Cantarella Bros Pty Limited v Modena Trading Pty Limited

[2014] HCATrans 157

[2014] HCATrans 157

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S67 of 2014

B e t w e e n -

CANTARELLA BROS PTY LIMITED (ACN 000 095 607)

Appellant

and

MODENA TRADING PTY LIMITED (ACN 140 018 015)

Respondent

FRENCH CJ
HAYNE J
CRENNAN J
KIEFEL J
GAGELER J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON TUESDAY, 5 AUGUST 2014, AT 10.15 AM

Copyright in the High Court of Australia

MR A.J.L. BANNON, SC:   If the Court pleases, in that matter, I appear for the appellant with my learned friend, MR M. GREEN.  (instructed by Clayton Utz Lawyers)

MR I.M. JACKMAN, SC:   May it please the Court, I appear with my learned friend, MS C.L. COCHRANE, for the respondent.  (instructed by Corrs Chambers Westgarth Lawyers)

FRENCH CJ:   Yes, Mr Bannon.

MR BANNON:   Thank you, your Honour.  Your Honours, in this matter, the appellant seeks to restore to the register two marks which have been determined, firstly, by the registrar to have a sufficient capacity to distinguish, and secondly, by the primary judge in a factual determination applying, we submit, the correct test.

We submit that the approach of the primary judge, and the submissions which we put before this Court, is warranted by an appreciation that the statutory expression “inherently adapted to distinguish” demands attention to the ordinary meaning or signification conveyed by a mark independent of its use being a meaning likely to be so understood by the target audience and not being an allusive reference.  We say that is the approach of the primary judge, but primarily, it is borne from the starting point which is the words of the statute; not, we respectfully submit, albeit it may be informed by English authority and indeed Australian authority, but fundamentally, the words of the statute.  It is correctly, with respect, adopted and interpreted in the way we suggest in Justice Kitto’s judgment in Clark, but the starting point is, as always, the words of the statute.

The factual finding to which the primary judge referred, namely, that ordinary English speakers which consist of, his Honour accepted, or found was the vast majority of the likely target audience would not understand or attribute a meaning to the words, being “gold” or “five stars” in the case of Cinque Stelle, is not a finding which is challenged, nor could it be challenged, we respectfully submit.  If one pauses there at that starting point and accepting that the statute does not provide some sort of carve‑out for foreign words but invites the court interpreting the statute and, indeed, the registrar to apply those statutory words to whatever mark or sign comes before it, we respectfully submit it cannot be gainsaid that to those persons who are the recipients of those marks, those words have an inherent capacity to distinguish, and the words therefore to that extent have an inherent capacity to distinguish.

What you find in his Honour’s judgment, he understands and refers to the extent of Italian speakers in the country, he looks at that and arrives at the practical evaluative judgment – that is another way of putting it – to say these words have a sufficient capacity to distinguish.  What we say ‑ and really it is encapsulated in point 2 of our outline – putting it another way, it is not likely that a trader would wish to deploy Oro and Cinque Stelle for meanings, namely, the Italian meanings, of which the target audience in large measure is entirely ignorant.

We consider as an example – analogies are always troublesome, and this probably explains why I am not in marketing – 22 over seven to many people would be understood as pi.  If you applied for that mark for pies, including meat pies, the target audience would include many people who went to maths and many people who first see 22 over seven and think of pi.  But that does not mean that the mark does not have a capacity, or at least some capacity, to distinguish.  That mark has ‑ like these words “Oro” and “Cinque Stelle” ‑ does have an allusive character as well.

What we submit is the Full Court eschewed what we respectfully submit is the correct statutory approach and treated the conduct of traders as determinative without addressing in the first instance the question of the ordinary signification of the words and, indeed, focused far more on what the traders might understand and did that by a process of backwards reasoning, we respectfully submit, by looking at the conduct of traders and what they had done. 

Now, I will come to this in a little detail in a moment.  Although the Full Court refers to what it describes as wide uses informed by evidence of current usage ‑ that is, current at the date of trial ‑ when it comes to its reasoning process in about paragraph 97, which I will come to, it does seem to focus only on uses prior to that date which, we respectfully submit, it can only be uses prior to that date.  Subsequent use cannot logically inform it.  If that is the correct ‑ ‑ ‑

CRENNAN J:   Are they all uses in Australia?  All the uses prior to that ‑ ‑ ‑

MR BANNON:   The list of current uses which are referred to include some uses outside of Australia.  To the extent they descend to - in their reasoning process it appears they identify two uses:  one is uses by the Molinari company itself in Australia; and, secondly, to trade mark applications.

GAGELER J:   If the correct test is whether, at the relevant date, a trader would wish to employ the mark why is not subsequent employment of the mark by a trader logically probative of that question?

MR BANNON:   Post the date of registration?

GAGELER J:   Yes.

MR BANNON:   It invites consideration of why it is that the trader used the mark and a consideration of the way in which they used the mark and whether or not they used the mark of all, none of which issues were analysed.

CRENNAN J:   In a sense the question is inviting you to consider a desire, a common desire, if you like ‑ ‑ ‑

MR BANNON:   Yes.

CRENNAN J:   ‑ ‑ ‑ expressed by traders in a particular trade, post the registration.  The question is asking, as I understand it, does not that bear on the inherent capacity to distinguish?

MR BANNON:   Not without some analysis of why it is that the trader used it and how it is that the trader used it and, indeed, the circumstances in which the trader used it.  In other words, to the extent there are uses which are identified at the trial date, which are well after the registration dates and well after the appellant had commenced to use to significant effect the names, without understanding precisely when it was that the other company started to use it, how they used it, it just begs the question and opens a whole series of collateral inquiries as to whether they were using it with improper motive or not.  Improper motive would capture, by way of example, whether they wish to take advantage, for example, of the reputation of the market leader and the evidence was we were in this sphere, if not the market leader, then a significant player in the market. 

So as a matter of theory, it is not impossible for that to occur but it does not appear that the Full Court actually relied upon that.  They do not seem to have used that backwards reasoning.  Perhaps I could just attempt to make good that point at paragraph 97 of the Full Court judgment.  This is 788 of the appeal book, volume 2.  It is the last sentence of that paragraph which appears to say:

This past fact is relevant to the enquiry as to whether other traders, prospectively, might wish –

then at 98 they say ‑

As we mentioned before, since July1996 –

there is that reference.  Then 99 does say ‑

is frequently used –

but the last sentence they rely on something in 1955.  There is a problem with that because it was agreed that that website went in not to prove that fact.  I do not know that is a dispute between us but we have footnoted that in our submissions and we now have a bit of transcript to confirm that.  Then paragraph 100 addresses two prior trade mark applications.  So, we respectively submit, a proper analysis of those reasons is that they have not, in fact – they may have parried with that exercise of looking at post‑use and going backwards – the Full Court has baulked at that.  There is no notice of contention to say that it should be justified by taking into account later use.

CRENNAN J:   Did those prior trade mark applications ripen into registrations?

MR BANNON:   Yes.  One of them was ours – the Medaglia D’Oro.  The other was for a combination of words and an image as well.  It is not actually ‑ ‑ ‑

CRENNAN J:   This is the Lavazza Qualità Oro.

