Federal Court of Australia

Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258

ORDERS

THE COURT ORDERS THAT:

1.    By 30 November 2023, the parties bring in orders giving effect to these reasons.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

YATES J:

Introduction

1    The applicant, Cantarella Bros Pty Ltd (Cantarella), sues the respondents, Lavazza Australia Pty Ltd (Lavazza Australia) and Lavazza Australia OCS Pty Ltd (Lavazza OCS), for infringement of two registered trade marks—Trade Mark No. 829098 (the 098 mark) and Trade Mark No. 1583290 (the 290 mark)—each of which is the word mark ORO registered in class 30 for “Coffee; beverages made with a base of coffee, espresso; ready-to-drink coffee; coffee based beverages” (the ORO word mark). For ease of reference, I will refer to these goods as coffee or the registered goods. I will also refer to, and treat, the respondents as a single entity—Lavazza—unless it is necessary to distinguish between them.

2    Cantarella’s case is based on s 120(1) of the Trade Marks Act 1995 (Cth) (the Act). The goods, and the manner in which Lavazza has used the word “oro” on them, are shown in Schedule 1 to these reasons. Cantarella alleges that Lavazza Australia has supplied all the goods. It alleges that Lavazza OCS has supplied the goods shown as items 11 and 12 (coffee capsules). Cantarella also alleges that Lavazza has advertised the goods on websites.

3    Lavazza does not dispute that the goods shown in Schedule 1 have been supplied and advertised. Lavazza does dispute, however, that the 098 mark and the 290 mark have been infringed. Lavazza contends that, in undertaking these activities, the word “oro” has not been used as a trade mark. Lavazza also contends that, even if, in undertaking these activities, the word “oro” has been used as a trade mark, various defences to infringement exist, and have been established, in the particular circumstances of this case.

4    More fundamentally, Lavazza disputes that the two marks are validly registered. By a notice of cross-claim, now supported by a further amended statement of cross-claim, Lavazza seeks orders that the registrations of the two marks be cancelled for two independent reasons: first, each mark is not inherently adapted to distinguish Cantarella’s goods from the goods of other persons and, therefore, does not meet the requirements of s 41 of the Act as in force at the relevant time; and secondly, Cantarella is not, in any event, the owner in Australia of the ORO word mark in respect of coffee.

5    For the reasons that follow, I am satisfied that Lavazza’s supply of LAVAZZA QUALITÀ ORO coffee has involved use of the ORO word mark. However, Cantarella’s case on infringement cannot succeed because the registrations of the 098 mark and the 290 mark on which it relies are not valid. Given that conclusion, it has not been necessary for me to determine the defences that have been raised. I have, nonetheless, made a number of observations about the applicability of those defences.

The conduct of the case

6    At the outset, it is necessary for me to say something about the conduct of this case. Some of the history of the proceeding has been recorded in another published judgment of the Court: Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 2) [2021] FCA 894 (Cantarella (No 2)). It is appropriate, however, that some of the matters referred to in that judgment be repeated in the following overview.

7    The proceeding was commenced on 23 August 2019 by the filing of an originating application and statement of claim. Lavazza filed its cross-claim on 11 October 2019 and its defence to the statement of claim on 14 October 2023.

8    On 11 December 2019, orders were made by consent setting down the proceeding for final hearing commencing on 7 December 2020, with an estimated duration of four days (to 10 December 2020). On 2 November 2020, an order was made that the hearing be extended by an additional day to 11 December 2020.

9    Early in the case management of the proceeding, a regime was put in place for the notification, and possible resolution, prior to the commencement of the hearing, of objections to evidence. An order was made on 2 November 2020 that the proceeding be listed on 1 December 2020 to determine any outstanding objections. That hearing took place, as appointed. A number of rulings were made. The determination of some objections was deferred on the basis that those objections might be overcome by further consultation between the parties’ legal advisers, or by the service of supplementary affidavits.

10    The hearing commenced on 7 December 2020. On 11 December 2020, the last day appointed for the hearing, a number of objections to affidavits (which Cantarella had progressively filed throughout the course of the hearing to overcome other objections to evidence that had been made) were still being argued. I was persuaded that rulings on those objections would best be made in the context of a voir dire. The hearing was therefore adjourned part heard.

11    On 15 January 2021, the proceeding was listed for further hearing on 8, 15 and 16 June 2021, with the final two days set aside for the parties’ closing submissions. A period of much earlier dates in March – April 2021 was offered to the parties, but the Court was informed that there were difficulties with the availability of counsel in that period.

