Coffee wars – High Court clarifies test for registrability of trade marks

In a landmark trade mark judgment delivered on 3 December 2014, the High Court in Cantarella Bros v Modena Trading [2014] HCA 48 has clarified a critical aspect of Australian trade mark law relating to the test for inherent adaptation to distinguish (inherent distinctiveness) under section 41.  The majority of the High Court found that the words ORO and CINQUE STELLE, which mean “five star” and “gold” in Italian, were inherently adapted to distinguish coffee products in Australia and therefore registrable, reversing the decision of the Full Federal Court.

The majority of the High Court applied a predominantly consumer (or target audience) focussed test to the question of inherent adaptation, whereas the Full Federal Court and Justice Gageler (in dissent) preferred a predominantly trader focussed test.

We have previously posted about the case here and here.

IP Whiteboard’s Bill Ladas and Cate Nagy have prepared an alert on the High Court’s decision and its implications, which can be accessed here.

About the Author

Daniella Phair
Daniella's heart belongs to anything IP related. From cloud computing to fashion trade marks to online advertising, Daniella’s IP interests are broad and varied. Whether her IP Whiteboard posts involve trawling Perez Hilton’s gossip websites or reading an ALRC report, Daniella is up for a challenge. She most enjoys the fact that her interests in IP are becoming increasingly intertwined with her entrenched addiction to all things social media and loves being able to legitimately spend 6 hours on Facebook a day at work…
View all posts by Daniella Phair