MR BANNON:   The Lavazza one.  That is appeal book 291.  I will take your Honours to that in a moment.

CRENNAN J:   Yes, okay.

MR BANNON:   The other answer to your Honour Justice Gageler’s question is this, that the relevant part of the section is directed, at least in the first instance, to the Registrar of Trade Marks considering a trade mark application at a date of registration.  The registrar does not have, obviously, what has or will happen in the future.  That aspect, plus the use of the word “inherent”, we say drives one to give a meaning to the word “inherent” and that the word “inherent” or “inherently” asks one to consider what is the essential signification ordinarily conveyed by that mark?

Now, that exercise is not ever going to be informed by subsequent use.  For example, subsequent use by traders - traders may independently or because they see others do it think that the use of an Italian word, even if it does not have an inherent meaning, is a good thing to use to market your product because it conveys something like an allusion towards Italy, this is interesting, this is something which might be a good thing to have.  The fact that a whole lot of people think that be in a copycat style or even independently does not answer the question as to what is the inherent nature of the mark and, indeed, there is something pleasing about this.  You will see on our packaging, which I will take your Honours to ‑ ‑ ‑

CRENNAN J:   Mind you, you can have a mark like Band‑Aid inherently capable of distinguishing which becomes generic over the course of time, so that can happen obviously.

MR BANNON:   That can happen under the old section 56 of the 1955 Act, and I cannot remember what it is under the current Act.

CRENNAN J:   But that was not argued in this case.

MR BANNON:   No, no.  The other thing you can have too, of course, is as at the date of registration, under section 41, you can have a situation where an opponent will argue or an applicant for application will say as a matter of fact, even if there is an inherent capacity to distinguish, the fact that a number of other traders were in the market using the name means that no one had an exclusive reputation in the word, or could acquire one.

CRENNAN J:   Sort of foreshadowing honest concurrent use somehow, I suppose.

MR BANNON:   Or at least disputing that even if there is an inherent capacity in the word, the fact that so many other traders have used it means it does not have distinctiveness in fact, and so nobody should get registered for it.

CRENNAN J:   Yes, either way, really, I suppose, there are those two possibilities.

MR BANNON:   But distinctiveness in fact was not argued here.  The respondent did not attempt to suggest there was evidence of reputation in other traders as at the date, which meant that there was no distinctiveness in fact.  The matter was decided on perhaps the higher point; did the mark have any inherent capacity to distinguish?

Could I, against that background, go to what we submit are relevant sections of the Act itself.  The first is in the definition section, section 6.  The definition of “sign”, which includes “the following or any combination of the following”, and this Act introduced “shape, colour, sound”, but also comprehended name devices, and then “trade mark” is said to have “the meaning given by section 17”.  One turns then to section 17.  It is:

a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

It is the notion of distinguishing which is the key feature.  Section 27 is the process by which a person may apply for a registration.  It says –

A person may apply for the registration of a trade mark –

Subsection (1)(a) –

the person claims to be the owner of the trade mark –

and (b), intends to use or has been using.  Then that application is to be considered by the registrar pursuant to section 31:

The Registrar must . . . examine and report on:

(a)whether the application [complies] with this Act; and

(b)whether there are grounds under Division 2 for rejecting it.

Then 33 –

The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds for rejecting it.

Then one turns to – there is an appeal process available on 35.  Then under Division 2, which commences with section 39, one of the grounds for rejecting an application is the critical section, section 41.  Section 41(1) is not presently relevant.  Subsection (2):

An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trademark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent‑

I emphasise the word “extent”‑

to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)the Registrar is to consider whether, because of the combined effect of the following:

(i)the extent to which it is inherently adapted . . . 

(ii)the use, or intended use . . . 

(iii)any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant -

Then, subsection (6) provides that:

If the Registrar finds that the trade mark is not inherently adapted to distinguish‑

that is, to any extent at all, then you can still achieve registration by evidence of significant use.  That does not apply here.  That was not sought to be relied upon.

CRENNAN J:   Is the argument here over whether it is inherently adapted to any extent at all?

MR BANNON:   Yes, and that is how the argument was fought.  Section 44 does not arise here but it is referred to in subsection (1).  That is in the case of whether there are competing registrations, either existing registrations or existing applications on foot, but none of that applies here.

CRENNAN J:   Well, was there co‑existence on the register of Lavazza Qualità Oro and your client’s Oro mark?  In other words, did Lavazza get registered first?

MR BANNON:   Yes, yes.  I think your Honour Justice Crennan noted in the special leave application that there is a reference on our Oro registration, which appears at page 739 - that is the certificate of registration - and at 740.  So 739 is the commencement of the registration certificate.  At 740, line 30, there is a statement:

Provisions of paragraph 44(3)(b) applied. 

There is no evidence as to what that relates to, and to the extent we have been able to make inquiries - and this is really no more than a statement from the Bar table ‑ but the fact is we did have a registration ‑ that is, Cantarella had a registration for Oro Nero, and there is another product which we sold under Oro Nero, and we think that is what that is a reference to.  We do not believe it is a reference to the Lavazza but, as I say, it was not investigated at trial but we think that is what it is a reference to.  Then continuing back to the Act, just in our outline we have given a reference to the Full Court’s recognition that factual distinctiveness was not an issue and that is at paragraph 44 of the Full Court judgment at appeal book 775.  They simply record the distinctiveness in fact was not an issue.

Then section 58 we refer to as being a ground for opposing registration if the applicant is not an owner of the trade mark.  Now, that would apply, for example, if someone had evidence to say that somebody else had used the mark, that is, a substantially identical mark, so that in this case it would have to be Oro or Cinque Stelle.  Additional words forming part of a wider mark, Carnival Cruise Lines ‑ we have given a reference in our submissions ‑ fairstar the fun ship is not the same mark as fun ship because it is a composite mark so it is not substantially identical.

You cannot succeed in proving that somebody else is the owner of the mark unless you show the substantially identical mark was used in Australia in relation to relevant goods.  So the point of referring to 58 is that that was not a ground relied upon by the respondent.  In particular, it was not sought to be said that anything that Caffé Molinari had done in Australia by invoices or otherwise, constituted a prior use by Molinari in Australia of the mark and that would have been a simple thing to do if they believed they had evidence to bring forward to support that argument, or any other person.  Then paragraph 60 is another section:

Trade mark similar to trade mark that has acquired a reputation in Australia ‑

and that is an example of a reliance on the use by others, in the present case, or Cinque Stelle, that is actual use and evidence of use by others could be relied upon saying, you should not be registered for those marks because there is a reputation in others and there is a prospect of factual deceptiveness.  Again, that was not the subject of any claim and no evidence was brought forward to establish that in these proceedings.  Then section 88 is the cancellation provision and section 88(1) provides that:

a prescribed court may –

which includes the Federal Court –

on the application of an aggrieved person, order that –

the mark be registered by cancellation or removal, and (2) provides that –

An application may be made on any of the following grounds, and on no other grounds:

(a)any of the grounds on which the registration of the trade mark could have been opposed under Division 2 of Part 5 –

Then subsection (c) also picks up subsequent circumstances for section 60 but, in any event, what was relied upon was the lack of inherent distinctiveness under section 41.