12    On 19 May 2021, in the intervening period, Lavazza served copies of the affidavits of two employees of Caffè Molinari SpA (Molinari). The service of these affidavits (the Molinari affidavits) had not been foreshadowed. At the same time, Lavazza indicated that it also wished to make amendments to its defence and cross-claim. On 21 May 2021, Cantarella, through its solicitors, informed Lavazza’s solicitors that it opposed those amendments and also Lavazza’s reliance on the new affidavits.

13    On 1 June 2021, the proceeding was relisted at Lavazza’s request. On that day, I granted leave to Lavazza to file an interlocutory application (dated 21 May 2021) seeking leave to adduce and rely on the Molinari affidavits, and an affidavit by Mr Lee, a partner in the firm acting for Lavazza in this proceeding. The interlocutory application also sought leave to make the pleading amendments that Lavazza wished to make. I made other procedural directions at that time and set down the interlocutory application for hearing on 8 June 2021, the date to which the hearing had already been adjourned for the hearing of the voir dire and the possible cross-examination of the deponent whose affidavits were still under challenge.

14    At the resumed hearing on 8 June 2021, the outstanding objections to the affidavits on which Cantarella wished to rely were resolved by agreed rulings. The need for the voir dire, and subsequent cross-examination of the deponent involved, was thereby obviated.

15    Lavazza’s interlocutory application was heard on 8 June 2021. It was strenuously opposed. Nevertheless, at the conclusion of the hearing, I granted leave to Lavazza, on terms, to rely on the Molinari affidavits. I also granted leave to Lavazza to amend the pleading of its defence and cross-claim. This led to the vacation of the hearing dates appointed for 15 and 16 June 2021 because I acceded to the proposition that Cantarella should have the opportunity to respond to those affidavits.

16    Cantarella filed a further amended defence to Lavazza’s further amended cross-claim dated 10 June 2021. The further amended defence raised a substantial number of additional grounds on which Cantarella resisted Lavazza’s claim for cancellation of the registrations of the 098 mark and the 290 mark.

17    On 21 July 2021, Cantarella sought to revisit the grant of leave I made on 8 June 2021 to allow Lavazza to adduce and rely on the Molinari affidavits, by having further conditions imposed on the grant of leave that had been made. That application was refused: Cantarella (No 2).

18    On 4 August 2021, orders were made by consent setting down the resumed hearing for four days (and, if the court permitted, to continue on a fifth day) commencing on 6 December 2021.

19    The resumed hearing commenced on 6 December 2021 and concluded on 8 December 2021, at which time judgment was (initially) reserved.

20    By the conclusion of the two hearings, the Court had been provided with a large number of written submissions, which were of considerable length. When those submissions were reviewed in the non-sitting period in January 2022, following closing addresses in December 2021, it became clear that the sequence of the submissions was difficult to follow. The problem was exacerbated by the fact that the parties had used non-standardised terms in their cross-references to each other’s submissions.

21    I therefore listed the proceeding for a case management hearing on 14 February 2022 to discuss my concerns. The parties accepted that revision of the written submissions was required. They advanced a proposal whereby they would adopt uniform abbreviations for the various submissions; that the submissions be presented as a bundle in a given order with certain formatting; and that the submissions be updated with standardised cross-references to each other’s submissions and, where necessary, new transcript references.

22    Revised written submissions, which alleviated some of the problems involved with the sequence of the submissions, were prepared and provided to the Court in electronic form on 24 March 2022. At that time, I was informed that the parties’ written submissions were constituted by the following documents:

(a)    Cantarella’s Opening Submissions on Infringement (16 November 2020);

(b)    Cantarella’s Opening Submissions on the Cross-Claim (Validity) (30 November 2020);

(c)    Cantarella’s Closing Submissions on Infringement (1 November 2021);

(d)    Cantarella’s Closing Submissions on the Cross-Claim (Validity) (1 November 2021);

(e)    Lavazza’s Closing Submissions on Infringement and on the Cross-Claim (Validity) (1 November 2021);

(f)    Cantarella’s Closing Submissions in Answer on Infringement and on the Cross Clam (Validity) (12 November 2021);

(g)    Lavazza’s Closing Submissions in Answer on Infringement and on the Cross-Claim (Validity) (15 November 2021);

(h)    Lavazza’s Closing Submissions on the Molinari Issue (8 December 2021) (replacing submissions dated 22 November 2021);

(i)    Cantarella’s Opening Submissions on the Molinari Issue (20 December 2021) (originally filed on 30 November 2021, but amended with cross-references to the submissions referred to at (h)); and

(j)    Cantarella’s Closing Submissions on the Molinari Issue (20 December 2021) (originally filed on 8 December 2021, but containing a correction made orally by Senior Counsel).

