Distinctiveness principles
53 Section 41(3) and s 41(4) identify the only two ways in which a trade mark may be taken not to be capable of distinguishing the designated goods and services of the trade mark applicant from the goods and services of other persons. Section 41(3) has two necessary elements. The first is that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons: TMA, s 41(3)(a). The second is that the registration applicant has not used the trade mark before the filing date to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant. Section 41(4) is concerned with trade marks that are "to some extent, but not sufficiently, inherently adapted to distinguish" the designated goods or services from those of other persons: TMA, s 41(4)(a). In such cases, registrability will depend upon the extent to which it is so capable, together with the combined effect of the matters referred to in s 41(4)(b). They include the use or intended us, of the trade mark, by the applicant and "any other circumstances".
54 In each instance, the initial focus is on the extent (if any) to which the mark is inherently adapted to distinguish, considered apart from the applicant's use or intended use of it. The present inquiry focuses on whether the word mercato in the Plain Word Mark and the Fancy Word Mark is merely descriptive of some of the goods and services in respect of which they are registered. Where a trade mark is comprised solely of a word that is, or describes, the goods or services in respect of which it is sought to be registered, it is liable to be successfully opposed for failure to accord with the requirements of s 41. As Stephen J said in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 (at 229), "there is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name". His Honour explained (at 229):
… Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action …
(footnote omitted)
55 In FH Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited (1965) 112 CLR 537, the appellant was the registered owner of the trade mark barrier in respect of chemical substances for use in medicine and pharmacy, which encompassed hand creams. Its infringement action against the respondent was met with a cross-claim for removal of the trade mark or the insertion of a limitation. McTiernan J at first instance allowed the cross-claim and inserted the limitation "other than skin protective creams". On appeal, Kitto J held that the word barrier was not inherently adapted to distinguish the goods of the trade mark owner from those of other persons within the meaning of s 26(2)(a) of the Trade Marks Act 1955-1958 (Cth) as then in force because it was descriptive of a whole class of goods of which the appellant's goods were but examples. His Honour said (at 555):
… That this is the case with Barrier as applied to skin protective creams is put beyond doubt by the evidence in this case. 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)
56 His Honour went on to say (at 556 - 557):
… 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. We have not to inquire, on this aspect of the case, whether or not the respondent began its use of the word with a view to appropriating to itself some of the goodwill which the appellant had built up for its own product. 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.
57 A year earlier, in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, Kitto J (citing Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624) referred to the natural disinclination of the Legislature and the Courts to allow any person to obtain by a trade mark registration "a monopoly in what others may legitimately desire to use". His Honour continued (at 514):
… The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R. J. Lea, Ltd.; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the 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.
(footnotes omitted, emphasis added)
58 The application of those principles to trade marks comprising or containing "foreign" words is best illustrated by examining a case commenced in this Court in 2011 relating to trade marks for coffee products. The applicant, Cantarella Bros Pty Ltd brought proceedings against the respondent Modena Trading Pty Ltd alleging infringement of two trade marks registered in connection with goods including coffee products: oro (an Italian word for gold or golden) and cinque stelle (an Italian expression for five stars). It was not disputed that Modena had used and was continuing to use both marks on packaging and in connection with its marketing of coffee products in Australia, although use of the words as a trade mark was denied. By its cross-claim Modena sought orders under s 88 of the TMA for removal of the two marks from the Register on the grounds that they were not inherently adapted to distinguish, and did not in fact distinguish, Cantarella's goods from the goods of other persons. At first instance, Emmett J allowed Cantarella's claim in part and dismissed Modena's cross-claim: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8; 299 ALR 752 (Cantarella First Instance). The Full Court set aside Emmett J's orders: Modena Trading Pty Ltd v Cantarella Bros Pty Ltd (2013) 215 FCR 16 (Cantarella Full Court). The High Court set aside the judgment of the Full Court, identifying no error in that part of Emmett J's reasons with which the Full Court dealt: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 (Cantarella High Court). In the present case the parties are in dispute about the principles to be extracted from the judgment of the High Court and is therefore necessary to examine the judgment in some detail.