Section 92 was also relied upon.  That is an application for removal of the mark on the basis that the mark had not been used, that is, by the proprietor, and that appears from subsection (4):

An application . . . (non‑use application) may be made –

where it has not been used for a certain period of time.  That was relied upon by the respondent at trial.  It failed because the primary judge found that we had in fact used the mark and we were continuing the mark, albeit we also used on the same packaging words “Vittoria” and other names.  His Honour recognised that the prominence of the use of Oro and Cinque Stelle was enough to constitute use.

The Full Court did overturn that finding but on a limited basis.  They said that because they found that Oro and Cinque Stelle were invalid because they lacked distinctiveness that was the only basis they overturned a non‑use finding.  They did not challenge his Honour’s process of reasoning or say it was wrong in relation to the prominence of use, so the consequence is that, if we are successful on the distinctiveness finding, the non‑use application would also fail.

FRENCH CJ:   Ultimately we are only concerned with the application of section 41.

MR BANNON:   Yes.  Then just to complete the exercise, section 120 is the infringement section, namely, that there is an infringement if the mark is used by, in this case the respondent, as his Honour found, which is substantially identical with the registered marks and the case law tells us that it has to be used as a trade mark, that is, to distinguish goods, and we do rely on this finding and have done in our submissions. 

There was also a defence under section 122 which failed, that is to say, despite 120 a person does not use – does not infringe a mark if they can demonstrate that it was used in good faith and in particular to (b) to indicate a character or quality of goods, in particular (b)(i).  That was a defence which was relied upon, 122(1)(b)(i), unsuccessfully, and that was in relation to the Caffè Molinari product which was being imported into Australia by the respondent.

Now, the significance of that is, perhaps coming back to a question which was asked of me earlier, what we do have in this case is an analysis in the infringement context of the Caffè Molinari conduct and findings that the way in which Caffè Molinari/the respondent used both Oro and Cinque Stelle which was a use by them to distinguish their goods and a rejection of the defence that it was used simply for a descriptive purpose. 

So where there has been a proper analysis of any competing product as to how they have used those words it has not been a use for the purpose of the ordinary signification.  It has been a purpose for a trade mark use to distinguish, and that is powerful evidence – in fact, his Honour found - in paragraph 139 his Honour said the very fact that they have used it this way tells you that this trader thinks that it “has an inherent capacity to distinguish”.  That is a powerful finding.  If one is going to look at any ex post facto conduct, that is the best ex post facto conduct, and I will take your Honours to the passages in that fairly briefly.

CRENNAN J:   The same applies to Lavazza, I suppose – their composite mark which contains the words “Qualità Oro” that the composite mark is inherently capable of distinguishing.

MR BANNON:   Quite, yes.  During the course of the hearing, or perhaps just prior, the respondent indicated that he was not going to persist with “Oro” on its own and indicated it was going to change to “Qualità Oro”.  We indicated, and maintained, that we do not say that is an infringement of the mark.  There was an argument as to whether or not there should be an injunction in the light of an indication in relation to the use of “Oro”.  His Honour said on the evidence because of the prior threat ‑ ‑ ‑

CRENNAN J:   What is your position about “Qualità Oro”?  That it is not trade mark use? 

MR BANNON:   That it is not substantially identical with the mark and it is not ‑ ‑ ‑

CRENNAN J:   Not substantially identical.

MR BANNON:   No.

CRENNAN J:   You are not saying it is not trade mark use?

MR BANNON:   No.  It may or may not be, depending on the way in which it is used – in other words, depending on the prominence of it. 

CRENNAN J:   But there are no disclaimers in that Lavazza registration that the Court has been told about.

MR BANNON:   There is.

CRENNAN J:   There is.

MR BANNON:   This is a registration under the old Act which did have disclaimers.  That appears at 291 of the volume.  So this is one of the two marks which is relied upon by the Full Court in their paragraph 100.

CRENNAN J:   So if that registration is constantly renewed the disclaimer has force, does it?  Is that the way it works?

MR BANNON:   That is a good question, your Honour.  I am sorry, your Honours.  There is a presumption of validity under, I think it is, 234, 235 from memory, but I am not sure what the carry through effect is of the disclaimer. 

CRENNAN J:   It looks like, on its face ‑ ‑ ‑

MR BANNON:   I suspect that probably it has no effect at all.

CRENNAN J:   Well, that may be right, but it looks like a recognition by the proprietor of that trade mark, anyway, that “Qualità Oro” was not being used as a trade mark.

MR BANNON:   No, on its own – exactly on its own.  There is a bit of a difficulty with that in the sense that they were not applying for “Qualità Oro” as a trade mark on its own.

CRENNAN J:   No, no.

MR BANNON:   So what they were applying for was – as the top of the page indicates:

Word:         LAVAZZA QUALITA ORO

Image:        MEDALLION ON RIBBON WREATH GRAIN
  TRAPEZIUMS, TWO AND LINE, ANGLED ‑

And it is described as a type of mark at about line 25 on the page as a “Composite”.

GAGELER J:   The composite being the word, or the three words, plus the image.

MR BANNON:   Yes, words and image, yes.  We have given a reference to a case Wellness – it is a first instance decision of Justice Bennett, but it is useful because it picks up some of the authorities in relation to composite marks.  It all harks back to decisions of this Court such as Shell which poses the question, is a mark being used for the purpose, in effect, of distinguishing the goods, and you have to ask the question, what is the actual mark being used?

So you may have circumstances where, in the Wellness Case, two prominent marks were used, Pro‑Bio and Living Waters in relation to water.  Living Water was the registered mark.  The defendant tried to say that their mark was Pro‑Bio Living Waters.  As her Honour said, well, you can have that circumstance.  It depends on the way in which it is presented.  How does it present to the consumer, and her Honour found in that case, as his Honour found in this case in relation to our usage and in relation to their usage, the prominence of, in that case, Living Waters, in this case Oro and Cinque Stelle, was such that is was being used partly to distinguish the goods and not as part of some overall composite mark. 

The sort of indications for testing whether it is a composite mark include are they in the same script, are they collocated in a particular way.  To take this example here of Lavazza, what would confirm that - whether or not they had a registration, let us take an example, if they were respondents to some application to infringement they would properly say the mark we are using is that combination.  Because it is all in a box, because it is encapsulated in the way it is, and no doubt if you saw it on the packaging, it would be repeated consistently in that combined form.  That would entitle them fairly to say, the mark we are using is not Oro on its own, and therefore if you come and sue me or us for infringement of the mark “Oro” you have to satisfy this test.  Firstly, is Oro substantially identical with that combination?  Answer, plainly no.  Is it deceptively similar to?  No, because there are too many other bits and pieces floating around in there.

CRENNAN J:   Their other defence to infringement might also be that the – well, there is the disclaimer for the reason that they – the Qualità Oro is not used as a trade mark as part of the composite.  It is a possible defence to infringement, is it not?

MR BANNON:   Well, if they could prove that that is also true, the mere fact that their registration said that would not mean that that was in fact the case.  In other words, if in fact they were using it in a way which, contrary to what is says there, presents as a use of the word in order to distinguish their goods then they would lose infringement…..but anyway the nature of the mark is such that we would accept it would infringe. 

