Author: Tim Francis, Principal
In September 2013, the Full Federal Court of Australia found that the trade marks ORO (Italian for ‘gold’) and CINQUE STELLE (Italian – for ‘five stars’) were not registrable as due to a lack of distinctiveness.
Those marks were originally registered in respect of coffee and various other goods, and the Full Federal Court held that, due to the diverse cultural heritage of Australia, those words were known in the coffee trade to be descriptive of the quality of coffee products. Accordingly, it ordered that the registrations of those marks be cancelled.
By a 4:1 majority, the High Court last week overturned that decision and upheld the registration of both marks. In doing so, the High Court clarified that the following principles (among others) apply when assessing the inherent adaptation of a trade mark, whether an English or foreign word, to distinguish a trader’s goods and services:
- It is not the meaning of a foreign word as translated which is critical, although this might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods
- 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
- 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). The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical
The High Court found that the Full Federal Court had misunderstood the scope of the test for inherent distinctiveness of the trade marks in question, by asking whether other traders would want to use ORO or CINQUE STELLLE to convey an allusive or metaphorical meaning, rather than asking whether the desired use would be to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to render them words having a direct reference to the character or quality of the goods.
Neither ORO nor CINQUE STELLE had been shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to render them words having a direct reference to the character or quality of the goods.
The evidence the infringer (Modena) led rose no higher than showing that ORO and CINQUE STELLE has been used on internet sites and coffee packaging in a range of composite marks (that is, together with other words and/or pictures), which were distinguishable aurally, visually and semantically. In the end, the majority of the High Court said that the alleged desire of other traders to use ORO or CINQUE STELLE to directly describe coffee goods was not demonstrated by the evidence.
What does this mean for brand owners in Australia?
When selecting trade marks from a language other than English, the fact that the mark, when translated into English, has an allusive or metaphorical meaning relevant to the goods or services claimed will not be automatically fatal to its registrability. However, any mark which directly describes the character or quality of the goods or services is unlikely to be registrable.
Careful consideration should therefore be given to whether the meaning that mark conveys – whether in its original language, or as translated – would be understood by people in Australia concerned with your products as a direct reference to the character or quality of those products, or only an allusion.