23    On 27 April 2022, Cantarella filed an interlocutory application (dated 22 April 2022) seeking leave to further amend its statement of claim and to re-open its case to allege further infringements by Lavazza of the 098 mark and the 290 mark by the importation and supply of Lavazza coffee capsules in packaging which had not previously been raised in the proceeding. It appears that capsules in this packaging were put on supermarket shelves in Australia from 4 April 2022.

24    Despite Lavazza’s opposition, I was persuaded that leave should be granted to Cantarella to re-open its case on the basis that a determination of the issues raised by the new infringements might well influence the determination of some of the issues already before the Court.

25    On 15 June 2022, I made a number of timetabling orders for the filing of further amended pleadings, further affidavit evidence, and further written submissions. I then listed the proceeding for a case management hearing on 7 September 2022 in the expectation that, at that time, a further hearing date would be appointed.

26    The following further written submissions were filed in respect of the alleged new infringements:

(a)    Cantarella’s submissions in chief dated 19 August 2022;

(b)    Lavazza’s submissions in answer dated 26 August 2022; and

(c)    Cantarella’s submissions in reply dated 2 September 2022.

27    On 5 September 2022, the Court was informed that the parties did not wish to be heard further. Judgment was then reserved from that date.

28    The hearing of the proceeding has been protracted because of the various twists and turns to which I have referred. At the time the hearing was adjourned part heard on 11 December 2020, these twists and turns were not, and could not have been, foreseen. Indeed, at the time of closing addresses on 8 December 2021, the events occurring after that date were not, and could not have been, foreseen.

29    By the time the Court was informed on 5 September 2022 that the parties did not wish to be heard further, other allocated hearings in my docket had, inevitably, intervened, with the consequence that the opportunity for full and complete deliberation of the issues raised in this proceeding has been delayed.

30    The parties have been granted leave to amend their pleadings numerous times. The final pleadings comprise:

(a)    Cantarella’s second further amended statement of claim dated 30 May 2022;

(b)    Lavazza’s third further amended defence dated 27 June 2022;

(c)    Cantarella’s third further amended reply dated 11 July 2022;

(d)    Lavazza’s further amended statement of cross-claim dated 10 June 2021;

(e)    Cantarella’s further amended defence to cross-claim dated 9 July 2021; and

(f)    Lavazza’s reply to further amended defence to cross-claim dated 23 July 2021.

31    A prodigious amount of evidence has been adduced, including through the tender of a large number of documents and a large number of physical exhibits. The documentary tenders are to be found largely, but not exclusively, in two electronic court books. The first court book (comprising 6904 pages) was prepared for the hearing in December 2020. The second court book (comprising 1319 pages) was prepared for the hearing in December 2021. Further evidence was adduced in respect of the alleged new infringements in 2022.

32    As I have noted, objections to evidence were dealt with prior to the commencement of the hearing on 7 December 2020. A number of remaining objections, and a number of new objections to evidence, either fell away during the course of the hearings in December 2020 and in December 2021 or were accommodated by agreed rulings. The affidavits read at those hearings, and the rulings made in respect of those affidavits, have been recorded in a document marked as Joint Exhibit 1. The documents tendered at those hearings (other than documents referred to as exhibits in affidavits which were taken to have been admitted into evidence) have been recorded in a document marked as Joint Exhibit 2.

33    My consideration of this matter has been considerably assisted by the written submissions which I have listed (in total, 498 pages). My consideration has also been assisted by recourse to a full transcript of the proceeding and the extensive notes I made during the course of the hearing.

34    A great many issues were raised and canvassed by the parties. Given the conclusions I have reached, it has not been necessary for me to decide all the issues that were raised.

The Lavazza business in Australia

35    Lavazza Australia is a wholly-owned subsidiary of Luigi Lavazza SpA (LL SpA). Lavazza OCS is a wholly-owned subsidiary of Lavazza Australia.

36    Since 2015, Lavazza Australia has distributed Lavazza products in Australia. Lavazza OCS was established in 2018 to acquire The Blue Pod Coffee Co Pty Ltd which, in the period 2008 to 2018, was the exclusive distributor of Lavazza products in Australia in the Office Coffee Service (OCS) sector.

37    These are relatively recent events. The evidence shows, however, that Lavazza products have been supplied in Australia over a much longer period of time. The history of that activity is relevant to a number of issues in this proceeding.

38    LL SpA was incorporated in Italy as a joint-stock company in 1927. However, the Lavazza business had its beginnings in 1895 when Luigi Lavazza founded a business selling a variety of goods, including soap, spirits, oil, candles, spices, and coffee.

39    LL SpA has its headquarters in Turin. The company has operated as a family business, with generations of the family holding key positions in the management of the company.

40    Following the Second World War, the company’s focus became the production and supply of coffee and related accessories. The business is operated under three principal divisions: Home, Food Service, and OCS.

41    In 1956, LL SpA developed a blend of coffee which it sold under the name TAZZA ORO LAVAZZA. In 1962, the name was changed to MISCELA LAVAZZA ORO. In about 1971, the name was changed again to LAVAZZA QUALITÀ ORO. The product is a premium full-bodied blend of Arabica beans sourced mainly from Central and South America and processed in Turin. The blend is described in the evidence as having a golden crema, a warm colour, and an aroma of fruit and flowers.

42    The graphics and logo for the product were developed in Italy in the 1960s. From at least the 1970s, the product has been packaged and sold in gold-coloured tins and vacuum-packed aluminium foil packets.

43    Early versions of the packaging included, on the front panel, a medallion which was registered as a trade mark in various jurisdictions. In Australia, the mark is Trade Mark No. 340868, which has been registered since 4 December 1979 in Class 30 for “Coffee and all other goods in this class”:

(the Lavazza device mark).

44    The registration in Australia was (and is) subject to an endorsement:

Registration of this trade mark shall give no right to the exclusive use of the Italian words ‘QUALITÀ ORO’, which may be translated into English as ‘GOLD QUALITY’.

45    The packaging—referred to in the evidence as the Classic Packaging—is shown below.

46    It will be observed that the medallion device shown on the Classic Packaging is different to the Lavazza device mark in that the words QUALITÀ ORO appearing under the name LAVAZZA within the medallion are disposed over two lines, rather than one line. Also, the Lavazza device mark is not limited to any particular colour or colours. However, LL SpA has traditionally used red and black colours for the medallion and the ribbons at the top of the medallion. I will refer to the medallion and ribbons as shown on the Classic Packaging as the Classic medallion.

47    LL SpA first exported Lavazza coffee in around 1972. Lavazza products entered the Australian market as a result of a strong relationship between the Lavazza family and the Valmorbida family who, since the 1960s, have owned and operated a wholesale food and wine business generally known as Conga. There are various companies involved in conducting this enterprise. One of these is Valcorp Fine Foods Pty Ltd (Valcorp). Another is Conga Amalgamated Pty Ltd (Conga Amalgamated).

48    Conga commenced importing and distributing Lavazza coffee in about 1974. Initially, there was no written distribution agreement between LL SpA and Conga. The Lavazza products were produced and packaged in Italy under LL SpA’s management. Conga worked with LL SpA on the marketing and promotion of those products in Australia, but LL SpA had final approval over all marketing and communications concerning the products. LL SpA also contributed to the funding of some marketing initiatives which Conga undertook. The range of Lavazza products distributed by Conga included LAVAZZA QUALITÀ ORO.

49    John Valmorbida is a director of Valcorp. His evidence was that, from the beginning, LAVAZZA QUALITÀ ORO was “very much the ‘headline act’” within the range of Lavazza products that Conga imported and distributed. He said that, in terms of volume, LAVAZZA QUALITÀ ORO was “by far the leading blend” within the Lavazza range that Conga imported and sold.

50    Conga sold LAVAZZA QUALITÀ ORO in the Classic Packaging. The evidence establishes that, in the period 1987 to 1989, Conga sold 38,758 cartons of LAVAZZA QUALITÀ ORO in Australia.

51    The evidence contains examples of the advertising and promotional activities undertaken in respect of the Lavazza products. In its closing submissions, Lavazza focused on particular newspaper advertising in La Fiamma newspaper (in New South Wales) and in Il Globo newspaper (in Victoria) for LAVAZZA QUALITÀ ORO. Over the years, the Valmorbida family has had an association with both newspapers, which service the Italian community. Lavazza drew attention to the appearance of the word “oro” in these advertisements. Many of the advertisements in evidence are display advertisements that were placed by independent retailers, not by Conga. Mr Valmorbida’s evidence is that Conga supplied images (provided by LL SpA) of Lavazza products for use by its retail customers to enable them to conduct Lavazza promotions.

52    In the account that follows, I have reproduced the display advertisements because they provide context in which the Lavazza products were promoted. It will be appreciated that these advertisements were but a part of the promotion that was undertaken.

53    On 26 March 1981, the following display advertisement appeared in the La Fiamma newspaper:

54    The relevant part of the advertisement for the present case is:

55    In the period 30 March 1981 to 22 June 1981, the following six display advertisements appeared in La Fiamma:

56    The relevant parts of the advertisements for the present case are:

57    On 4 June 1981, the following display advertisement appeared in La Fiamma:

58    The relevant part of the advertisement for the present case is:

59    In the period 26 August 1982 to 16 May 1988, the following display advertisements appeared in La Fiamma.

60    The relevant parts of the advertisements for the present case are:

61    In the period 25 November 1982 to 6 December 1984, Conga placed a banner advertisement in La Fiamma for Lavazza coffee as part of a television guide, on 23 occasions. The following is an example:

62    In the period 19 August 1985 to 18 February 2002, the following display advertisements appeared in Il Globo newspaper:

63    The relevant parts of the advertisements for the present case are:

64    On 28 March 1988 and 6 June 1994, the following display advertisements appeared in La Fiamma.

65    The relevant parts of the advertisements for the present case are:

66    On 16 November 1990, LL SpA entered into an exclusive distributorship agreement for Australia and New Zealand with one of the companies in the Conga group, Conga Amalgamated. This agreement formalised the previous arrangements between LL SpA and Conga. Amongst other things, the agreement provided that Conga was to effectively and efficiently promote Lavazza products in Australia and New Zealand, subject to LL SpA’s specific prior approval of Conga Amalgamated’s advertising and publicity material. Conga Amalgamated was also granted the right to use some of LL SpA’s trade marks, subject to certain restrictions. The agreement commenced on 1 December 1990, and was for an indefinite period.

67    Following this agreement, advertising for LAVAZZA QUALITÀ ORO continued in the Il Globo and La Fiamma newspapers.

68    Between 27 May 1991 and 30 September 1991, Conga Amalgamated advertised LAVAZZA QUALITÀ ORO in Il Globo, La Fiamma, and also the trade magazine Retail World, by reference to the tagline: LAVAZZA “As good as Gold”. An example from La Fiamma newspaper on 15 August 1991 is:

69    The following colour version of the advertisement appeared in Retail World on 24 July 1991:

70    Sometimes the advertisements included other Lavazza coffee products. Sometimes LAVAZZA QUALITÀ ORO was simply referred to as LAVAZZA ORO.

71    For example, the following advertisement was published in Il Globo on 16 March 1992. The same advertisement was published on 14 occasions between 24 February 1992 and 2 November 1992 in Il Globo and La Fiamma:

72    Another example is the following advertisement published in Il Globo on 1 June 1992:

73    The evidence includes other examples of where, in print media, LAVAZZA QUALITÀ ORO is referred to as “Lavazza Gold”, or where “gold” is used in conjunction with the words “qualità oro”.

74    The evidence also includes invoices issued by supermarkets (including Woolworths and Coles) to Conga for advertising Lavazza coffee, including coffee referred to as “Lavazza Gold”, which I accept is a reference to LAVAZZA QUALITÀ ORO. However, the supermarket catalogues in evidence, which include advertisements for LAVAZZA QUALITÀ ORO, do not use the word “gold” in connection with the product.

75    The evidence also includes a video clip from March 1993 of a Lavazza promotion on the Australian television program “What’s Cooking” in which Ennio Ranaboldo (then the Head of Marketing and Training in the Italian Foodservice Sector at LL SpA) promotes LAVAZZA QUALITÀ ORO and refers to it as “Lavazza Gold Quality”.

76    On 1 July 1994, LL SpA, Conga Amalgamated, and Valcorp (then called Valcorp Holdings Pty Ltd) entered into a Transfer of Distribution Agreement. The effect of this agreement was to transfer the rights and obligations of Conga Amalgamated under the exclusive distributorship agreement to Valcorp. This arrangement continued from 1994 to 2015.

77    A report prepared by Valcorp for LL SpA, dated September 1995 and titled “Australian Market Data Update Report”, included AC Nielsen data which recorded that the LAVAZZA QUALITÀ ORO “GOLD GRND BRICK 250g” had the highest ranking in national sales (excluding Tasmania) for ground coffee, with sales from October 1994 to 30 September 1995 totalling $3,291,104. In its report, Valcorp claimed that, in the period January to September 1995, Lavazza coffee products held 11.1% of the Australian market (excluding Tasmania) for ground coffee.

78    A report prepared by Valcorp for LL SpA dated 6 March 2000, titled “National Market Overview Roast Coffee Valcorp Fine Foods”, included AC Nielsen data which recorded that the LAVAZZA QUALITÀ ORO “GOLD GRND BRICK 250g” had the highest ranking in national sales with a 4.9% share of the market segment for ground coffee. The LAVAZZA QUALITÀ ORO “GOLD GRND BRICK 500g” was ranked fourth in national sales with a 3.1% share of the market segment for ground coffee.

79    In 2003, LL SpA commissioned Ipsos to conduct a brand awareness survey of the Lavazza brand, including in Australia. Amongst other things, the results showed that consumer awareness in Australia of the Lavazza brand increased from 25% in 1999 to 28% in 2003; that, from 2000 to 2003, 80% of consumers who were aware of the Lavazza brand associated it with high quality coffee and 84% associated it with being consumed at a bar or restaurant; and that, in 2003, 79% of consumers aware of the Lavazza brand associated it with Italian provenance, with 77% of consumers identifying it as a well-known brand.

80    In 2003, LL SpA commissioned AC Nielsen to prepare a report on the Australian market for coffee. The report, titled “The coffee market in Australian Families”, was dated 9 January 2003. Of the 17 Lavazza products listed, “Lavazza Gold Ground Coffee 500g” (which I take to be a reference to LAVAZZA QUALITÀ ORO) was shown as at 28 September 2002 to be the second most popular Lavazza product (equal with “Lavazza Black Ground Coffee 250g”). The most popular Lavazza product was “Lavazza Caffe Espresso 250g”. The fourth most popular product was “Lavazza Gold Ground Coffee 125g” (which I also take to be a reference to LAVAZZA QUALITÀ ORO).

81    In May 2004, Valcorp placed the following advertisement for Lavazza coffee (including LAVAZZA QUALITÀ ORO) in Retail World magazine:

82    Valcorp placed a similar advertisement in Retail World in May 2005:

83    Lavazza draws attention to the description, in each advertisement, of LAVAZZA QUALITÀ ORO as “Lavazza Gold Grnd Brk” (250g and 500g) and “Lavazza Gold Bean”.

84    In 2007, Valcorp and LL SpA agreed to update the packaging of the Lavazza products destined for Australia. This was to distinguish the products sold by Valcorp as LL SpA’s exclusive distributor in Australia from genuine Lavazza products that were being imported into Australia by third parties.

85    The new packaging was more uniform in design. At the time, there were seven Lavazza retail products. All retained a medallion device, but each product was allocated a unique colour, with LAVAZZA QUALITÀ ORO retaining its gold-coloured packaging:

86    The medallion in the new packaging is different to the Classic medallion. The wreath is depicted outside the medallion; the black and red ribbons have been removed; the background colour of the medallion is blue, not LL SpA’s traditional red; and the word “Torino” and the date “1895” have been added. I will refer to the medallion in this form as the Blue medallion.

87    Exceptionally, new packaging was not developed for the LAVAZZA QUALITÀ ORO twin packs (2x250g). This product was packaged in accordance with LL SpA’s international (called ESTERO) packaging:

88    From at least around 2010, the ESTERO packaging for LAVAZZA QUALITÀ ORO included the following forms:

89    The medallion in this packaging is also different to the Classic medallion. The brand name LAVAZZA is not part of the medallion. Rather, it appears at the top of the packaging with the words “Italy’s favourite coffee” underlined by a strip bearing the colours of the Italian flag; and an image of a cup of coffee appears at the base of the medallion. The packaging depicted on the right above also uses a new font for the words “qualità oro”, which are depicted in gold with the word “oro” larger than the word “qualità”. For both packs, there is no associated ribbon device. I will refer to this as the ESTERO medallion. It is important to note, however, that other than for the twin packs, the packaging of LAVAZZA QUALITÀ ORO in Australia remained, at this time, the packaging with the Blue medallion. There were, however, parallel importations into Australia, in around 2010 or 2011, of products in the ESTERO packaging depicted above on the right.

