Trade marks provide very powerful commercial protections. However, not every word can be trade marked. Because of the monopoly provided by a trade mark many words cannot be “captured” by the use of a trade mark. The key question in determining if a word can be trade marked is whether certain words are inherently adapted to distinguish the goods that they are registered over from goods of other persons within the meaning of s 41 of the Trade Marks Act 1995 (Cth) or whether they are merely descriptive of the goods.
The sale of coffee beans and ground coffee is a very significant market in Australia, as in many other countries. Companies spend significant time, money and effort in promoting their brands.
Both the appellant and respondent in these proceedings [Cantarella Bros Pty Ltd v Modena Trading Pty Ltd  HCA 48] advertised, offered for sale and sold coffee products in Australia. The appellant sold coffee under the registered trade marks “Oro” and “Cinque Stelle”. It complained that Modena infringed its trade marks by selling products under those names. Those words mean “Gold” and “Five Stars” respectively in Italian. Modena argued the registration of the trade mark should be cancelled on the basis that they were not inherently adapted to distinguish the goods for which they were registered.
Generally it is very difficult to obtain a trade mark over an ordinary word, be it English or foreign. In this case the question was whether the word can convey a meaning or idea sufficiently tangible to anybody in Australia concerned with coffee goods to have a direct reference to the character or quality of the goods – it was held that they did. On that basis the trade marks were permitted to remain.
That this area can be very difficult is reflected by the fact that at Court of Appeal level, the respondent had succeeded in having the trade marks removed and at High Court level the decision was reversed by four judges, although one judge dissented and would have upheld the removal of the trade marks.
At trial, the trial judge found that although an Italian speaker would have understood the words signified a connection with Gold and with Five Stars it wouldn’t be concluded it was generally so understood in Australia. That finding was not overturned. Rather, the question that arose was whether or not the trade marks were inherently adapted to distinguish the goods. The appeal was allowed because it could not be established that people in Australia in respect of coffee products would understand the words “Oro” or “Cinque Stelle” as being purely descriptive of the character or quality of the coffee products. On the facts it had been established that the words inherently distinguished the product, rather than being descriptive of the product. The dissenting judge considered that the words “Gold” and “Five Stars” are ordinary English words and when used in describing goods and services they signify quality. As such they did not inherently distinguish the goods of the appellant. He would therefore not have allowed the appeal.
The decision demonstrates that there can be occasions when words which might be considered ordinary words of the English language (or even a foreign language) may be capable of protection by trade mark. However, it would be necessary to demonstrate that the use of the word does more than simply describe quality but rather is inherently associated with the product. While the decision may encourage the registration of trade marks of ordinary words, it ought not to be expected that it will cause a floodgate of successful registrations.