The High Court of Australia today delivered Cantarella Bros Pty Limited v Modena Trading Pty Limited  HCA 48 (3 December 2014). http://www.austlii.edu.au/au/cases/cth/HCA/2014/48.html
Cantarella Bros Pty Limited and Modena Trading Pty Limited both advertise, offer for sale and sell coffee products in Australia. Since 1958, Cantarella has imported, processed and packaged coffee beans for sale under the trade marks VITTORIA, AURORA, DELTA and CHICCO D’ORO. It is also the registered proprietor of trade marks including MEDAGLIA D’ORO, ORO (ie “Gold”) and CINQUE STELLE (ie “Five Stars”). These trade marks are used in Australia and other countries.
Modena imports coffee from Molinari, an Italian company. Molinari has used various trademarks in Australia including ORO, QUALITY ORO and CINQUE STELLE.
Canteralla brought proceedings in the Federal Court against Modena for trade mark infringement. Modena cross claimed that Canteralla’s trade marks should be cancelled on the grounds that they were not inherently adapted to distinguish the goods for which they were registered under s41 of the Trade Marks Act (1995) (Cth). Canteralla succeeded in the Federal Court.
The Full Court of the Federal Court allowed an appeal by Modena, holding that Cantellara’s trade marks should be cancelled.
The High Court of Australia allowed an appeal brought by Canteralla, holding that their trade marks had been inherently adapted to distinguish the goods for which they were registered from the goods of other persons. The High Court ordered that the Full Court’s orders be set aside.
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