Earlier litigation involving the ORO word mark
264 This case takes place against the background of earlier litigation which Cantarella brought against Modena for infringement of the 098 mark and another registered trade mark - Trade Mark No. 878231 (the 231 mark) comprising the words CINQUE STELLE in class 30 for "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" (the Modena proceeding). Cantarella advanced other causes of action against Modena (for contravention of the Trade Practices Act 1974 (Cth) and the Australian Consumer Law, and for passing-off). It is not necessary for me to dwell on the fate of these causes of action.
265 Cantarella established infringement of the two marks: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8; 299 ALR 752 (Cantarella (PJ)). Modena failed in its defence that it had not used the two marks as trade marks and had only used the words "oro" and "cinque stelle" in good faith to indicate the characteristics of the coffee products the subject of the infringements.
266 Modena also failed in its cross-claim that the registrations of the two marks should be cancelled on the ground that, with reference to s 41 of the Act in its then form, the marks were not capable of distinguishing Cantarella's goods from the goods of other persons. (It is to be understood that, when referring to Cantarella's "goods" and the "goods" of other persons, I am referring to the registered goods.)
267 Modena also brought a cross-claim seeking an order that the two marks be removed from the Register on the ground of non-use. It is not necessary for me to dwell on this aspect of the cross-claim beyond noting that it failed.
268 In relation to its allegation that the two marks were not capable of distinguishing Cantarella's goods from the goods of other persons, Modena contended that, as words, "oro" and "cinque stelle" were not inherently adapted to distinguish Cantarella's goods.
269 One plank in Modena's case was that, based on data sourced from the Australian Bureau of Statistics, there were many Italian speakers or persons of Italian ancestry in Australia who would understand that "oro" and "cinque stelle" mean, respectively, "gold" and "five stars".
270 Modena argued that, just as the English translations of the words - "gold" and "five stars", respectively - would not be registrable as trade marks for the registered goods, so too the Italian words would not be registrable. This was because both the Italian words, and their English translations, were laudatory terms and, therefore, descriptive expressions that were incapable of indicating a connection in the course of trade between Cantarella and those goods.
271 At [117] and [118], the primary judge held:
117 It may be clear enough to an Italian speaker that Cinque Stelle signifies five stars and that Oro signifies some connection with gold. However, neither Cinque Stelle nor Oro means anything in English. While an educated English speaker, with some knowledge of Romance languages, or Latin, may well be able to deduce those meanings, I am not persuaded that any more than a very small minority of English-speaking people in Australia would understand the allusions made by Cinque Stelle and Oro. Modena relies on the census evidence summarised above in support of its proposition that there are sufficient numbers of Italian speakers in Australia to render the common meaning of Cinque Stelle and Oro sufficiently well understood in Australia. I am not persuaded, on the material before me, that the Italian language is so widely spread that the conclusion should be drawn that Cinque Stelle and Oro would be generally understood in Australia as having those meanings.
118 I consider that both Cinque Stelle and Oro are sufficiently inherently adapted to distinguish goods of Cantarella from goods of other persons. That is to say, the Italian words are not so obvious to ordinary English speaking persons in Australia that Cinque Stelle and Oro have a specific meaning. I am satisfied that Cinque Stelle and Oro are capable of distinguishing Cantarella's goods from the goods of other persons. Accordingly, Modena has not established a basis for cancelling either of the trade marks under s 88 of the Trade Marks Act.
272 Another plank in Modena's case (as to why the two marks were not inherently adapted to distinguish Cantarella's goods from the goods of other persons) was summarised by the primary judge (at [103]) as follows:
103 Alternatively, Modena also relies on … the proposition that there is significant and extensive use of Oro on the packaging of coffee products by persons other than Cantarella, thus indicating that Oro is not inherently adapted to distinguish the Italian-style coffee products of Cantarella. Modena says that Oro and Cinque Stelle are words that other traders might, without improper motive, want to use as varietal indicators on their Italian-style coffee products. It says that a broad range of businesses use five star or 5 star in their business names. The word oro is used extensively in relation to coffee by other traders. Accordingly, traders such as Modena should be free to use gold and five star, and the Italian translations of those words.
273 At [106], the primary judge noted:
106 Modena says that the evidence demonstrates that Oro and Cinque Stelle are commonplace words in marketing generally and are commonplace words in the marketing of Italian-style coffee in Australia. Molinari was using the words before Cantarella and has used them continuously in Italy since 1996 and 1998 respectively. Therefore, Modena says, s 41(5) simply cannot have any application.
