Intellectual Property Law Update - Should foreign words be registrable as trade mark?

Intellectual Property
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The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one that other traders are likely, in the ordinary course of their businesses, and without any improper motive, to desire to use upon or in connection with their goods.

The following short exchange took place between Gageler J and senior counsel for Cantarella (the appellant) in the course of oral submissions in Cantarella v Modena Trading on Tuesday:

Gageler J: The difficulty I have is his Honour in paragraph 28 in the last sentence states a test which is the test upon which Mr Jackman relies and applied by the Full Court, his Honour then in paragraph 107, in the last sentence, appears to state then a different test, which is what he in fact applied in his judgment.

Mr Bannon: We respectfully submit it is exactly the same test.

His Honour is here referring to the judgment at first instance. Here’s what Emmett J said in the cited sentences:

[28] … The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one that other traders are likely, in the ordinary course of their businesses, and without any improper motive, to desire to use upon or in connection with their goods (FH Faulding & Co Limited v Imperial Chemical Industries of Australia & New Zealand Limited [1965] HCA 72;(1965) 112 CLR 537 at 555).

[107] … The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing, indicating or calling to mind either their nature or some attribute they possess (Mark Foy’s at 195).

These do not seem to me to be exactly the same test. The latter would permit the registration of words or phrases which are not yet ordinarily understood by most consumers – even if traders understood their meaning or significance and would be likely to use those words (or have actually used them) in relation to their own goods or services.

So, under the latter test, words such as sushi or kim chi or burrito or tapas would all have been registrable in Australia, in relation to the goods they describe, until the general public was sufficiently educated as to their meaning.

This doesn’t seem right. In my view, these words were incapable of distinguishing the goods they describe even before they passed into common usage in English. This is because they were words which are (and always were) likely to be used, in good faith, by other traders in the goods of the relevant kind (to paraphrase Kitto J’s test from Clark Equipment).

Bill Bryson calls the adoption of words from other languages “one of the glories of English”. At least half of the common words of our language are from non-Anglo-Saxon stock. Many are adopted from Italy. Of those, many relate to food or drink; consider spaghetti, lasagne, pizza, cappucino, espresso, affogato. Wikipedia lists hundreds of them. The word “spaghetti”, for example, seems to have first appeared in American cookbooks in the late 19th century. Other foreign words that, according to the Oxford English Dictionary, have entered our language in the last three decades are tarka dal (a creamy Indian lentil dish, 1984), popiah (a type of Singaporean or Malaysian spring roll, 1986) and izakaya (a type of Japanese bar which also serves food, 1987).

Of course, none of these words are inherently adapted to distinguish those foods or drinks.

Sushi‘s first recorded use in English was in the 1890s. Early users of that word, however, felt the need to explain what it is. Now, of course, it is virtually ubiquitous.

There are currently three Australian registered trade marks which include the words kim chi. The words alone, however, are not registered. Nor could they be. They are plainly descriptive of, and therefore not inherently adapted to distinguish, a particular Korean dish of fermented vegetables. By the way, for some great kim chi recipes, see here – but it’s really so 2013.

So, are ORO and CINQUE STELLE like KIM CHI and SUSHI? Well, not exactly: they are not the foreign nouns for the particular good. Rather, they are foreign laudatory terms that might be used in the description of the relevant goods.

Nevertheless, they are not invented words and they are words which other coffee traders might, in good faith, desire to use in relation to coffee. In my view, that is sufficient to support their removal from the register. This may not be the case, for example, for Russian or Japanese or Gaelic words of the same meaning. Each case will depend on its own facts. The close association between Italy and coffee in this country, the fact that Italian is the second most commonly spoken language and the use of the words in fact made by other traders are all relevant in this case.

To permit their monopolisation by one trader is to unduly restrict the words available to other traders for the description of their goods and services. Words which, for their ordinary signification (that is, not their brand signification), other traders might desire (in good faith) to use in relation to the relevant goods, should not be registrable.

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Ben Gardiner practises primarily in intellectual property litigation

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