I have taken your Honours to our Oro registration and just for completeness I should identify the Cinque Stelle registration which appears at 742.  Now, could I then turn to the point I adverted to earlier, which we referred to in paragraph 6 of this outline?  As I say the primary judge found that the respondent infringed the registered marks so as to distinguish its goods from those of other traders and rejected the good faith offence. 

We say the inexorable significance of those unchallenged findings of the respondent as a trader regarded the marks as capable of distinguishing its coffee products.  Further, the nature of the analysis, including detailed reference to outward appearances reflects what is required before one can draw conclusions in relation to a trader’s conduct.

CRENNAN J:   Where do we find the exact mark said to infringe?

MR BANNON:   In the respondent’s case ‑ an example of their product – this is in our reference in (a) at the top of page 2 – the respondent’s “Cinque Stelle/Oro packet”; they had the two names on the market.  It appears at 219 to 222.  What his Honour found, and there is no challenge to, is that they used as a trade mark both “Cinque Stelle” and “Oro”.  “Cinque Stelle”, the registration is for the word, not for a particular script, so it does not matter what script one uses, it is the same mark.

Just looking at each of these pages, you have “Cinque Stelle” very prominent down the side of the package, you have it also just under the words “Caffè Molinari”.  Then looking at page 220, again you see it dominating down the side of the package.  Then over the page, there is another reference – sorry, at pages 221 and 222 are the sides of the package, if you like, the narrower sides.

Then in relation to “Oro”, that appears in prominent letters at the foot of the package, and again at 220 near the top, and 221 again, and over at 222.  It is a bit hard to see in that, but the rest of the packaging is in – there is a lot of English text on those packages, and the test, be it Shell and other cases, asks you look at how the mark is presented.  Is it presenting in a way which is designed to attract attention to distinguish the product, or is it simply a descriptive quality?  We say his Honour’s conclusion, which was not challenged, is plainly right.

One can say that that dominant use of Oro, to suggest that this has been used in some sort of treat, we want you to buy this because we think this is – I am not quite sure how you use it – a gold product, a goldenly good product.  There is a whole lot of laudatory statements on the detail of the product which tell you how great the product is, blend of this, blend of that.  Oro is not being used for that; it is being used in a prominent way as a trade mark, as his Honour found, and similarly Cinque Stelle.  None of that contradicts the fact that Caffè Molinari is also a trade mark use as well.

FRENCH CJ:   I notice on the registration of Cinque Stelle there is an advice from the applicant that the English translation of the Italian words is “five‑star”.  What is the statutory significance of that endorsement?

MR BANNON:   There is a regulation which requires that a foreign word be provided with the translation.  That is just a regulation, and that translation was provided.  His Honour noted the fact there was not one provided with Oro.  His Honour also noted the translation was actually wrong because the singular is “Stella” and the plural in Italian of “Stella” is “Stelle”.

FRENCH CJ:   What purpose does that regulation serve under the statute?

MR BANNON:   There is no exposition in the statute of the purpose, is the short answer, but one may infer it may be a part of the information which the registrar requires, or wants to know, which may assist it in the exercise.

CRENNAN J:   It puts a searcher on notice, I suppose.  It puts a searcher of the registrar on notice.

MR BANNON:   Yes, true.

GAGELER J:   How would it assist in the exercise?

MR BANNON:   No doubt going to the question of inherent capacity to distinguish, because we would accept, for example, that there will be foreign words which either form part of the ordinary English language sufficiently that they have no capacity to distinguish.  Cappuccino, maybe, now is such a word.  Fait accompli, maybe, another set of words.  I mean, there are numerous examples.

GAGELER J:   The regulation would require an English translation of those words?

MR BANNON:   Yes.  I suppose the ‑ ‑ ‑

CRENNAN J:   Well, the translation of cappuccino might well be cappuccino, if you see what I mean.

MR BANNON:   I am sorry, your Honour?

CRENNAN J:   The translation of cappuccino may well be cappuccino.

MR BANNON:   Quite.  Section 31 does say:

The Registrar must, in accordance with the regulations, examine and report on ‑

so that might pick that up. The particular regulation is Trade Marks Regulations 1995, regulation 4.3, subparagraph (5):

If the representation of a trade mark in an application for registration of the trade mark includes words of a language other than English, the applicant must file in support of the application a translation of the words into English ‑

Of course, one has here the circumstance that the registrar, whose opinion has certainly been given some weight – certainly, that is a statement that has often been said in appeals from registrar’s decisions ‑ you have a registrar who has considered the matter and decided that there was an inherent capacity to distinguish.  We have a trial judge that has come to that same conclusion, both important, not insignificant factual propositions; it is against that background that the Full Court has done what it did.

The other product ‑ going back to the respondent’s product ‑ is their canister, they had a canister product as well, and that appears in the appeal book at 224.  Again, his Honour found that that was a trade mark infringement.  Then at 722, they also had a website which his Honour relied upon for infringement purposes ‑ ‑ ‑

HAYNE J:   Before you depart from 224 and the earlier photographs of the exhibits, does it matter that I can see a number of expressions in Italian, including the well‑known Italian expression “no how”?

MR BANNON:   Your Honour, on the ‑ ‑ ‑

HAYNE J:   Does anything turn on the fact that we have got both languages deployed on the packet?

MR BANNON:   The fact that there are English laudatory terms tends to confirm that Oro is being used, having regard to its prominence, it would be a factor which would assist in the conclusion that it is being used in a trade mark sense, because if you thought Oro was sufficient to be the laudatory term, then you would not need English saying this is a fantastic product because it has got magnificent Arabica beans, et cetera.

If it is all in Italian, again we say it would not alter the conclusion because again you have such a prominence of Oro, if it was being used in the true Italian sense as saying “gold”, then you would expect it to be in smaller print saying this is a golden product.  In fact, there was a bit of evidence out of cross‑examination which says actually golden in Italian is “dorato”.  That is the adjective.  “Oro” is just the word gold.

FRENCH CJ:   It is the mineral ‑ the metal.

MR BANNON:   It is the mineral.  One of the difficulties with the way this case was run, there was actually no evidence to say in Italy the words “gold” and “Cinque Stelle” – or “Oro” and “Cinque Stelle” have the same colloquial use as we have.  In English, the Macquarie Dictionary and Oxford Dictionary, they will say gold and we will say – we accept it says gold means terrific or whatever and “Cinque Stelle” can mean – sorry, five stars means five stars, but we do not have a knowledge put before the trial judge to say that Italians use those words in the same way.  There is just no evidence which addresses that.  They may or may not do, but there is evidentiary vacuum in relation to that.  But the assumption the Italians would treat it that way, we submit, is no more than that.

At page 140 of the book is the website which is also relied upon for part of the infringing conduct, and again one has prominent uses of Cinque Stelle.  At 140 one can see under the text there:

CINQUE STELLE

Enjoy Italy’s finest coffee with Cinque Stelle –

in capital letters –

our five star guarantee of premium quality.

His Honour says that Cinque Stelle is being used as a selection process to indicate their stamp that they have approved this as a particular ‑ ‑ ‑

CRENNAN J:   Well, their text on page 140 suggests that Cinque Stelle is a name for that product.

MR BANNON:   Yes, and one can see the following pages it is for prominent use.  Similarly, if one jumps to 148 one sees uses of Oro there as well, and following.  So the way his Honour addressed this is, firstly, if I could – that is, the primary judge – firstly, in paragraph 28 he dealt with the matter in relation to the principles involved.  That is paragraph 28 at 695 of the appeal book.  This is the section which deals with general principles, so the first part of that on 695 at paragraph 28 his Honour says:

Where a trader advertises particular words and emphasises those words in relation to the trader’s own goods for the purpose of indicating a connection in the course of trade . . . consumers are being invited to purchase goods of the trader that are to be distinguished . . . partly because they are described with those words.

It does not make any difference once that finding is made that you add – or the defendant adds an indication of commercial origin.  That does not defeat trade mark origin, and Mark Foy’s is referred to there.

Paragraph 29 contains a similar statement towards the end there by reference to Caterpillar Loader and again the last sentence of paragraph 30 and what appears at 31 and 32 is also relevant.  But 33, as her Honour perhaps draws some matters together – this is on page 697:

The question is whether, in the setting on the package on which the relevant words appear, those words are being used to indicate a connection in the course of trade –

They are then used to distinguish. 

While particular words are capable of describing the contents of a package, they may do more than that.  It is possible that two trade marks are used, one a generic word used over a product range and the other used as a badge of origin in respect of a particular produce . . . Prominence is one factor that suggests trade mark use.  Where the words in question appear in letters that are very large and distinctive in form and in a prominent position across the face of the packaging, it is difficult to see that the purpose and role of the words on the packaging are adequately accounted for as informing prospective buyers as to the nature of the contents of the packaging.  Where there is, in more modest and restrained regular print, below the large and distinctive form of the words in question, words that are indubitably descriptive of the contents, the large and distinctive writing is more likely to the name of the particular produce contained in the packaging, rather than a descriptor of the product -

Then at 122 of the judgment at page 718, his Honour picks up in a slightly different context, but the principle is still relevant, the Shell reference there in the middle of that paragraph:

In assessing whether something functions as a trade mark, the task is to obtain an understanding of the purpose and nature of the use –

The question is objectively viewed and this is in relation to our use on the non‑use but it is the same principle.  Then, in relation to the particular findings in relation to the conduct, it starts at 132 at page 721.  These are particular matters to which his Honour draws attention.  Paragraph 133 draws attention to the particular bag and the Cinque Stelle being used without translation and the words which appear after it.  There is a conclusion in that paragraph:

That use of Cinque Stelle appears to be as a badge of origin.  The statement is that the particular coffee produce has undergone a particular selection process –

At paragraph 134, his Honour picks up some references to the website – the Modena website which is the respondent.  Then over the page, at the top of that page, it says:

For those who are used to the best, Oro, Italian for gold, is an exquisite blend –

The fact that they say Oro is Italian for gold does not detract from – in fact it tends to reaffirm that they operating on the assumption people do not understand the natural meaning of the word but they are emphasising Oro as the name of its product and using it to distinguish.  Then, it is continuing references in the following paragraphs, 138 – in 138 there are references on mugs, et cetera.  Paragraph 139 – at the bottom of that page, his Honour says:

Thus, the name Cinque Stelle provides that guarantee.  It is an indication of the company or people who provide the product:  it is their badge of selection.  The following words then appear:

The blends carrying the Cinque Stelle name are the pinnacle of our craft.

GAGELER J:   It would be exactly the same, would it not, if it used the English words “five‑star”?  It would convey that significance, would it not?

MR BANNON:   In what sense?

GAGELER J:   Well, his Honour’s findings about the signification of Cinque Stelle as a badge of origin, an indication of the highest quality, would follow from the use of the English translation “five‑star”.

MR BANNON:   Provided it – the words “badge of origin” are the key.  So provided it is used as a badge of origin and if it said “five‑ star” in very prominent letters and there was a valid registration for “five‑star” then that would be trade mark use.

KIEFEL J:   But “five‑star” just in English language would be understood to be simply a description of quality, would it not?

MR BANNON:   Yes, we accept that, the point being though that you could still, if there was a valid registration for five‑star you could infringe it by the way in which you used it, which could include a very prominent “five‑star” all over the package, and all of his Honour’s comments would be the same.  A question for infringement is, is it being used as a badge of origin or is it being simply used as a descriptive quality?  At the top of page 723, at the last part of 139, his Honour says:

That suggests that Cinque Stelle has an inherent capacity to distinguish.  Modena and Molinari are not using the words in a way that describes their products.  They are using Cinque Stelle as a badge of origin.  To that extent, Cinque Stelle is being used as a trade mark.

So that is the point I adverted to earlier, that that is a powerful finding, with respect, the very fact that this trader, an expert in the field, one might think, thinks that this can be used and should be used to distinguish his products is one of the best pieces of evidence to confirm what his Honour found based on the ordinary meaning of the words, or lack thereof, has an inherent capacity to distinguish.  His Honour’s findings continue through in relation to Oro and the passages continue right through to 144, when his Honour concludes:

It is clear that Modena has used Cinque Stelle and Oro . . . in relation to coffee products within the class –

and finds infringement, and then his Honour goes on to deal with the section 122 defence, and that starts at 145, and his Honour refers to the fact that at the foot of that paragraph, 145, at the foot of 724:

Rather, Modena says, it uses Oro and Cinque Stelle to distinguish between different products . . . It says that, therefore, it does not use the signs as trade marks.

His Honour goes into some detail through all the evidence in relation to that, and does not accept the evidence put forward on that part, and at paragraph 176, 732 of the appeal books, concludes that the 122 defence is not made out.  The primary judge also dealt with the issue as to whether or not Cantarella had used the marks, and again, his Honour concluded that we had, that the non‑use application should be rejected.  Could I just identify examples of our product, firstly, at AB 195?

So this is our Cinque Stelle product, so again there is two side visions on 195, 196, prominent use of Cinque Stelle.  Similarly, over the page, 195, 198, and at page 200 is our Oro product.  I mean, there are many other examples in the books that they are sufficient to indicate the exercise which his Honour was addressing, and his Honour in that regard found firstly at paragraph 45, in terms of principle, he identifies the conduct of Cantarella ‑ ‑ ‑

FRENCH CJ:   Sorry, page?

MR BANNON:   Sorry, at page 700 of the appeal book.  So he identifies the conduct of Cantarella and:

The coffee business has expanded since 1958 and Cantarella now promotes and sells coffee using the following registered trade marks ‑

and at the bottom of that page ‑

Each of those trade marks is used by Cantarella in Australia and in other countries ‑

This was a finding which was confirmed by the Full Court at paragraph 7, appeal book 767, 768.  It is confirmed in the sense they just repeated it word for word.  Then starting at paragraph 50, his Honour recounts that:

Cantarella began using the Oro Mark in approximately 1996 ‑

and then 51 ‑

Cinque Stelle branded coffee was first marketed in 2000.

