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When is a trade mark known more as a mark

/ Lucy Deane / Articles

AMORE, GIALLO, FELICE, BELLO, BLANC BLEU are but a handful of the many foreign language words that are registered as trade marks in Australia.

But care must be taken not to assume (as one may be tempted to from a cursory glance at the Australian Register of Trade Marks) that words in a non-English language will more easily satisfy the requirements for registration as a trade mark in Australia.

The registration requirement of most relevance to trade marks comprising foreign language words is the requirement (set out in section 41 of the Trade Marks Act 1995 (Cth)) that a trade mark be “capable of distinguishing” the applicant’s goods or services from those of other persons.

When considering the application of section 41, the relevant enquiry will initially be whether a trade mark is “inherently adapted to distinguish” the applicant’s goods or services.  If a trade mark is “inherently” or prima facie adapted to distinguish, it will not attract an objection to registration under section 41.

When will a trade mark be “inherently adapted to distinguish”?

The notes to section 41 provide some guidance to a determination of whether a trade mark is “inherently adapted to distinguish”, particularly Note 1 which states:

“Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

  • The kind, quality, quantity, intended purpose, value, geographic origin or some other characteristic, of goods or services; or
  • The time of production of goods or the rendering of services.”

The principles set out by Kitto J in Clark Equipment Company v Registrar of Trade Marks have been, and continue to be, considered as most relevant in determining for the purposes of section 41 whether a trade mark is “inherently adapted to distinguish”. In that case, Kitto J stated:

“[T]he question whether a marks is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives . . .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”.

How do the above principles apply to trade marks comprising foreign language words?

The guidelines issued by the Australian Trade Marks Office make it clear that the same principles apply to trade marks comprising foreign language words as trade marks comprising English words.

When a trade mark includes or comprises a foreign language word, the applicant will be required to provide an English translation of the word, which will be included on the Register.

The practice of the Australian Trade Marks Office is generally, that if the English translation is a word or words that would not be capable of distinguishing the applicant’s goods or services, the foreign language word or words will likewise be considered not “inherently adapted to distinguish”.

Further clarification by the Full Federal Court

The Full Federal Court in Modena Trading Pty Ltd v Cantarella Bros Pty Ltd recently provided some useful clarification of the test to be applied in assessing whether a foreign word or words are “inherently adapted to distinguish” the applicant’s goods or services from those of other traders.

In that case, the trade marks in question, owned by Cantarella, were ORO (“gold” in Italian) and CINQUE STELLE (“five stars” in Italian), with the relevant goods being coffee and related products.

Modena, who was seeking the cancellation of these trade marks, argued that the words “Oro” and “Cinque Stelle” were not “inherently adapted to distinguish” on the basis that these are words that other traders might, without improper motive, wish to use in relation to their Italian-style coffee products.  Modena submitted evidence to show that these words were, in fact, commonly used by a range of traders in the marketing of Italian-style coffee in Australia.

The primary judge found that the words “Oro” and “Cinque Stelle” were capable of distinguishing Cantarella’s goods on the basis that “ordinary English speaking persons in Australia” would not recognise these words as having a specific meaning.

On appeal, the Full Federal Court, held that these words were not inherently adapted to distinguish Cantarella’s goods from those of other traders in the coffee and coffee related products.

In reaching this decision, the Full Federal Court held that the relevant test for distinctiveness is not whether the words are recognised and understood by “the majority of English speaking Australians”, but rather the primary consideration should be the likelihood of traders in the relevant goods (in that case traders in Italian-style coffee) wanting to use the words in relation to their similar goods.

In conclusion

A trade mark comprising a foreign language word or words will be known more as a “trade mark” in Australia, than what it means in a non-English language, when the word or words are not ones that other traders, in the ordinary course of their business and without any improper motive, are likely to wish to use upon or in connection with their own similar goods or services.  This will depend on the particular facts of each case.

Accordingly, “laudatory” or descriptive words which, when translated to English describe the kind, quality, quantity, intended purpose, value, geographic origin or some other characteristic, of the goods or services in question, are unlikely to be “capable of distinguishing” the applicant’s goods or services from those of other persons, as required under section 41 of the Trade Marks Act.