274 At [114], the primary judge again referred to Modena's contention based on the use of "oro" and "cinque stelle" by other suppliers and distributors of coffee products in Australia. This reference was made in the context of noting, as well, Modena's contention about the number of Italian speakers in Australia or persons of Italian ancestry who would understand "oro" to mean "gold" and "cinque stelle" to mean "five stars". It is clear that, in reaching his conclusion at [118] - that both marks were capable of distinguishing Cantarella's goods from the goods of other persons - the primary judge rejected both of Modena's contentions. I draw attention to this finding because, in the present case, Lavazza submits that the primary judge's analysis of s 41 in the Modena proceeding did not deal with the question of whether "oro" lacked capacity to distinguish "due to its commonality rather than its descriptiveness". I do not accept that submission: see [409] below.
275 At [195] - [196], the primary judge concluded that injunctions against future trade mark infringement should lie, but that on the state of the evidence, damages for infringement should not be awarded. His Honour noted that no claim for an account of profits had been pressed. His Honour also concluded that Modena's cross-claim challenging the validity of the registrations in suit should be dismissed.
276 Modena appealed to a Full Court of this Court against the dismissal of its cross-claim. The Full Court allowed the appeal: Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110; 215 FCR 16. The primary judge's findings of fact were not disturbed. However, at [49], the Full Court considered that, in rejecting Modena's contention that, as words, "oro" and "cinque stelle" were not inherently adapted to distinguish Cantarella's goods from the goods of other persons, the primary judge had adopted an approach that was "not apt to the present case".
277 It is important to note that, in reaching that conclusion, the Full Court accepted that the general principle concerning whether a word mark is inherently adapted to distinguish is to be found in Kitto J's statement in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514 (Clark Equipment):
[T]he question whether a mark is adapted to distinguish 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.
278 In doing so, the Full Court rejected Modena's contention that the correct test was to be found in an arguably wider statement of principle by Kitto J in FH Faulding & Co Ltd v Imperial Chemical Industries of Australia & New Zealand Ltd (1965) 112 CLR 537 (Faulding) which omitted reference to the following important parenthetical words used in Clark Equipment (see the quote immediately above):
… 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 …
279 In rejecting Modena's contention, the Full Court noted (at [67]) that Full Courts of this Court have consistently treated Kitto J's statement in Clark Equipment as stating the general principle that informs the inquiry as to whether a word mark is inherently adapted to distinguish.
280 The Full Court noted (at [82]) that, in determining whether "oro" and "cinque stelle" were sufficiently inherently adapted to distinguish Cantarella's goods from the goods of other persons, the primary judge had posited whether the Italian words were "commonly understood" or "generally understood" in Australia by "ordinary English speaking persons" as meaning "gold" and "five stars" respectively. The Full Court reasoned (at [83]) that this approach was "not appropriate", and revealed "demonstrable error", where "common Italian words descriptive of quality" are in issue.
281 At [85], the Full Court continued:
85 There is no necessity to approach the enquiry from an Anglocentric perspective in the Australian context which has rich cultural and ethnic diversities within its population. Adopting the language of Kitto J, to accommodate this reality in the marketplace, one may consider the relevant words against the collective diverse heritage. Viewed in that way, the "common heritage" here included that of traders in coffee products sourced from Italy. Such traders may well be Italian or local importers. They may be local distributors who have in mind the large Italian speaking population in Australia as well as other Australians who, when it comes to coffee, want something with an Italian look and feel. Much of this country's coffee heritage in its language has its provenance in the Italian language e.g. caffè latte; cappuccino; affogato; caffè machiatto and espresso. It is evident that pure coffee in Australia is often associated with Italy and Italian coffee products.
282 Noting that distinctiveness is a question of fact involving contextual considerations, the Full Court said (at [88]):
88 It is unnecessary, in our opinion, that consumers know what the words mean in English. However, given that Italian is the second most spoken language in Australia, self-evidently many people in this country would in fact know what the words meant. Moreover, as the primary judge noted (at [86]), Cantarella explains on its packaging that "Oro" means "gold". Many Italian speakers would have understood the words Cinque Stelle and Oro as common Italian laudatory and therefore descriptive words.
283 The Full Court concluded (at [103]) that, by applying Clark Equipment "in a way which is apt to this particular case", "oro" and "cinque stelle" were not inherently adapted to distinguish Cantarella's goods from the goods of other persons.