Paragraphs 50 and 51 have their direct repeat in the Full Court judgment at paragraphs 8 and 9, the Full Court judgment respectively.  Then his Honour’s recount of the various uses of ‑ in each case his Honour says is Cinque Stelle branded coffee, or Oro coffee, if it is branded that; that is a trade mark use.  Each of those findings, 52 right through to 59 is all set out and you will find it replete with references to brand.  Each of those findings have their match in Full Court reasons 10 through to 17.

Now, it is against the background of that material his Honour, the primary judge, considered the non‑use argument and that commences at 122 of the judgment which is at page 718.  His Honour records at paragraph 122 that:

Modena says that Cantarella has not established that it has used Oro and Cinque Stelle as trade marks. 

Once the trade mark non‑use application is filed the onus which is to the owner of the mark to prove that they have used it and we did so by proving sales of the various products, and then his Honour says:

In assessing whether ‑

this is the part I took your Honours to earlier but in this context it is the same test, namely the Shell test –

The question is whether, viewed objectively –

And 123, his Honour really sets out the only argument really being put forward by Modena, namely, that we did not use it as marks because we use Vittoria as a mark and his Honour goes through that and deals with it at 129 in conclusion.  His Honour says ‑ this is page 720 of the appeal book:

Cantarella uses Cinque Stelle and Oro almost invariably in conjunction with its trade mark Vittoria.  However, I am not persuaded that that conjunctive use indicates that Cinque Stelle and Oro are used only to distinguish different categories of products of Cantarella.  The usage described above ‑

Now, the only usage described above is paragraphs 50 and following which I took your Honours to – what that must be referring to – indicates that they have been used and are being used as trade marks.

CRENNAN J:   In paragraph 125, his Honour refers to the argument that Modena says that there is “common usage in the trade” of Oro, at least, or perhaps implicitly both.  Does his Honour come back to that point in the context of the inherent capacity to distinguish context?

MR BANNON:   His Honour refers to the argument in the context of inherent capacity, but his Honour decides that the issue is determined by reference to the inherent meaning of it, and so he does not deal with it.  We say that that is the correct approach.  Perhaps just in passing, those other uses are referred to in his Honour’s judgment and then repeated by the Full Court ‑ ‑ ‑

FRENCH CJ:   Just incidentally, on a number of the packages where Cinque Stelle appears, there is also five stars.

MR BANNON:   Yes.

FRENCH CJ:   Did that factor in any of the arguments at all?

MR BANNON:   It did not affect the outcome on infringement because no one suggested that it detracted from the case of infringement, and it was not – we say it does not affect whether we use the marks as - Cinque Stelle as a mark.  It may be a reinforcement of the mark, but again, we say it does not have an impact.  The particular other uses which are referred to start at 711, starting at paragraph 93 of the judgment. 

Again, the approach of the Full Court is really to track, word for word, these paragraphs.  So 93 through to 99 of his Honour’s judgment have their counterpart in exact terms in paragraphs 35 through to 41 of the Full Court judgment.  But, each of the evidentiary references there are to – one will see a repeated reference to the present tense, because it was all in relation to the position as at the date of the trial.  The last sentence of 93 refers to a website, the second last sentence of 93 on page 711 refers to a website for Lavazza coffee. It says that:

Qualità Oro was the first product to be imported to Australia by the founders of Valcorp Fine Foods in 1955.

In our submissions, at paragraph 17 of our submissions in‑chief and to footnote 6 which picks up a transcript reference which is not in the appeal books, which I will hand up in due course, which indicates that there was an objection to the website going in as proving any fact in it and that limitation was imposed by the Court, his Honour, and accepted, so it only went in as proving ‑ ‑ ‑

CRENNAN J:   In any event, you say that would not infringe?

MR BANNON:   It would not infringe anyway.  I will hand up those copies.  If there is any issue about it, I can come back to it in due course.  It is contained in those pages.

GAGELER J:   Why would it not infringe?

MR BANNON:   Because it is a combined – if the mark being used was “Lavazza Qualità Oro”, then Lavazza Qualità Oro is not substantially identical with the mark “Oro”.  There are three requirements, in effect, of infringement.  First, you have to use the relevant mark as a trade mark, that is, to distinguish and not merely descriptive; that would be satisfied here.  Secondly, it has to be used in relation to the relevant goods for which the mark is registered, and that would be satisfied here.  But thirdly, it has to either be substantially identical with or deceptively similar to.  It is not substantially identical with because you have got two other words attached to it; provided it is part of the same mark, we would accept it is not deceptively similar to because those other words would be sufficient to distinguish it.

CRENNAN J:   Is not the other point that the disclaimer indicates no monopoly in relation to those words which, in turn, leads to categorising them as descriptive?

MR BANNON:   Perhaps that is right too, your Honour.

GAGELER J:   Which words are descriptive?

CRENNAN J:   “Qualità Oro” is a disclaimed in the registration.

FRENCH CJ:   A lot of these considerations are of a penumbral character.  We are ultimately concerned with the question of “inherently adapted to distinguish”, are we not?

MR BANNON:   Absolutely, we are.  Perhaps just by way of background, and I was going to go to the key issue, but it is not unimportant to consider – because when one comes to the Full Court’s reasoning where they say there are other uses, therefore that shows there is no inherent capacity, or even they dissent to saying that shows that there was an ordinary meaning.  Both the exercise on non‑use and infringement demonstrate that an analysis of the way in which a trader uses it informs two questions; one, whether it has been used as a trade mark, in which case it is not being used merely descriptively, and secondly, indeed whether in any event there is any descriptive element in that – that is ,whether there has been ‑ ‑ ‑

FRENCH CJ:   It is a metaphorical designation of quality, is it not, if it were translated into English?

MR BANNON:   Yes.

FRENCH CJ:   It is being associated with the quality of a particular mix of coffee beans or something in ‑ ‑ ‑

MR BANNON:   Yes.  It presents as three letters in the case of “Oro”, which do not have a meaning to the vast majority of the target audience, and in “Cinque Stelle”, that combination of words which again has the same character.

CRENNAN J:   Are these the steps in your argument, that common usage in the trade of a word is not enough itself to rebut an inherent capacity to distinguish because, step two, you have to look at what the usage is, if it is not common trade mark usage in the trade.  Is that it?

MR BANNON:   That is right, exactly.

CRENNAN J:   Yes.

MR BANNON:   We say step one is you have to inquire what is the inherent nature of the mark.  You cannot avoid that by jumping to usage.  You always have to ask that question.

CRENNAN J:   You have to look at its ordinary signification first.

MR BANNON:   That is right.  That could include a shape as well, and Kenman Kandy was that example, where the Full Court had to wrestle with the shape of a confectionery, whether it was in the shape of a bug; your Honour the Chief Justice was part of that exercise.  It does not have to be in each case a word, but it is the ordinary signification.  What is the inherent nature of it, what is the inherent meaning of it, bearing in mind that the whole concept of a trade mark is, in section 17, the concept of distinguishing the capturing by a grant of a right of the ability to prevent other traders from using it for that distinguishing purpose.

