s 41 TMA - adapted to distinguish?

Special leave granted for coffee trade mark fight over use of ORO and CINQUE STELLE

The High Court has granted special leave in a case concerning the question of the inherent capacity to distinguish of foreign word marks – which the appellant says “has not been considered by this Court before.”

The case is an appeal from Modena Trading v Cantarella Bros [2013] FCAFC 110.  In that case, Mansfield, Jacobson and Gilmour JJ unanimously allowed an appeal from Emmett J [2013] FCA 8 in which his Honour found that the words ORO and CINQUE STELLE (which mean GOLD and FIVE STAR, respectively, in Italian) were inherently adapted to distinguish coffee products.

The Full Court considered that they were not, and ordered their removal from the Register of Trade Marks.


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