59 In Cantarella First Instance, Emmett J observed that neither the word oro nor the word stelle appeared in English dictionaries. His Honour referred to evidence of the frequent use of the word oro in Australia in connection with coffee products, often in the phrase oro qualita. For Modena it was submitted that the phrase described the character and quality of the goods such that they were not distinctive. Modena submitted that the English translation of the trade marks (respectively), gold and five stars, would not be capable of distinguishing the goods of Cantarella from the goods of other persons, that there were many people in Australia who understood the English meaning of the Italian words oro and cinque stelle and that, accordingly, the Italian words were not capable of distinguishing Cantarella's goods. It submitted that if an objection can be made to the registration of an English word, then the same objection could be made to a foreign language word having the same meaning. It submitted that the words oro and cinque stelle were laudatory terms and therefore descriptive, rather than indicating a connection in the course of trade between Cantarella and the designated products. It further submitted that the evidence of extensive use of the word oro in the relevant trade indicated that it was not inherently adapted to distinguish, and that the trade marks were words that other traders might, without improper motive, want to use as "varietal indicators" of their own Italian style coffee products. Accordingly, it submitted, it should be free to use the words gold and five stars and the Italian translations of those words in connection with its own products.
60 Emmett J said that he would be disposed to accept the submission that the English words gold and five stars would not be distinctive and therefore could not have been registered by Cantarella at the relevant filing dates. However, his Honour said, that was not the question. The question was whether the marks oro and cinque stelle were validly registered. His Honour continued:
112 The adoption of a three-step test has been suggested in relation to marks consisting of words in a foreign language. First, it is necessary to determine whether the foreign language is well known in Australia. Second, it is necessary to determine whether the translation provided is the most common meaning attributed to the word. Finally, it is necessary to determine whether that common meaning has an inherent capacity to distinguish, applying the tests required by s 41 (see Cantarella Bros Pty Ltd v Sunbeam Corporation Ltd [2007] ATMO 3 at [21]).
113 Such a test may be a useful approach. However, I am by no means persuaded that it is necessarily the only approach. Some words in foreign languages may be well-known in Australia, even if the language itself is not well known. On the other hand, the mere fact that a language is well-known in Australia does not mean that every word in that foreign language should be taken to be well-known in Australia. Even if a particular language may be understood by many Australians, it does not follow that all words in that language would be understood by all English-speaking persons in Australia who have some familiarity with the foreign language. I consider that the question is whether the particular words that are intended to constitute the trade mark are sufficiently well understood in Australia. That does not depend upon whether a particular language is well-known in Australia. Specifically, the question is not whether Italian is understood by many persons in Australia, but whether Cinque Stelle and Oro are commonly understood in Australia as meaning five stars and gold respectively.
61 Justice Emmett went on to consider census data identifying the number of people living in Australia who identified themselves as having been born in Italy or having Italian ancestry or who spoke Italian at home. His Honour said that it may be clear enough to Italian speakers that oro and cinque stelle signified gold and five stars. However, neither of the marks meant anything in English. Whilst educated English speakers with some knowledge of Romance languages or Latin may be able to deduce their meanings, their allusions would be known to only a very small minority of English speaking people. His Honour was not satisfied that the words would be generally understood in Australia as bearing their translated meanings. Accordingly, both cinque stelle and oro were sufficiently inherently adapted to distinguish Cantarella's goods from those of other persons because "the Italian words are not so obvious to ordinary English speaking persons in Australia that Cinque Stelle and Oro have a specific meaning" (at [118]).
