Vittoria coffee seller wins trademark battle over 'oro' and 'cinque stelle'

By Michaela Whitbourn

Investigations reporter

The Sydney Morning Herald

December 03, 2014

Can a coffee seller trademark the Italian words for "gold" and "five stars"?

That was the question at the centre of a long-brewing legal battle between the vendor of Vittoria coffee and the importer of rival brand Molinari.

On Wednesday, the High Court ruled that Cantarella, vendor of Al Pacino-spruiked Vittoria coffee, could trademark the words "oro" (gold) and "cinque stelle" (five stars) for its premium coffee.

Cantarella had successfully trademarked the words in 2000 and 2001.

But it lost the rights last year when a three-judge bench of the Federal Court overturned its previously successful lawsuit against Modena, the Australian distributor of Molinari coffee, for infringing its trademarks by using the words on its products.

The full Federal Court said the words were merely "descriptive" and could not be monopolised by Cantarella for its Vittoria coffee products. It added that, "most importantly, other coffee traders have used the words" to describe their products.

Cantarella appealed against that decision and a majority of the High Court has now ruled in its favour, giving Vittoria a commercial stranglehold on the words in the Australian coffee market.

Chief Justice Robert French and Justices Kenneth Hayne, Susan Crennan and Susan Kiefel, in the majority, said the Italian words did not convey a meaning or idea "sufficiently tangible to anyone in Australia concerned with coffee goods" that they should be regarded as merely descriptive words that could not be trademarked.

They said the words were "allusive" and metaphorical rather than "directly descriptive", and were capable of distinguishing Vittoria coffee from other brands.

Cantarella's barrister, Tony Bannon, SC, told the High Court earlier this year that the case gave the court the opportunity to consider "for the first time" the question of whether whether foreign words could distinguish a particular product from another.

The barrister for Modena, Ian Jackman, SC, argued that if Cantarella was allowed to trademark the words for "gold" and "five stars" it would be akin to allowing a Chinese grocery wholesaler to trademark the Cantonese word for "cabbage".

"Taken to my learned friend's extreme, you can monopolise that, but within the trade, the term is obviously frequently used as descriptive and you cannot have a monopoly," Mr Jackman said. "The Trade Marks Act has to work for ethnic communities just as it does for the Anglo-Celtic population at large."

His argument did not find favour with the majority of the High Court. But in a dissenting judgment, Justice Stephen Gageler said Cantarella should not be permitted to trademark the words.

"'Gold' and 'five star' are ordinary English words. Used in respect of goods or services, they signify quality. They always have," Justice Gageler said.

He said that the words, used alone, were "words which any person in the ordinary course of business might legitimately seek to use".

The Italian equivalents of those words were in the same position, Justice Gageler said.

But the majority said Cantarella could trademark the words, and it should win the case with costs.

Marion Heathcote, a partner at law firm Davies Collison Cave, noted that the majority of the court approached the case on the basis that Australia is an English-speaking country. 

She said the case reaffirmed a "long history" of cases but it was "always interesting" when the High Court considered trademark law because it rarely did so.