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Cantarella Bros Pty Ltd v Modena Trading Pty Ltd

Cantarella Bros Pty Ltd v Modena Trading Pty Ltd

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FEDERAL COURT OF AUSTRALIA
Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8

Citation: Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8

Parties: CANTARELLA BROS PTY LIMITED ACN 000 095 607 v MODENA TRADING PTY LIMITED ACN 140 018 015

File number: NSD 113 of 2011

Judge: EMMETT J

Date of judgment: 13 February 2013

Catchwords:
TRADE MARKS – validity – whether signs Cinque Stelle and Oro used in relation to coffee products as trade marks indicating a badge of origin or as mere descriptors – whether signs capable of distinguishing the goods under s 41 of the Trade Marks Act 1995 (Cth)

TRADE MARKS – defence to infringement under s 122(1)(b)(i) of the Trade Marks Act 1995 (Cth) – whether signs not used as trade marks – whether signs used in good faith to indicate kind, quality or characteristics of the goods

Legislation: Australian Competition and Consumer Act 1974 (Cth) ss 52, 53(c)
Australian Consumer Law ss 18, 29
Trade Marks Act 1995 (Cth) ss 27, 31, 33, 41, 41(6)(b), 57, 58, 74, 88(1)(a), 92(3), 92(4)(b)(i), 100, 120, 122(1)(b)(i)
Trade Practices Act 1974 (Cth) ss 52, 53(c)

Cases cited: Aldi Stores Limited Partnership v Frito-Lay Trading GmbH (2001) 190 ALR 185
Cantarella Bros Pty Limited v Sunbeam Corporation Limited [2007] ATMO 3
Caterpillar Loader Hire (Holdings) Pty Limited v Caterpillar Tractor Co (1983) 43 ALR 511
E & J Gallo Winery v Lion Nathan Australia Pty Limited (2010) 241 CLR 144
FH Faulding & Co Limited v Imperial Chemical Industries of Australia & New Zealand Limited (1965) 112 CLR 537
Howard Auto-Cultivators Limited v Webb Industries Pty Limited (1946) 72 CLR 175
Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326
Mark Foys Limited v Davies Coop and Company Limited (1956) 95 CLR 190
New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited (1989) 86 ALR 549
Re Ocean Spray Cranberries Inc (1999) 46 IPR 601
Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407
Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited (2003) 134 FCR 51

Date of hearing: 17 – 20 September 2012

Place: Sydney

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 202

Counsel for the applicant: AJ Bannon SC with M Green

Solicitor for the applicant: Clayton Utz

Counsel for the respondent: IM Jackman SC with CL Cochrane

Solicitor for the respondent: Corrs Chambers Westgarth

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 113 of 2011

BETWEEN:
CANTARELLA BROS PTY LIMITED ACN 000 095 607
Applicant

AND:
MODENA TRADING PTY LIMITED ACN 140 018 015
Respondent

JUDGE:

EMMETT J

DATE OF ORDER:

13 february 2013

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The applicant file and serve proposed short minutes of order reflecting these reasons no later than 19 February 2013.
2.The parties file any further written submissions they wish to make as to costs no…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2013] FCA 8
Decision Date

CaseChat Overview and Summary

Cantarella Bros Pty Ltd initiated legal proceedings against Modena Trading Pty Ltd, alleging infringement of their trade marks and seeking relief including damages and an account of profits. The case was heard and determined by the Federal Court of Australia. The central issue in the case was whether Modena Trading Pty Ltd had infringed the trade marks owned by Cantarella Bros Pty Ltd and, if so, what remedies were appropriate.

The court examined the evidence presented regarding the alleged infringement of the trade marks and the extent of any loss or damage suffered by Cantarella Bros Pty Ltd as a result. The court found that, while there was evidence of some confusion in the market, Cantarella Bros Pty Ltd had not demonstrated that it had suffered any actual loss or damage as a result of the alleged infringement. Additionally, no claim for an account of profits was pursued by Cantarella Bros Pty Ltd.

