Modena Trading Pty Ltd v Cantarella Bros Pty Ltd

Modena Trading Pty Ltd sought to have the registrations of certain trade marks held by Cantarella Bros Pty Ltd cancelled. The case before the Court of Appeal was an appeal from the judgment of Emmett J in the Federal Court of Australia. The dispute was between two Australian companies that import and sell coffee products. Modena argued that Cantarella should not be permitted to use the trade marks Oro and Cinque Stelle in relation to coffee products as these words were not distinctive and were descriptive of the quality of the coffee. Cantarella argued that the trade marks were distinctive and had been used in relation to coffee products in Australia for a number of years. The Court of Appeal was required to consider the grounds of appeal in relation to the determination of the distinctiveness of the trade marks Oro and Cinque Stelle. The Court was also required to consider whether the primary judge erred in his determination of the distinctiveness of the trade marks by reference to the probability of persons understanding the words and calling to mind their attachment to the goods. The Court of Appeal found that the primary judge erred in his determination of the distinctiveness of the trade marks by reference to the probability of persons understanding the words and calling to mind their attachment to the goods. The Court held that the distinctiveness of a trade mark should not be determined solely by reference to the probability of persons understanding the words and calling to mind their attachment to the goods. The Court held that the distinctiveness of a trade mark should be determined by reference to the likelihood that other traders would want to use the trade marks in connection with their goods. The Court held that the primary judge erred in his determination of the distinctiveness of the trade marks by failing to consider the likelihood that other traders would want to use the trade marks in connection with their goods. The Court of Appeal set aside the orders made by the primary judge and dismissed the application for the cancellation of the trade marks. The Court also ordered that the registrations of the trade marks be cancelled and that the respondent repay any monies paid to it by the appellant with interest. The Court further ordered that the respondent pay the appellant’s costs of and incidental to the proceedings in this Court and in the Federal Court of Australia both at first instance and on appeal.