Category Archives: Trademarks

Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48

The High Court of Australia today delivered Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 (3 December 2014). http://www.austlii.edu.au/au/cases/cth/HCA/2014/48.html

Cantarella Bros Pty Limited and Modena Trading Pty Limited both advertise, offer for sale and sell coffee products in Australia. Since 1958, Cantarella has imported, processed and packaged coffee beans for sale under the trade marks VITTORIA, AURORA, DELTA and CHICCO D’ORO. It is also the registered proprietor of trade marks including MEDAGLIA D’ORO, ORO (ie “Gold”) and CINQUE STELLE (ie “Five Stars”). These trade marks are used in Australia and other countries.

Modena imports coffee from Molinari, an Italian company. Molinari has used various trademarks in Australia including ORO, QUALITY ORO and CINQUE STELLE.

Canteralla brought proceedings in the Federal Court against Modena for trade mark infringement. Modena cross claimed that Canteralla’s trade marks should be cancelled on the grounds that they were not inherently adapted to distinguish the goods for which they were registered under s41 of the Trade Marks Act (1995) (Cth). Canteralla succeeded in the Federal Court.

The Full Court of the Federal Court allowed an appeal by Modena, holding that Cantellara’s trade marks should be cancelled.

The High Court of Australia allowed an appeal brought by Canteralla, holding that their trade marks had been inherently adapted to distinguish the goods for which they were registered from the goods of other persons. The High Court ordered that the Full Court’s orders be set aside.

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Seven Up Company v OT Ltd [1947] HCA 59 | 19 August 1947

Seven Up Company v OT Ltd [1947] HCA 59; (1947) 75 CLR 203 (19 August 1947).

http://www.austlii.edu.au/au/cases/cth/HCA/1947/59.html

The Seven Up Company, the US owner of the US soft drink trademark “7 UP” brought a motion to remove the Australian owned name “8 Up” from the Australian register of trademarks. Williams J dismissed the motion and an appeal to the Full Court was dismissed.

Per Williams J:

“… in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act because it is not his property but the property of the foreign trader. The registrar is entitled to refuse to register the mark for such goods. If it has been registered the court may rectify the register on the ground that the mark is wrongly entered on the register.”

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Aston v Harlee Manufacturing Co (“Tastee Freez case”) [1960] HCA 47 | 4 August 1960

ON 4 AUGUST 1960, the High Court of Australia delivered Aston v Harlee Manufacturing Co (“Tastee Freez case”) [1960] HCA 47; (1960) 103 CLR 391 (4 August 1960).

http://www.austlii.edu.au/au/cases/cth/HCA/1960/47.html

A person who first applies for an unused trademark in Australia is entitled to be regarded as the Australian author, even if he or she has copied a foreign mark, provided that he or she intends to use the trademark and there is no fraud involved.

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Masters Home Improvement Australia Pty Ltd v Bunnings Limited [2014] NZIPOTM 32

Masters Home Improvement Australia Pty Ltd v Bunnings Limited [2014] NZIPOTM 32 (11 July 2014)

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Google, Inc v Dmitri Rytsk [2008] ATMO 40

Google, Inc v Dmitri Rytsk [2008] ATMO 40 (28 May 2008)

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Aston v Harlee Manufacturing Co (“Tastee Freez case”) [1960] HCA 47

ON 4 AUGUST 1960, the High Court of Australia delivered Aston v Harlee Manufacturing Co (“Tastee Freez case”) [1960] HCA 47; (1960) 103 CLR 391 (4 August 1960).

http://www.austlii.edu.au/au/cases/cth/HCA/1960/47.html

A person who first applies for an unused trademark in Australia identical to that of a foreign mark is entitled to be regarded as the Australian author, provided that he or she intends to use the trademark and there is no fraud involved.

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Seven Up Company v OT Ltd [1947] HCA 59

Seven Up Company v OT Ltd [1947] HCA 59; (1947) 75 CLR 203 (19 August 1947).

http://www.austlii.edu.au/au/cases/cth/HCA/1947/59.html

The Seven Up Company, the US owner of the US soft drink trademark “7 UP” brought a motion to remove the Australian owned name “8 Up” from the Australian register of trademarks. Williams J dismissed the motion and an appeal to the Full Court was dismissed.

Per Williams J:

“… in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act because it is not his property but the property of the foreign trader. The registrar is entitled to refuse to register the mark for such goods. If it has been registered the court may rectify the register on the ground that the mark is wrongly entered on the register.”

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Blackadder v Good Roads Machinery Company Incorporated [1926] HCA 57

Blackadder v Good Roads Machinery Company Incorporated [1926] HCA 57; (1926) 38 CLR 332 (20 August 1926).

http://www.austlii.edu.au/au/cases/cth/HCA/1926/57.html

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