The court concluded that the appropriate relief was to grant orders restraining future infringement of the trade marks by Modena Trading Pty Ltd. The court dismissed the claim for damages and the claim relating to the Trade Practices Act and the Australian Consumer Law. However, Cantarella Bros Pty Ltd was substantially successful in securing orders against future infringement of their trade marks. The court decided to award Cantarella Bros Pty Ltd an order for costs, but invited further submissions from the parties regarding the appropriate amount and form of the costs order. The court directed Cantarella Bros Pty Ltd to prepare minutes of orders to give effect to the conclusions reached, including declarations of infringement and injunctions against future infringement by Modena Trading Pty Ltd.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

On the state of the evidence, I am not persuaded that Cantarella has suffered any loss or damage by reason of infringement of the Trade Marks. No claim for an account has been pressed by Cantarella. I consider that the only relief that is appropriate is the grant of orders restraining the infringement of the Trade Marks in the future.CONCLUSION It follows from the findings and conclusions set out above that Cantarella is entitled to orders restraining future infringement of the Trade Marks by Modena. The proceeding should be otherwise dismissed. It also follows from the above findings and conclusions that the Cross-Claim should be dismissed. While Cantarella has not been successful in its claim for damages or in relation to its claim of contravention of the Trade Practices Act or the Australian Consumer Law, it has been substantially successful in the proceeding. It follows, in my view that it should have an order for costs in its favour. However, I will afford the parties the opportunity of making further submissions as to the appropriate orders for costs. Cantarella should bring in short minutes of orders to give effect to my conclusions. The orders would include declarations concerning infringement and injunctions restraining future infringement. APPENDIX 1 APPENDIX 2 APPENDIX 3 APPENDIX 4

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Citation:	Cantarella Bros Pty Limited v Modena Trading Pty Limited [2013] FCA 8
Parties:	CANTARELLA BROS PTY LIMITED ACN 000 095 607 v MODENA TRADING PTY LIMITED ACN 140 018 015
File number:	NSD 113 of 2011
Judge:	EMMETT J
Date of judgment:	13 February 2013
Catchwords:	TRADE MARKS – validity – whether signs Cinque Stelle and Oro used in relation to coffee products as trade marks indicating a badge of origin or as mere descriptors – whether signs capable of distinguishing the goods under s 41 of the Trade Marks Act 1995 (Cth) TRADE MARKS – defence to infringement under s 122(1)(b)(i) of the Trade Marks Act 1995 (Cth) – whether signs not used as trade marks – whether signs used in good faith to indicate kind, quality or characteristics of the goods
Legislation:	Australian Competition and Consumer Act 1974 (Cth) ss 52, 53(c) Australian Consumer Law ss 18, 29 Trade Marks Act 1995 (Cth) ss 27, 31, 33, 41, 41(6)(b), 57, 58, 74, 88(1)(a), 92(3), 92(4)(b)(i), 100, 120, 122(1)(b)(i) Trade Practices Act 1974 (Cth) ss 52, 53(c)
Cases cited:	Aldi Stores Limited Partnership v Frito-Lay Trading GmbH (2001) 190 ALR 185 Cantarella Bros Pty Limited v Sunbeam Corporation Limited [2007] ATMO 3 Caterpillar Loader Hire (Holdings) Pty Limited v Caterpillar Tractor Co (1983) 43 ALR 511 E & J Gallo Winery v Lion Nathan Australia Pty Limited (2010) 241 CLR 144 FH Faulding & Co Limited v Imperial Chemical Industries of Australia & New Zealand Limited (1965) 112 CLR 537 Howard Auto-Cultivators Limited v Webb Industries Pty Limited (1946) 72 CLR 175 Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 Mark Foys Limited v Davies Coop and Company Limited (1956) 95 CLR 190 New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited (1989) 86 ALR 549 Re Ocean Spray Cranberries Inc (1999) 46 IPR 601 Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited (2003) 134 FCR 51
Date of hearing:	17 – 20 September 2012
Place:	Sydney
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	202
Counsel for the applicant:	AJ Bannon SC with M Green
Solicitor for the applicant:	Clayton Utz
Counsel for the respondent:	IM Jackman SC with CL Cochrane
Solicitor for the respondent:	Corrs Chambers Westgarth

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 113 of 2011

BETWEEN:	CANTARELLA BROS PTY LIMITED ACN 000 095 607 Applicant
AND:	MODENA TRADING PTY LIMITED ACN 140 018 015 Respondent

JUDGE:	EMMETT J
DATE OF ORDER:	13 february 2013
WHERE MADE:	SYDNEY