Posted on March 14, 2015
In Australia, a word cannot be registered as a trade mark if it does not distinguish the applicant’s goods from the goods of other persons, so it may not be possible to register trademark on the word ‘hat’ in connection with a hat business.
This does not necessarily remain true if the trademark word is in a language other than English.
The High Court recently considered a matter which concerned the words ‘Oro’ and ‘Cinque Stelle’ which mean ‘gold’ and ‘five star’ in Italian, and were registered trademarks owned by Cantarella Bros. Modena Trading sought to cancel the trademarks owned by Cantarella Bros on the grounds that they did not distinguish the coffee sold by Cantarella Bros from the coffee sold by other coffee traders.
The High Court found that the words were able to be registered as trademarks as they were “inherently adapted” to distinguish coffee products in Australia, and the focus in reaching this decision was on what a consumer perceives, rather than another trader.
This case (Cantarella Bros v Modena Trading [2014] HCA 48) makes it clear that it is not the meaning of a foreign word as translated which is critical to whether a trademark can be registered, but the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.
If you wish to register a trademark, oppose a registered trademark, or you have any queries concerning trademarks please do not hesitate to contact us.
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