quality of such goods.
The evidence led by Modena to show that some traders in Australia used the expression "five star" on packaging of coffee and many traders used "five star" in respect of a range of services including restaurant and accommodation services also fell well short of proving that "cinque stelle" is understood in Australia by persons concerned with coffee products to be directly descriptive of the character or quality of such goods.
Modena's complaint that the primary judge insufficiently considered the desires of rival traders to use the words "oro" or "cinque stelle" to directly describe their coffee goods was premised on a misconception that such was demonstrated by the evidence. The primary judge was right to reject Modena's submission, based on the evidence, that honest traders might legitimately wish to use the words to directly describe, or indicate, the character or quality of their goods.
Conclusion
For the reasons given, Cantarella's registered trade marks "ORO" and "CINQUE STELLE" are inherently adapted to distinguish the goods for which they are registered from the goods of other persons.
Orders
Orders should be made as follows: