Whilst there were many aspects to this litigation, in the recent Federal Court of Australia decision of Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd[1], it was held that Lavazza Australia Pty Ltd (Lavazza) was successful in establishing that Cantarella Bros Pty Ltd (Cantarella) was not the owner in Australia of “ORO” registered trade marks[2] for class 30 coffee goods as the trade mark “ORO” had first been used on such goods in Australia by a third party (Molinari[3]). Therefore, the Court cancelled the registered “ORO” trade marks[4].
Interestingly, Cantarella had previously been successful in upholding the validity with respect to inherent distinctiveness of one of its “ORO” registered trade marks against a distributor of Molinari, with the matter ultimately appealed to the High Court of Australia[5]. The ownership of the “ORO” trade mark had not been previously challenged.[6]
Under Australian Trade Mark law, the registration of a trade mark may be cancelled by the Federal Court of Australia pursuant to subsection 88(1)(a) & 88(2)(a) of the Trade Marks Act 1995 (Cth) (the “Act”) on any ground upon which the registration could have been opposed.
One ground of opposition is provided under section 58 of the Act which provides that the trade mark applicant is not the owner of the trade mark.
In this Federal Court of Australia decision, the Court chose not to exercise its statutory discretion[7] not to cancel the registration of the “ORO” registered trade marks, for various reasons including that it would not be in the public interest [8].
As a result, Cantarella’s “ORO” registered trade marks were held not to be validly registered, and even though Cantarella’s infringement action was prima facie successful, it could not be upheld given the cancellation of the “ORO” registered trade marks.
This decision highlights the need for registered trade mark owners to undertake a due diligence on the ownership of a registered trade mark and consider all validity risks before commencing any infringement proceedings in the Federal Court of Australia.
[1] Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 dated 20th October 2023 (Yates.J)
[2] Trade Mark No. 829098 registered since 24th March 2000 & Trade Mark No, 1583290 registered from 30th September 2013
[3] Caffè Molinari SpA
[4] Trade Mark No. 829098 registered since 24th March 2000 & Trade Mark No, 1583290 registered from 30th September 2013
[5] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337
[6] Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 dated 20th October 2023 (Yates.J) at [595]
[7] Subsection 88(1) Trade Marks Act 1995 (Cth)
[8] Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 dated 20th October 2023 (Yates.J) at [597]