62 Modena appealed to the Full Court. In their joint judgment, Mansfield, Jacobson and Gilmour JJ discussed the statements of Kitto J in FH Faulding and Clark Equipment, concluding that the parentheses statement in the latter case (emphasised in the passage extracted at [75] below) should be understood to have been maintained and applied in FH Faulding (notwithstanding its absence in the reasons from judgment) and so could not be ignored as surplusage (at [62] - [68]). The Full Court emphasised that the parenthetical explanation in Clark Equipment was not to be applied as though it were a statute, and that phrases such as "common right of the public" and "words forming part of the common heritage" were broad expressions having a content and application that may vary according to the facts and circumstances of a particular case. The Full Court said that the enquiry under s 41(2) and s 41(3) was "directed at least to traders with goods and services of the relevant kind and the likelihood, in a case such as this, of their thinking of and wanting to use the word(s) in question". The enquiry may also have regard to the knowledge and practices of consumers as a relevant consideration informing the likely actions of traders but, the Full Court said, it will not necessarily be the focus of the enquiry (at [74]). The Full Court observed that in both Clark Equipment and FH Faulding the focus was not on the knowledge of the general public as potential consumers of the relevant products or otherwise, and that the majority of cases focussed instead on the knowledge and practice within the relevant trade. To posit whether the Italian words were commonly or generally understood in Australia by ordinary English persons as meaning gold and five stars was, the Full Court said, to adopt an approach that was not appropriate in a case where "common Italian words descriptive of quality, are in issue". The Full Court said that there was no necessity to approach the enquiry from an Anglocentric perspective given the rich cultural and ethnic diversities in the population (at [85]) and that, as distinctiveness was a question of fact, the enquiry may involve contextual considerations. It was unnecessary, the Full Court said, that consumers know what the words mean in English, although the evidence showed that many people in Australia would in fact know what they meant, and that Italian speakers would understand the words "as common Italian laudatory and therefore descriptive words" (at [88]). The Full Court proceeded to identify a number of factual matters bearing on the enquiry, including evidence of the number of traders in coffee products in fact using the words to describe their quality, including use preceding Cantarella's application to register the words as trade marks. In light of those contextual considerations and the focus on the actual and desired use of honest traders, the Full Court concluded that the words oro and cinque stelle were not inherently adapted to distinguish the designated goods from those of other traders in those goods.
63 The High Court held that approach was erroneous. The majority (French CJ, Hayne, Crennan and Kiefel JJ) traced the development of trade mark law in the United Kingdom particularly with respect to descriptive words over which no monopoly should be granted, such as geographic locations, initials, surnames, laudatory epithets used as adjectives, or words directly referring to the relevant goods. That jurisprudence grew out of s 6 and s 16 the Trade Marks Act 1905 (UK) (1905 Act) and cognate provisions in the Trade Marks Act 1955 (Cth) (1955 Act) (including s 24). As the majority observed, s 9(5) of the 1905 Act provided that marks (other than those falling within exceptions) were deemed to be distinctive, provided that they were "adapted to distinguish").
64 Section 16(1) of the 1905 Act relevantly provided that to be registered a mark must consist of:
(c) an invented word or 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 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].
65 The word "distinctive" was defined in s 16(2) to mean "adapted to distinguish the goods of the proprietor of the trade mark from those of other persons". As the majority said, enquiries about the meaning of a word (and hence its ordinary signification) were conducted on the basis that Australia is an English speaking nation. The majority explained that the early cases coming before the Court of Appeal recognised that the word "direct" in s 16(1)(d) of the 1905 Act was intended to permit entry onto the Register marks that constituted or contained a "skilful, covert or allusive reference to goods" (citing In re Joseph Crosfield & Sons, Limited [1910] 1 Ch 130 (Perfection)). In Eastman Photographic Materials Company Limited v Comptroller General of Patents, Designs, and Trade-Marks [1898] AC 571 (Solio) it was established that no monopoly could be granted under s 9(5) of the 1905 Act for laudatory epithets used as adjectives, such as "good" or "best". In Perfection it was held that the word "perfection" could not be registered as a trade mark for soap because it was a word that should be open to use by other soap traders: Perfection, Fletcher Moulton LJ (at [144], [150], [151], [154]). Nor could a monopoly be granted in a word that was merely a phonetic equivalent of a directly descriptive word: In re H.N. Brock & Co Limited [1910] 1 Ch 130.