284 On the day that judgment was given by the Full Court (30 September 2013), Cantarella filed its application for the 290 mark. It provided evidence of its use of the ORO word mark. The application for the 290 mark proceeded to registration with an endorsement that evidence and/or other circumstances were provided under s 41(4) of the Act.
285 Cantarella was granted special leave to appeal to the High Court from the Full Court's judgment. On appeal, the High Court, by majority (French CJ, Hayne, Crennan, and Kiefel JJ), found that, on the evidence that had been adduced in the proceeding, the 098 mark and the 231 mark were inherently adapted to distinguish Cantarella's goods from the goods of other persons. Thus, the registrations of the 098 mark and the 231 mark were valid: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337. In the following summary, I will concentrate on the majority's findings and conclusions with respect to the 098 mark.
286 The majority recorded that the evidence at trial showed that coffee products were advertised, offered for sale, and sold by other traders in the coffee industry using composite marks that included "oro" as an Italian word, including in the form "d'oro". The majority noted that "oro" is an Italian word meaning "gold". The majority noted that "oro" is also a Spanish word meaning "gold" - both languages (being Romance languages) having derived the word "oro" from the Latin "aurum" (meaning, "gold").
287 At [15], the majority said:
15 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.
288 After surveying various provisions of the Act, the majority said (at [22]):
22 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.
289 The majority noted Kitto J's statement of principle in Clark Equipment and observed that the parenthetical words used by Kitto J were not only a particular focus of the argument before the Full Court, but a matter of dispute that was reiterated in the High Court.
290 At [28] and [29], the majority said:
28 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".
29 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 stated the test in terms of the likelihood that other traders might legitimately desire to use the word in connection with their goods.
(Footnote omitted.)
291 The majority then referred to the legislative antecedents in the United Kingdom and in Australia to the present Act, in particular s 9(5) of the Trade Marks Act 1905 (UK) (on which s 16 of the Trade Marks Act 1905 (Cth) was based). Under that provision, a trade mark was registrable if it contained or consisted of at least one of certain "essential particulars" or was "any other distinctive mark". A "distinctive" mark was defined to be a mark that was "adapted to distinguish the goods of the proprietor of the trade mark from those of other persons". In determining whether a trade mark was so adapted, the extent to which a mark, in actual use, had been rendered "in fact distinctive" for the goods with respect to which it was registered or proposed to be registered, could be taken into account.
292 The majority then discussed the "trio of cases" constituted by In re Joseph Crosfield & Sons Ltd [1910] 1 Ch 130; In re California Fig Syrup Co [1910] 1 Ch 130; and In re H N Brock & Co Ltd [1910] 1 Ch 130. Their Honours also discussed In re R J Lea Ltd's Application [1913] 1 Ch 446 and Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 (Du Cros). The majority quoted the statement in Lord Parker's speech in Du Cros that the determination of whether a trade mark is "distinctive" for the purposes of s 9(5) of the Trade Marks Act 1905 (UK) 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. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.
293 This is referred to as Lord Parker's "other traders" test.
294 The majority identified two significant matters that emerged from these cases.
295 First, the majority noted (at [36] - [40]) that under s 9(5) of the Trade Marks Act 1905 (UK) the ordinary signification of a word affected whether the mark was registrable as a trade mark. If the ordinary signification of a word was: (a) directly descriptive of the goods; or (b) a laudatory epithet, used as an adjective in respect of the goods; or (c) a geographical name recognised as a place of manufacture or sale of the relevant goods; or (d) the phonetic equivalent of words that were directly descriptive of the goods; or (e) a mere surname (i.e., not represented in some distinctive style) that other traders might wish to use, then the word was not adapted to distinguish the goods of the proprietor from those of other persons.
296 In Du Cros it was held that the same result ensued under s 9(5) of the Trade Marks Act 1905 (UK) if the mark consisted of letters of the alphabet simply used as initials that other traders, without improper motives, might wish to use.
297 Secondly, the majority noted (at [41] - [44]) that, in considering whether a word mark was "adapted to distinguish" under s 9(5), it had been established that regard should be had to: (a) "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"; and (b) "the wider point of view of the public".
298 The majority then noted (at [45]) that establishing the "ordinary signification" of a trade mark consisting of a word was just as critical for a word that is found in a dictionary of a foreign language. After discussing a number of cases, the majority said (at [48]):
48 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.