So everything either has an obvious connotation, be it a shape or a word, or it does not.  If it does not have an obvious connotation, relevant to the particular goods in respect of which registration is sought, we say shortly there is inherent capacity to distinguish.  Now, you cannot sidestep that question by jumping and saying well, let us look what other traders do, without ever asking that question because the thing you are not asking ‑ ‑ ‑

FRENCH CJ:   We are looking at a binary outcome in this case.  It is either inherently adapted to distinguish or it is not.

MR BANNON:   Yes.

FRENCH CJ:   But the concept seems to be assumed by the statute to be a sliding scale concept because you have “to the extent that”.

MR BANNON:   Exactly.

FRENCH CJ:   What does that tell us about the meaning of “inherently adapted to distinguish” in this context?

MR BANNON:   Well, one way of approaching it is this.  Let it be assumed as, as I say, the case is, that you ask – well, two things.  We say firstly that that does not detract from but tends to rather reinforce what we say is step one, namely, you look at the essential meaning in the relevant context.  Step two, because it is only part of the equation and it expressly refers to the extent to which, it does require an assessment by, be it the registrar or a court, to say is that extent sufficient to warrant registration?  So take the example in this case.

Let it be assumed, as his Honour acknowledged, he recognised you have Oro which does not have a meaning to – his Honour does not put a figure on it.  Let us call it 90 per cent or a large percentage of ordinary English speakers, even, as his Honour says, the highly educated ones with a Romanised background of learning.  You might have an illusive situation.  Now, in relation to that, we say it is very difficult to come to any other conclusion that in relation to those persons, in relation to that part of the target market, it is very hard to say that that does not have an inherent capacity to distinguish, because there is no obvious connotation.  So what we say is you can comfortably conclude there that the mark has to an extent – we say a significant extent – a capacity to distinguish.

An opponent might say, but hang on, there are people in Italy, Italian speakers, who also form part of the market.  They invite – so when they see Oro, that they will translate that into Italian.  It is an assumption that – so an assumption, which we do not accept, is to say that if you see the same collocation of letters in another country, that being Australia where English is the spoken language, that you assume the Italian words are being used, as opposed to a mark.  One can travel all around this world and one will find in Turkey, in Indonesia, in all places, you will see collocations of words and you will be able to say, “I recognise those three words” or “those three letters, that is the same as English”, but you do not because you are in a foreign country assume it is being used in the way you see it.  That is another question.

But let it be assumed – put that assumption aside.  Let it be assumed there is a percentage of people who will see Oro and immediately translate, notwithstanding they are in Australia, and say that is gold.  Then what the registrar has is – one may comfortably say they have a mark which is to an extent – and we would say a significant extent – adapted to distinguish.  But I have to ‑ ‑ ‑

FRENCH CJ:   That is by reference to the percentage of the target market that would not understand its meaning.

MR BANNON:   That is right and then they say what do I do about this other one per cent, 10 per cent, 15 per cent, 20 per cent?  Well, that is a factor to be taken into account.  But, having regard to those facts, is that enough – is that a sufficient extent of capacity to distinguish, to grant registration?

If one looks at what his Honour Justice Emmett did, not unfamiliar with trading cases, one might expect, if one looks at his reasoning process his Honour at 117, and I will go backwards in this, but at 117 he says:

It may be clear enough to an Italian speaker that Cinque Stelle –

indicates that, but they do not mean anything in English.  He refers to “the allusions made” by those marks, “Modena relies on the census”, et cetera, and his Honour says:

I am not persuaded, on the material before me, that the Italian language is so widely spread that the conclusion should be drawn that Cinque Stelle and Oro would be generally understood in Australia as having those meanings.

I consider that both Cinque Stelle and Oro are sufficiently inherently adapted to distinguish goods ‑ ‑ ‑

CRENNAN J:   Well, what do you say about Mr Jackman’s argument which is the test is not what is generally understood in Australia, but the test is what traders would like to do or like to be free to do in terms of the use of a word?

MR BANNON:   There are two things, if I may, your Honour, just finishing on this point.  His Honour in those two passages has understood and accepted that there are a percentage of Italian speakers and that is picked up in 115 and 116, and 112 and 113 his Honour has dealt with – 113 his Honour, at about line 20, says:

I consider that the question is whether the particular words that are intended to constitute the trade mark are sufficiently well understood in Australia.

It is the use of those words “sufficient” which capture, we say, the notion of “extent” and to come back – and I will address squarely your Honour Justice Crennan’s question, but perhaps to complete my answer to your Honour the Chief Justice’s question, the Act recognises that it is a process which does not have a bright line necessarily and you will have marks which have, to some extent, a capacity to distinguish that may or may not be sufficient to get you over the line and it may be, for example, if you – the vast number of people in Australia understand Italian that would not be enough, but both the registrar here and his Honour, applying, we say, an appropriate test, have considered they are sufficiently inherently adapted to distinguish.

GAGELER J:   The difficulty I have is his Honour in paragraph 28 in the last sentence states a test which is the test upon which Mr Jackman relies and applied by the Full Court, his Honour then in paragraph 107, in the last sentence, appears to state then a different test, which is what he in fact applied in his judgment.

MR BANNON:   We respectfully submit it is exactly the same test.

GAGELER J:   That is the question, is it not?

MR BANNON:   Yes.  That brings me to Justice Crennan’s question, perhaps your Honour’s question as well, if one looks at what Justice Kitto said in Clark, when his Honour said you look at the inherent capacity of the market distinguished by reference to what traders might want to do, namely would they want to use the mark for their ordinary signification, it is those words which tell you it is not the ordinary signification to them, it must be something that they are going to convey to their market because trade marks is all about, by the definition, referable to the mark, a capacity to distinguish in relation to particular goods, that is, all market based.

CRENNAN J:   I am just putting to you that it is not entirely helpful to speak about use of Oro at a certain time without saying what sort of use it was to support a proposition that use of Oro is always descriptive use, or mostly descriptive use.

MR JACKMAN:   The thrust of my argument is that we do not have to take sides on whether the multiple uses are actually descriptive or trade mark use.

CRENNAN J:   Okay.

MR JACKMAN:   It is simply a widespread use by rival traders without improper motive upon or in connection with their goods, so that the likelihood that one asks about under the Faulding test is not just a likelihood, it is a certainty.

FRENCH CJ:   This is proposition 7 of your outline which we have mined almost as deeply as we probably can.

MR JACKMAN:   Yes.  I think I have covered proposition 7.

There is one matter I wanted to go back to.  Your Honour Justice Crennan asked a question of my learned friend, Mr Bannon, as my learned friend, Mr Bannon, was talking about Justice Emmett’s use of the evidence concerning rival traders on the question of my client’s infringement and your Honour Justice Crennan asked whether Justice Emmett had considered that evidence on the earlier question of inherent adaptability, and the answer to that is no and I can show your Honours how the point arises in Justice Emmett’s reasons back at appeal book 716.  This is in the section of the judgment dealing with registrability and inherent adaptability to distinguish.  In paragraph 114, his Honour rightly says that we attach:

considerable significance to the fact that there are many Italian speakers in Australia . . . Modena also relies on use of the words Cinque Stelle and Oro by other suppliers and distributors of coffee products in Australia.  It is desirable therefore to say something about the evidence of that usage.