66 In the cases discussed by the majority, determination of whether a word had a direct reference to goods (such that a monopoly over its use should be precluded), it was critical to consider 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 (at [39]).
67 The majority in Cantarella High Court summarised (at [40]):
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).
68 Their Honours went on to discuss Lord Parker's statement in Du Cros, in which his Lordship considered whether two registration applications for marks consisting of letters of the alphabet joined with an ampersand were "adapted to distinguish" under s 9(5) of the 1905 Act. His Lordship explained that a trader should not be given a monopoly of letters that other traders may legitimately desire to use because they have the same initials. It was in that context that his Lordship made the statement cited by Kitto J in Clark Equipment, namely that registrability of a mark would "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": Du Cros at 635. As the majority explained, the United Kingdom cases showed that for at least a century, proposed trade marks had been examined both from the perspective of the impairment of honest traders to do what would be their natural mode of conducting their businesses (apart from the grant of a monopoly) and from the wider point of view of the public. In addition, the decisions showed that in assessing the distinctiveness of a word it was necessary to have regard to the word's ordinary signification.
69 Against that background, the majority went on to discuss early cases involving "foreign" words, historically assessed under the test for whether a word could qualify as "invented" for the purpose of s 16 of the 1905 Act. In Phillippart v William Whiteley Ltd [1908] 2 Ch 274, the word diabolo was unregistrable because it was the name of a well known game in England. In Solio, there was opposition to the registration of the mark solio for photographic papers because it was said to be an Italian or Latin word (and therefore not invented) and a word that contained a reference to the goods. Lord Macnaghten said that an invented word could be one that could be traced to a foreign source, and it was not necessary to show that it should be wholly meaningless. Nor could there be objection to it on the basis that it contained a skilful allusion to the character or quality of the goods. In Australia, Solio was cited by Dixon J in Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175. His Honour added that the word should be "substantially different from any word in ordinary and common use" (at 181). Similarly, in Kiku Trade Mark [1978] FSR 246, the Supreme Court of Ireland concluded that a word that required translation could not be one having any signification to ordinary people living in Ireland who saw or heard it. In that case, the word Kiku (Japanese for chrysanthemum) was registrable because it contained no direct reference to the character or quality of the goods.
70 As the majority in Cantarella High Court observed (at [48]), those 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.
71 Their Honours said that resolution of the appeal turned on the practical distinction between a word that made some covert or skilful allusion to the goods on the one hand, and words having a direct reference to them on the other. The former would be prima facie registrable, the latter would not (at [50]). The difference, their Honours said, was illustrated by two Australian cases decided under the 1905 Act: Howard and Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190.
72 In Howard, Dixon J concluded that the word rohoe would be understood by a farmer, horticulturalist, a trader in horticultural implements or a person otherwise concerned with them to be an obvious contraction of "rotary hoe", given the special nature of the cultivating implements to which the trade mark was to be applied.
73 Mark Foy's concerned the registrability of the words tub happy as a trade mark for cotton garments. Dixon CJ and Williams J concluded that it was able to be registered. The significance of their Honour's reasoning was summarised by the majority in Cantarella High Court as follows (at [52]):
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'.
(footnotes omitted)
74 The term "inherently adapted to distinguish" was first introduced in the United Kingdom in 1938, by amendment that in turn influenced the 1955 Act and the TMA as presently in force in Australia. In the United Kingdom the amendment was explained as using statutory language to capture the same principle stated by Lord Parker in Du Cros: Cantarella High Court, at [54].
75 After summarising the judgments of Kitto J in FH Faulding and Clark Equipment, the majority in Cantarella High Court stated the applicable principle as follows (at [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.
(emphasis added)
76 On the proper construction of s 41(3) of the TMA, the majority said, determination of whether a trade mark was inherently adapted to distinguish required consideration of the "ordinary signification" of the words proposed as a trade mark to "any person in Australia concerned with the goods to which the proposed trade mark is to be applied" (at [70]). Their Honours said that 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. The majority said that if a 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 (at [71]). Their Honours went on to identify error in the reasoning of the Full Court:
72 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.
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.
77 The majority said that the evidence led by Modena at trial did not show that registration of the words oro or cinque stelle as trade marks would preclude honest rival traders from having words available to describe their coffee products either as Italian coffee products or as premium coffee or blend products. The evidence fell well short of establishing that the word oro, standing alone, was understood in Australia by persons concerned with coffee products to be directly descriptive of the character or quality of such goods. Nor did the evidence concerning the words cinque stelle.
78 Two cases of this Court have considered the registrability of foreign words as trade marks since Cantarella High Court.
79 In Goodman Fielder, Burley J accepted that the mark LA FAMIGLIA would be understood by a substantial number of consumers as being Italian words meaning "the family", however, they did not have a directly descriptive character when used in conjunction with the designated goods (pasta and bread products). His Honour said that they made only an allusive reference and "did not convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the goods" (at [235]). His Honour went on to consider whether the words LA FAMIGLIA KITCHEN were inherently adapted to distinguish the applicants' goods, which he considered to be perhaps more descriptive than the mark LA FAMIGLIA standing alone. His Honour ultimately concluded that the reference to the potential origin of the goods was indirect and that the combination of Italian and English was "sufficient to impart a sufficient degree of inherent distinctiveness" so as to satisfy the requirements of s 41 of the TMA (at [249]).
80 More recently, Yates J considered the use of foreign words as trade marks in Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 (at [417] - [433]), a case again concerning the trade mark oro in its application to coffee products.
81 As his Honour there mentioned, "the word that is the subject of the inquiry must form part of the 'common heritage' - meaning, the common stock of language that is available to be used" (at [420], citing Apple Inc v Registrar of Trade Marks (2014) 227 FCR 511 at [11]), that is, "words that have been received into the stock of language that extends generally throughout the community, not merely to some part of it" (at [421]). Consistent with the majority in Cantarella High Court, his Honour said:
422 In the context of legislation that deals with the registrability of a trade mark, the common stock of language can only be the common stock of language that falls within the geographical operation of that legislation. As the operation of the Act extends to Australia, and the external Territories and other areas identified in s 4, that language is, relevantly, Australian English - in other words, the Australian lexicon.
423 Secondly, if the word is part of the 'common heritage', does it have a 'signification' - in other words, a 'meaning' - which can be characterised as one that the word 'ordinarily' possesses as part of that language? This is what is captured by the notion of the 'ordinary signification' of a word.
424 Bringing these strands together, for presently relevant purposes a word will have an 'ordinary signification' if it has been received into Australian English and has a commonly understood and commonly shared meaning by ordinary members throughout the Australian community at large.
82 His Honour said that it was not uncommon for foreign words to be incorporated into a local language and bear an ordinary signification in this sense, giving examples in the Australian lexicon, "encore", "en route", and "tour de force", and "bravo" as confirmed by such words now having accepted dictionary meanings in Australian English (at [425]). However, his Honour said, the mere fact that a foreign word had been (relevantly for present purposes) broadly associated with particular traders or the products of particular traders, did not mean that the word had a commonly understood and shared meaning throughout the community at large (at [426]). That was so, his Honour said, "even where a numerically significant number of people either know the meaning of the foreign word or can deduce its meaning". His Honour emphasised that the principles stated in Cantarella High Court applied in cases where the question involved the ordinary signification of a word referable to goods or services in a trade involving the community at large, but different considerations might apply where the trade was more specialised or directed to those having special vocational or technical interests (as in Dixon J's consideration of the word rohoe). His Honour concluded that while the word oro may be understood to mean "gold" by a numerically large number of Australian people, he was far from persuaded that it had been accepted into Australian English to the degree it was commonly understood amongst the general population.
83 As the latter two cases show, whilst identifying the correct test for descriptiveness is a question of law (now resolved in Cantarella High Court), in its practical application the enquiry is essentially factual, turning on the sufficiency of the evidence adduced in the particular case by the party bearing the onus in respect of it. Here, that party is Modena as the prosecutor on the cross-claim.