299 Further, the majority noted (at [50] - [52]) that there is a practical difference between a word mark that makes some "covert and skilful illusion" to the goods and a word having a "direct reference" to goods - the former being prima facie registrable (for example, the words TUB HAPPY in respect of cotton garments (Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 (Mark Foy's)) or KIKU (a phonetic representation of the Japanese for chrysanthemum) in respect of perfume (Kiku Trade Mark [1978] FSR 246) and the latter being prima facie not registrable (for example, DIABOLO for "tops" (i.e., the toys) because it applied to a well-known game in England called "the devil on two sticks": Philippart v William Whiteley Ltd [1908] 2 Ch 274).
300 The majority then discussed the provenance of the concept of a mark being "inherently adapted to distinguish" (the concept adopted in s 41 of the Act and s 26(2)(a) of the Trade Marks Act 1955 (Cth)) and the relationship of that concept to the ordinary signification of a word that is sought to be registered as a trade mark. The majority discussed Kitto J's judgment Faulding before returning to his Honour's statement of general principle in Clark Equipment which (at [57]) the majority described as an elaboration of the principle derived from Lord Parker's speech in Du Cros. The majority also discussed Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, where Gibbs J applied Kitto J's statement of general principle.
301 At [59], the majority said:
59 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.
302 The majority said (at [63]) that the Full Court considered, correctly, that the applicable principle to apply, in interpreting s 41(3) of the Act, was Kitto J's statement in Clark Equipment.
303 At [70] and [71], their Honours said:
70 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.
71 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 inquiry 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.
(Footnotes omitted.)
304 The majority found (at [72]) that the primary judge's consideration of the ordinary significations of the words "oro" and "cinque stelle" accorded with settled principles, whereas the Full Court's rejection of what it called an "Anglocentric" approach revealed a misunderstanding of the expression "ordinary signification" as it had been used in Australia and in the United Kingdom since at least 1905.
305 At [73] - [77], the majority held:
73 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.
74 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.
75 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.
76 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.
77 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.
306 The reference in this quotation to "LAVAZZA QUALITA ORO plus device" is notable. It is a reference to the Lavazza device mark (depicted at [43] above) registered in the name of LL SpA.
307 In his dissenting judgment, Gageler J (at [80]) expressed his agreement with the Full Court's "construction and application of s 41" of the Act. His Honour reasoned (at [84]) that the concept of a mark being inherently adapted to distinguish, which originated from s 9(3) of the Trade Marks Act 1938 (UK) and was first introduced in Australia in s 26(2)(a) of the Trade Marks Act 1955 (Cth), has always been treated as giving expression to the public policy that a trader ought not be allowed to obtain, by registration, a monopoly in what other traders may legitimately desire to use: Chancellor, Masters and Scholars of the University of Oxford v Registrar of Trade Marks (1990) 24 FCR 1. His Honour observed (at [85] - [86]) that this public policy was expressed in Lord Parker's speech in Du Cros and was given "succinct authoritative expression" by Kitto J in Faulding.
308 In this connection, his Honour said (at [94]) that the test in Faulding:
is not exhausted by an inquiry into the intrinsic capacity of a word or other sign to acquire connotations which would in fact distinguish the goods or services of an applicant for registration from the goods or services of rival traders. … [T]he test is not exhausted by an inquiry into how the mark might be expected to be understood in Australia by "ordinary persons" or by actual or potential purchasers of goods or services of the relevant kind. The relevant perspective is, rather, that of another trader, located in Australia or elsewhere, who might desire to use the word or other sign in the ordinary course of its business.
309 Gageler J distinguished the "Faulding test" from the "Tub Happy test", the latter being a reference to the decision in Mark Foy's which concerned the criterion in s 16(1)(d) of the Trade Marks Act 1905 (Cth) (as amended by the Trade Marks Act 1912 (Cth)) that permitted registration of a mark containing or consisting of 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 surname" (emphasis added). As to that criterion, Dixon CJ in Mark Foy's said (at 195):
… The test must lie 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.
310 At [98], Gageler J said:
98 What is significant for present purposes is that a conclusion, based on the application of the Tub Happy test, that a word does not have direct reference to the character or quality of goods or services, is not itself a conclusion that the word is inherently adapted to distinguish the goods or services of the applicant from the goods or services of other persons. In the case of an ordinary English word, the considerations affecting each conclusion will often be similar. In the case of a technical word or a word in another language, other considerations will almost certainly arise.
311 At [100], his Honour said:
100 The Full Court held that his Honour erred in equating the F H Faulding test with the Tub Happy test, and in applying the latter to the exclusion of the former. That conclusion was correct. The central contention of the appellant (Cantarella) in this Court is that the two tests are the same. They are not.