But, unfortunately, Justice Emmett never comes back to that point.  So one searches in vain for the point at which his Honour did grapple with that evidence which we submit on a proper application of Faulding is completely conclusive, but, as I say, the Faulding test did not actually require us to prove any actual instances as long as one can say at the time of application for registration that there was a likelihood of rival traders wanting to do so, and one gets that from the meaning of the words together with the Italian linguistic and cultural connections and Italian imports in the coffee market in Australia, without going to a single instance of other rival traders actually using those words.  But the evidence does make the conclusion all the more compelling.

HAYNE J:   Did not Justice Emmett return to the subject you say that was left open at paragraphs 124 and thereabouts?

MR JACKMAN:   Not in the context of inherent adaptability to distinguish.  His Honour was dealing at paragraph 124 with the use of trade marks, not with the application of the Faulding test.

HAYNE J:   And following.  But if you say it is not, that is the submission.  I understand the submission.

MR JACKMAN:   Yes.  Paragraph 118 is the conclusion on “inherently adapted to distinguish” and that is where the reasoning on that issue stops.  But it was in that context, we submit, that his Honour had to grapple with the evidence of rival traders’ actual use – both before and after the application for registration.  Unless there is anything else on which I can assist your Honours, those are our submissions.

FRENCH CJ:   Thank you, Mr Jackman.  Yes, Mr Bannon.

MR BANNON:   Very briefly, your Honours.  Firstly, in Faulding, could I direct your Honours’ attention to the conclusion in Faulding which is at 556. So that is 112 CLR 537. The conclusion at Faulding is at about point 7 on that page:

The conclusion seems inevitable that at least by the year of the initial registration . . . the word Barrier had caught on as a word peculiarly apt, according to its ordinary signification, for descriptive use –

So far from saying something different to what Justice Kitto said, its conclusion brought it back to the very issue and it continues:

so that any trader in such creams would be very likely indeed, in the ordinary course of business and without any improper motive –

That is the logical reasoning process and that was it, that inferentially the reasoning process in Du Cross.  Secondly, just going back very briefly to Clark, there is a passage that my friend did refer to but the significance of it should be emphasised.  That is at 111.  I should say in that last reference, the Full Court accepted that Faulding was following Clark at paragraph 65 of the Full Court’s judgment – that is the Full Court in this case.       Secondly, Clark 111 CLR at 515, that passage at about point 3 on the page:

A descriptive word is in like case:  the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer.  This may seem at first blush a paradox . . . but surely not when Lord Parker’s exposition of the subject is borne in mind.

That is why “tub happy” because it addresses the issue of what is distinctive in the sense of what is a direct reference is relevant.  The old section 24(1)(a) through to (e) – (a) to (d) were always regarded as examples of things which were inevitably inherently able to distinguish and (e) any other distinctive mark.  So, his Honour, when he – to the extent his Honour the primary judge posed the test by reference to Mark Foys, his Honour was doing what we say was the right thing, addressing the ordinary signification of the mark and Mark Foys was the convenient tool for that purpose.

Secondly, this whole debate, we respectfully submit, funnels back to and is informed by the definition of “trade mark”.  A neat way into it, we respectfully submit, is the Shell Case 109 CLR 407 to which his Honour refers at 122, that is the primary judge. At 425, point 1 of Shell, his Honour Justice Kitto, with whom the other in support agreed, starts off:

With the aid of the definition of “trade mark” in s. 6 of the Act, the adverbial expression may be expanded so that the question becomes whether, in the setting in which the particular pictures . . . they would have appeared to the television viewer –

That is a particular passage which was picked up by a footnote in Gallo 241 CLR 144, paragraph 42, in the Full Court. All of these aspects of the Trade Marks Act feed back into each other.  The infringement test is whether somebody has used the mark.  It is whether they have used the mark as a trade mark so as to distinguish their goods.  That is judged by the presentation of the mark as it appears to the relevant viewing public.

One then looks at the definition of “trade mark”.  It is a mark to distinguish the goods.  That carries with it the concept of distinguish the goods of a trader by applying the mark in the relevant trade, that is, how it will present to the viewer.  The case is replete with talking about whether a mark is distinctive, talking about a secondary meaning – a mark can acquire a secondary meaning because of use.  That is the meaning in the eyes of the relevant viewing public.  Everything funnels back to that definition of “trade mark”.  If one accepts and understands that, then the test we propose, we submit, follows, and the one applied by the trial judge.

The forensic conundrum, we respectfully submit, presented by the respondent is a respondent who says these are words which the ordinary trader would have no inherent capacity to distinguish, yet both traders stand here before the court having been found by the trial judge – and the finding is not relevantly disturbed – as traders who have used those marks to distinguish.  They have used those marks to distinguish, yet the respondent comes in and says you should assume that these are marks which have no inherent capacity to distinguish.  It is a forensic conundrum which was not solved by the Full Court approach.

Our learned friend put a submission, an oral submission, which rather suggested there is some sort of onus on us to prove something beyond reasonable doubt, or some sort of doubt.  The test is the mark was being granted, the onus carried by our learned friend is to say that the mark should not have been granted; that is the onus which appears in the Court.  We have the registrar’s finding, we have the trial judge’s finding.

Then lastly, in relation to the debate about what evidence there was about certain matters referred to in the Full Court decision in paragraph 93, the evidence, so far as it goes ‑ and this was a finding said to flow from findings of the trial judge ‑ the evidence of the findings of the trial judge are no more than what appears in 39 to 43, which is 699 to 700, the effect of which culminates in paragraph 43‑

Various imported coffee products originate in Italy.

It does not go much beyond that.  There was no attempt to prove, for example, the extent of coffee products as at the relevant dates, by volume, where they all came from.  There was no attempt to do any of that.  Indeed, the finding was that most Australians drink instant coffee.  The suggestion is that there are people who drink instant coffee, but do not drink other coffee, that there is some dichotomy there ‑ if I am allowed to say so, I can prove that wrong, but be that as it may.

There is a debate as to what is actually being said there at 93, but there is no specific finding of fact which supports the proposition that pure coffee is often associated with Italy.  There is evidence to say that some coffee comes from Italy, but nothing as to volumes and nothing as to timing and when it was. 

Just lastly in relation to all those various uses of different names ‑ and I should have added, our schedule attempts to respond to various ‑ the schedule in our reply responds to the schedule to the respondents.  We do it by item number.  For example, in one of those, Trombetta, I think, our evidence shows that they were no longer using it after a certain period of time, and their first use was a certain period of time, and there was some evidence about letters of demand being sent to various people in relation to the Trade Mark Case, but of course, these proceedings were on foot at that time, and just to the extent to which further proceedings would flow in the light of these proceedings may be another issue.

But again, to the extent one looks at any of those other matters, and bearing in mind there is no evidence as to when it started and it is well after our usages, none of those uses really look like ‑ except the odd Qualità Oro ‑ these prominent Oro uses look anything other than like traders who think these are marks which have an inherent capacity to distinguish.  Please the Court.

FRENCH CJ:   Thank you, Mr Bannon.  The Court will reserve its decision.  The Court adjourns until 9.45 tomorrow morning for pronouncement of orders.

AT 3.21 PM THE MATTER WAS ADJOURNED