90    Valcorp maintained websites from the early 2000s on which it advertised the Lavazza range of coffee products. Examples taken from the website on 19 September 2008 and 16 October 2011 include depictions of LAVAZZA QUALITÀ ORO, in the packaging with the Blue medallion, with the following description:

Qualita Oro or Lavazza Gold, as it is known in Australia, is the iconic product that made Lavazza famous worldwide and is also the first product to be imported to our shores by the founders of Valcorp Fine Foods back in 1955. Its classic Italian blend has been a favourite of Australian coffee connoisseurs for many years.

91    In 2013, LL SpA updated its Italian packaging for LAVAZZA QUALITÀ ORO. This packaging was launched in September 2013:

92    In 2014, LL SpA updated the ESTERO packaging for LAVAZZA QUALITÀ ORO to bring it into “harmony” with the updated Italian packaging:

93    In Australia, the update to the ESTERO packaging only applied to LAVAZZA QUALITÀ ORO twin packs:

94    The evidence establishes that there were substantial sales of this product in Australia for the 2015 year. The monetary value of these sales is given in a confidential exhibit. It is not clear whether the years referred to are calendar years or financial years, but nothing turns on this for present purposes. Apart from the twin packs, Valcorp continued to supply coffee in Australia in the packaging with the Blue medallion.

95    By 2015, the Lavazza business in Australia had grown to such a size that LL SpA decided to undertake direct distribution. As a consequence, the distribution agreement with Valcorp was brought to an end and Lavazza Australia commenced distribution of all the Lavazza products. In effect, the distribution of Lavazza products in Australia was brought “in-house”.

96    In June 2015, LL SpA issued guidelines for the LAVAZZA brand (the 2015 Brand Guidelines). The 2015 Brand Guidelines were designed to emphasise LAVAZZA as the “masterbrand” and the “central element” above all other promotional elements.

97    At around this time, LL SpA updated the Australian-specific packaging for LAVAZZA QUALITÀ ORO. This change reflected the changes introduced by the 2015 Brand Guidelines:

98    In 2015, LL SpA commenced a global packaging update—the “Perfect Pack” project. One of the main objectives of the project was to guarantee recognisability of the LAVAZZA brand across all countries, categories, and segments. Another objective was to create global consistency in the presentation of the packaging of LL SpA’s international range of products. The project involved 90 countries and 300 new packaging designs, including in respect of LAVAZZA QUALITÀ ORO.

99    There was concern within Lavazza Australia that the “Perfect Pack” project would affect the structural consistency that had been achieved for the LAVAZZA product range in Australia through use of the Australian packaging incorporating the Blue medallion. Lavazza Australia saw the proposed changes as posing a significant risk to the existing Australian “brand block”.

100    A draft of a Lavazza Australia internal “marketing update” expressed this concern as follows:

[T]he new pack structure is very different within the Autralian (sic) range and lacks structural consistency. As such, it look (sic) uncoordinated and undermines our premium brand image. We will lose the lovely brand block we have today with the recognisable (and consistent) flat colour and circle lockup.

101    In 2017, LL SpA rolled out the “Perfect Pack” revision to LAVAZZA QUALITÀ ORO. This revision applied globally and extended to the packaging of LAVAZZA QUALITÀ ORO products sold in Australia, replacing the packaging with the Blue medallion, which LL SpA considered to be inconsistent with its global uniform packaging strategy:

102    The twin packs of LAVAZZA QUALITÀ ORO were supplied in Australia in the following packaging:

103    Cantarella contends that Lavazza’s supply in Australia of coffee in the “Perfect Pack” revisions referred to above infringes its registered marks.

104    As I have noted, in 2018 Lavazza OCS acquired the exclusive distributor in Australia of the Lavazza products in the OCS sector.

105    On 10 December 2018, LL SpA entered into separate distribution agreements with Lavazza Australia and Lavazza OCS, granting them exclusive distribution rights in respect of LAVAZZA products and the use of LL SpA’s trade marks.

106    In 2018, LL SpA conducted market research in Australia and Italy relating to updated packaging for LAVAZZA QUALITÀ ORO, including the possibility of introducing a “Mountain Grown” sub-blend.