(Footnote omitted.)
312 At this juncture, the following matters should be emphasised.
313 First, the appeal to the High Court in the Modena proceeding squarely raised the legal question: what is the correct test to be applied when determining, for the purposes of s 41 of the Act, whether a word mark is inherently adapted to distinguish? This was the same question raised in the intermediate appeal before the Full Court. As the majority in the High Court noted at [28] - [29], the battle lines were drawn up between the principle stated by Kitto J in Clark Equipment and the arguably broader principle stated by Lord Parker in Du Cros.
314 Secondly, the High Court held, by majority, that the correct test is the principle stated by Kitto J in Clark Equipment, including where the word mark is a foreign word. The Full Court reached the same conclusion, noting (at [67]) that Full Courts of this Court have consistently treated Clark Equipment as setting out the general principle. What emerges from the majority judgment in the High Court is that the Full Court in the Modena proceeding had misunderstood, and therefore misapplied, what Kitto J had said in Clark Equipment.
315 Thirdly, while Kitto J's statement of general principle in Clark Equipment is derived from Lord Parker's speech in Du Cros, it is an elaboration of what Lord Parker had said. The majority in the High Court in the Modena proceeding made clear that, in Australian trade mark law, Kitto J's elaboration states the correct principle, not the arguably broader principle stated by Lord Parker.
316 Fourthly, and relatedly, the majority in the High Court rejected the case advanced by Modena, which was that, having regard to Lord Parker's speech in Du Cros, the test of whether a word mark is inherently adapted to distinguish is the broadly-stated likelihood that other traders might legitimately desire to use the word in connection with their own goods.
317 Fifthly, in applying Kitto J's statement of principle in Clark Equipment, the first step, which is crucial, is to establish the ordinary signification of the word or words (for which registration, as a trade mark, is or are sought) to all persons in Australia concerned with the goods. This involves a finding of fact based on the evidence before the Court.
318 As to the decision in Clark Equipment, it is important to note that Kitto J was specifically addressing the requirements of s 26 of the Trade Marks Act 1955 (Cth) in the context of s 25 of that Act.
319 Section 25 provided for the registration of a mark in (former) Part B of the Register if the mark was distinctive or, if not distinctive, if the mark was capable of becoming distinctive of the goods for which registration was sought, being goods with which the trade mark applicant was or might be connected in the course of trade.
320 At the relevant time, s 26(1) provided that a trade mark was not distinctive of the goods of a person unless it was "adapted to distinguish" the goods with which the applicant was or might be connected in the course of trade from goods which did not have that connection. Section 26(2) provided the following criteria for distinctiveness:
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.
321 In Clark Equipment (at 513), Kitto J said that s 26(2) dissected the expression "adapted to distinguish" in s 26(1) into two inquiries - an inquiry concerning acquired distinctiveness (s 26(2)(b)) and an inquiry concerning "the inherent fitness of the mark for the purpose of distinguishing the applicant's goods from those of other persons" (s 26(2)(a)). In that context, Kitto J said:
It is undeniable that a mark which, considered by itself, would seem unadapted to that purpose, because its natural signification is against a notion that goods to which it is applied are the goods of the applicant and of no one else, may yet come by actual use or by virtue of special circumstances to be so closely associated with the applicant's goods in the minds of the relevant public that its apparently disqualifying signification is effectually obscured, and distinctiveness in fact is thus achieved. But although such a measure of practical success with the mark may well provide a sufficient foundation for a passing-off action, the Trade Marks Act does not accept it as necessarily sufficient for the special protection which it affords to registered trade marks. True, the Act does not say that a mark which has any degree of natural unsuitability to distinguish an applicant's goods shall be refused registration notwithstanding that it has acquired a degree of distinctiveness in relation to his goods; but it does require that if the mark is to any extent inherently unadapted for the purpose that fact shall be weighed in the scales against the degree of acquired distinctiveness in determining the ultimate question whether the mark is registrable as being "adapted to distinguish" the applicant's goods.
322 Three matters should be noted in this part of Kitto J's judgment. First, his Honour was addressing, directly and as a matter of principle, the notion of a mark being "inherently adapted to distinguish" within the meaning of s 26(2)(a) as a step on the path to determining whether a mark is "adapted to distinguish" (within the meaning of s 26(1)). Secondly, his Honour saw that notion as referring to the "inherent fitness" of a word mark for registration as a trade mark. Thirdly, his Honour identified that a word's "inherent fitness" for registration as a trade mark is tied to its "natural signification".
