Cantarella Bros Pty Limited v Modena Trading Pty Limited

Cantarella Bros Pty Limited (Cantarella) appealed to the High Court of Australia against a decision of the Full Court of the Federal Court of Australia concerning the registrability of its trade marks "ORO" and "CINQUE STELLE" for coffee products. Modena Trading Pty Limited (Modena) had sought the cancellation of these registrations.

The central legal issue before the High Court was whether the trade marks "ORO" and "CINQUE STELLE", which are Italian words meaning "gold" and "five stars" respectively, were inherently adapted to distinguish Cantarella's coffee products from those of other traders. This involved considering the ordinary signification of these words in the context of the coffee industry and whether rival traders might have a legitimate need to use them to describe their own goods.

The High Court reasoned that the Full Court had correctly applied section 41 of the *Trade Marks Act 1995* (Cth). The Court found that the evidence did not demonstrate that honest traders would legitimately wish to use the words "oro" or "cinque stelle" to directly describe the character or quality of their coffee products. Therefore, the trade marks were considered inherently adapted to distinguish Cantarella's goods. The appeal was allowed, and the orders of the Full Court were set aside, with the result that Modena's appeal to that Court was dismissed.