Written on the 8 December 2014

'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.






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