323 It was in this context that Kitto J referred to, and quoted from, Lord Parker's speech in Du Cros. By doing so, his Honour recognised the need, when considering whether a word is inherently adapted to distinguish, to take account of the desire of other traders to use the word in relation to the goods in respect of which the mark is registered or is sought to be registered. However, his Honour did not see this as some desire considered in the abstract. It was a desire conditioned on a particular need to use the word - namely, for its "natural" signification in relation to those goods.
324 Thus, when Kitto J came to apply those principles to the case at hand (an application for the registration of MICHIGAN - a word having a prima facie geographical signification in respect of particular types of earth-moving equipment) his Honour said (at 514 - 515):
It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur: see per Lord Simonds in the Yorkshire Copper Works Case. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as "North Pole" in connexion with bananas: A. Bailey & Co. Ltd. v. Clark, Son & Morland Ltd. (the Glastonbury Case) (see also the Livron Case), or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification. Cf. in the case of a descriptive word: Dunlop Rubber Co.'s Application. But the probability that some competitor, without impropriety, may want to use the name of a place on his goods must ordinarily increase in proportion to the likelihood that goods of the relevant kind will in fact emanate from that place. A descriptive word is in like case: the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer. This may seem at first blush a paradox, as Lord Simonds and Lord Asquith suggested in the Yorkshire Copper Works Case, but surely not when Lord Parker's exposition of the subject is borne in mind.
(Footnotes omitted.)
325 Kitto J reasoned (at 515 - 516) that the name of a place or area can hardly ever be "adapted to distinguish" when used by itself, or with no addition except a description or designation of the goods, if goods of that kind are produced at that place or in that area, or if it is reasonable to suppose that the goods may be produced in that place or in that area. His Honour referred in particular to words that are the names of large and important industrial towns and districts, as well as smaller towns and districts if they are a seat of manufacture of the goods for which registration is sought. He concluded that MICHIGAN was such a word in respect of the goods for which registration was sought.
326 Subsequently, Kitto J undertook the same analysis in Faulding when considering the validity of the registration of BARRIER for "chemical substances prepared for use in medicine and pharmacy". His Honour said (at 554):
… the word Barrier, unexceptionable though it may be as a trade mark for other kinds of chemical substances prepared for use in medicine and pharmacy, is, in its application to skin protective creams, one of that class of words which are "so apt for normal description that no trade mark use and momentary distinctiveness can justify a permanent monopoly": Dunlop rubber Co.'s Application.
327 In explaining this conclusion, Kitto J observed (at 555) that it would not only be difficult but "surely impossible" to find that a word mark was distinctive when its "descriptiveness" referred to the distinguishing characteristic of a whole class of goods of which the trade mark owner's goods are examples.
328 Although the mark in question had been registered under the Trade Marks Act 1905 (Cth), Kitto J's analysis was directed also to the requirement of s 26(1)(a) of the Trade Marks Act 1955 (Cth) and hence whether BARRIER was inherently adapted to distinguish.
329 As to this, Kitto J said (at 555):
But for the evidence, it might have been said that the word, though inherently suited to be used adjectivally for the purpose of referring to the distinguishing characteristic of skin protective creams generally, is not one which would spring instantly to the mind of a person who wanted a word for the purpose but had never known Barrier to be so employed. This might have been said with the general principle in mind that the question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods: Registrar of Trade Marks v W. & G. Du Cros Ltd; Eclipse Sleep Products Inc. v The Registrar of Trade Marks; Clark Equipment Co. v Registrar of Trade Marks. But the evidence shows clearly, and it satisfied the learned primary Judge, that Barrier has long appealed to persons in industry, in pharmacy and in allied occupations as meeting their need for a word to describe succinctly and yet exactly the essential characteristic of protection which distinguishes the whole of the relevant class of creams.
(Footnotes omitted).
330 Kitto J then considered various aspects of the evidence, before concluding (at 556):
The conclusion seems inevitable that at 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.
(Emphasis added).
331 Kitto J's analysis in Faulding makes plain that, when determining whether a word mark is inherently adapted to distinguish, any consideration of the desire of other traders to use the word for the goods or services in question is anchored in the word's ordinary signification in respect of those goods or services. Hence, the emphasis given by the majority in the High Court in the Modena proceeding to the importance of determining, as a first step, the ordinary signification of the word.