In Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd ([2025] FCAFC 12), the Full Federal Court of Australia has issued a decision concerning use of the trademark ORO. The primary issue involved assessing when a word is being used as a trademark on product packaging.
Background
The key finding in the initial decision was that Caffe Molinari SpA (‘Molinari’) was the first to use the trademark ORO in Australia in respect of coffee. As such, it was the owner of the trademark for those goods. This meant that ORO registrations for coffee, which were owned by Cantarella Bros Pty Ltd (‘Cantarella’), should be cancelled.
The appeal addressed five grounds, namely whether the trial judge:
1. erred in finding first trade by Molinari in 1995 or early 1996;
2. erred in finding that ORO had been used as a trademark;
3. should have found subsequent abandonment of the ORO mark by Molinari;
4. should have found Cantarella entitled concurrent registration; and
5. should have exercised the discretion not to cancel Cantarella’s registrations
Decision
First issue
The first issue was largely an evidentiary issue and the Full Court pointed out that the primary judge’s decision on issues of fact should not be disturbed unless “glaringly improbable” or “contrary to compelling inferences”. That was not the case here.
Second issue
This involved the key issue of whether ORO was being used as a trademark, and whether it was being used alone as a trademark. The main uses assessed by the Full Court are depicted below:
Cantarella argued that the only trademark used on the product packaging was CAFFÈ MOLINARI. In the alternative, it argued that, if the word ‘ORO’ was used as a trademark, it was only used as part of the mark MISCELA DI CAFFÈ ORO.
In response to the first argument, the Full Court stated as follows:
“Given the prominence of the word ‘ORO’, whether it is considered as a mark in its own right, or as part of a composite mark, the word is used on the packaging of the 3kg product as a trademark or as part of a trademark…
The more difficult question is whether the word ORO was used as a trademark in its own right.”
On the question of whether ORO was used independently, the Full Court found that it was. It noted the primary judge’s finding of inherent distinctiveness and had regard to “the prominence given to the word ‘ORO’ both in the context of the packaging as a whole, and relative to the words ‘MISCELA DI CAFFÈ’ in the much smaller font”. It also noted that “[i]n each case the word ‘ORO’ appears much more prominently than the words ‘MISCELA DI CAFFÈ’”.
Third issue
Over time, Molinari had changed the way in which it used ORO, and it was subsequently used in combination with the word ‘QUALITA’. Cantarella argued that this was not use of ORO alone and that it amounted to abandonment of that trademark. If Molinari had abandoned the ORO mark by the time Cantarella applied for registration of ORO, Cantarella would be entitled to claim ownership.
The packaging used was as follows:
The Full Court noted as follows:
“The fact that the mark in question may appear as a component of a larger mark does not preclude a finding that it has been used as a trademark. Whether or not there has been such use will depend on the circumstances and the overall impression conveyed.”
It then assessed the positioning, sizing and arrangement of the words on the packaging and, while noting that it was a matter of impression about which minds may differ, it agreed with the primary judge that there was use of ORO alone as a trademark.
Fourth issue
Cantarella claimed it had made extensive use of ORO and that it was entitled to concurrent ownership. In Australia, while concurrent use is a basis upon which an objection to registration can be overcome, if another party is able to prove earlier use entitling it to ownership, this generally defeats the entitlement claim based on concurrent use.
Cantarella sought leave to argue this issue before the court, but this was ultimately refused. In large part, this was because Cantarella had not presented evidence on – and so had not established – a critical element of the concurrent use claim, namely the honesty of its adoption and use.
On the general issue, the court noted that the statutory scheme does not, on the face of it, allow registration of a concurrent user where an earlier entitlement to ownership is established. However, it did state that a “preferable solution” might be to read the relevant sections of the Trademarks Act 1995 together in order to recognise a concurrent entitlement. However, it was “not necessary to resolve this issue in the present case”.
Fifth issue
There was no error in the trial judge’s decision not to exercise the discretion to retain Cantarella’s registrations.
Comment
The decision reflects the fact that careful judgement is required to determine when something is being used as a trademark. Deciding what is being used as a trademark is quite often a matter of impression.
The decision is useful in indicating how the courts should make that assessment.
It has also left open the issue of whether, despite a conflicting claim of ownership, another party can secure an entitlement to registration on the basis of honest and concurrent use.
This article first appeared in WTR in (March 2025), For more information, please go to www.worldtrademarkreview.com