TRADE MARK OR 'ARI VIDERCI'

Written on the 8 December 2014

TRADE MARK OR 'ARI VIDERCI' 'CIAO' business owners, a recent High court Decision has implied now is the time to register non-English language trade marks in Australia.

Two coffee distributors, Cantarella and Modena, found themselves embroiled in a heated brew over the Italian words 'oro' and 'cinque stelle', which mean 'gold' and 'five star' respectively.

Vittoria coffee vendor Cantarella trade marked the words successfully in 2000 and 2001, but lost the rights last year when the Federal Court overturned its lawsuit against Modena, the Australian distributor of Molinari coffee.

Modena argued in court that the trade marks weren't distinctive and Cantarella's trade mark registrations should be removed, but the High Court disagreed.

If Modena were to continue using the terms, it would infringe Cantarella's trade marks and therefore face an injunction.

"Given this case considered marks consisting of words in Italian [the second most commonly spoken language in Australia], the High Court's decision in Cantarella v Modena will make it easier for applicants to register trade marks consisting of foreign words that might not be registrable as English words," said Sydney-based DLA Piper special counsel Rohan Singh (pictured).

"If you want to register non-English language trade marks in Australia, now is the time to try."

The decision was handed down with a word of warning to businesses, including importers, wholesalers and retailers.

In a statement to the public, DLA Piper issued a caution to businesses that there will be an "increased risk that the use of seemingly descriptive foreign words on packaging could infringe, even if a prominent brand is also used on the packaging".

The law firm suggested businesses should have clearance searches undertaken to check whether the word are available before committing to usage, or risk injunctions.



Latest News

AGENTS REPORTING STRONG DEMAND FOR MELBOURNE CBD OFFICE SPACE PURCHASES

SEVEN Melbourne CBD offices have recently sold for more than $11 million in total, demonstrating huge demand for c...

DREAMWORLD PARENT COMPANY DEMOTES CEO DEBORAH THOMAS

ARDENT LEISURE, the parent company of Gold Coast's Dreamworld theme park, has reshuffled its core leadership w...

MELBOURNE SHOPPING CENTRE SELLS FOR $48m AS CHINESE DEMAND RAMPS UP

A MELBOURNE shopping centre has been sold for $48 million, bringing the total spent by Chinese investors on Victor...

HOW WEDDING WOES INSPIRED A BOOMING BUSINESS FOR MEGAN ZIEMS

WHEN she was dress shopping for her wedding in 2010, Megan Ziems (pictured left) was disappointed to discover a ma...

Related News

FURNITURE DISRUPTOR SET TO SHARE HIS ONE OF A KIND BUSINESS MODEL

IT'S no secret that Australians love homemaking. Their ceaseless quest to create the perfect place to call hom...

WEEDING OUT THE ASX'S BURGEONING CANNABIS TREND: 8 COMPANIES TO WATCH

A NICHE is budding on the ASX in the form of medical cannabis, an industry which has been on the country's rad...

FRESH CLASS ACTION TO REVEAL ANOTHER SIDE OF SLATER AND GORDON DOWNFALL

ACA LAWYERS has issued a formal letter of demand to Andrew Grech (pictured), managing director of Slater and Gordo...

STARSHIPS WERE MEANT TO DELIVER DOMINO'S PIZZA

NICKI Minaj may have been off the mark when she declared 'starships were meant to fly'. However, she m...

EVENTS COMING UP

 

Contact us

Email News Update Sign Up Contact Details
Subscriptions

PO Box 2087
Brisbane QLD 4001

LoginTell a FriendSign Up to Newsletter