107    As a result of this work, LL SpA introduced new packaging for LAVAZZA QUALITÀ ORO in 2019 which, at the same time, also introduced the “Mountain Grown” sub-blend. The new packaging for LAVAZZA QUALITÀ ORO was:

108    The new packaging of the twin packs of LAVAZZA QUALITÀ ORO was:

109    The packaging of the LAVAZZA QUALITÀ ORO “Mountain Grown” sub-blend was:

110    Cantarella contends that Lavazza’s supply in Australia of coffee in the new packaging introduced in 2019 infringes its registered trade marks.

111    In more recent times, LL SpA has launched new aluminium packaged Nespresso-compatible coffee capsules (NCCCs), including for LAVAZZA QUALITÀ ORO. The packaging for these products is the same for all of LL SpA’s markets. The packaging for the LAVAZZA QUALITÀ ORO NCCCs is closely similar to the 2019 packaging referred to above, except for the fact that the capsules themselves prominently bear the word “oro” in stylised script and the front of the box, in which the capsules are contained, bears an image of such a capsule:

112    In 2021, Lavazza Australia showed the NCCCs to a number of main supermarket retailers in Australia as part of an annual review process.

113    Between 15 February and 11 April 2022, Lavazza Australia imported a large quantity of NCCCs which included LAVAZZA QUALITÀ ORO NCCCs. Between 4 and 12 March 2022, Lavazza Australia supplied LAVAZZA QUALITÀ ORO NCCCs, as well as other NCCCS, to Coles. These products were available for sale to the public from 4 April 2022.

114    Lavazza says that LL SpA supplied the LAVAZZA QUALITÀ ORO NCCCs to it by mistake—the mistake being that, while the present proceeding was on foot, LL SpA had determined that these NCCCs should not be supplied in Australia. However, because of oversight and communication mistakes within LL SpA, those products were supplied to Lavazza Australia.

115    From 11 April 2022, Lavazza Australia took steps to suspend the further sale and promotion of the LAVAZZA QUALITÀ ORO NCCCs. Nevertheless, the products that were already on shelves at Coles were sold and Lavazza Australia continued with its pre-planned promotional launch of those products. Lavazza Australia subsequently arranged a “clearance promotion” with Coles, commencing from around 4 May 2022, to have the products sold-down as quickly as possible so that they would, by that means, be “removed” from the market. In the course of that activity, some promotional materials for LAVAZZA QUALITÀ ORO NCCCs remained on display.

116    Before 9 April 2022 (when it learned of the mistake), Lavazza Australia had also provided samples of the LAVAZZA QUALITÀ ORO NCCCs to other retailers. One of these retailers was Amazon Australia, which subsequently placed orders for the product. Despite measures taken by Lavazza Australia to impede the receipt of such orders, orders from Amazon Australia were received and processed. Amazon Australia then supplied LAVAZZA QUALITÀ ORO NCCCs online for a limited time.

The use of “oro” by Molinari in Australia

117    The use by Molinari of the word “oro” as a trade mark in Australia was a substantial topic in this proceeding. Its significance lies in Lavazza’s challenge to the validity of the registrations of the 098 mark and the 290 mark. Lavazza contends that Cantarella’s claim to ownership of the ORO word mark (registered as the 098 mark and the 290 mark) is defeated by the sale of coffee by Molinari to CMS Coffee Machine Services Pty Ltd (CMS, later called Saeco Australia Pty Ltd (Saeco)) in Australia from September 1995, which Lavazza says amounted to use of the word “oro” as a trade mark. This is before the first date on which Cantarella says it used the ORO word mark in respect of coffee. Hence the significance of this topic in the proceeding.

118    Lavazza’s case focuses critically on three shipments of CAFFÈ MOLINARI ORO coffee which, it says, Molinari invoiced to CMS in September and October 1995 and in March 1996. The invoices for the shipments are no longer available because of changes to Molinari’s computer system in March 1996 and because archived documents have been destroyed over time. However, Maurizia Baraccani—the Head of Molinari’s Data Processing Centre who has worked for Molinari since 1994 and who assumed the role of Head of the Data Processing Centre in 1997—interrogated Molinari’s computer records and prepared two spreadsheets of sales data concerning Molinari coffee exported to Australia in the period 1995 to 2003.

119    CMS was the first Australian distributor of Molinari coffee. In Molinari’s sales records, CMS was given the client code 110103453 and Saeco was given the client code 110103878.

120    In her evidence in chief, Ms Baraccani explained that, before 1996, information relating to all Molinari coffee sales, both in Italy and abroad, was stored on a database managed by a computer system called “Olimpix”. Using that system, Molinari issued invoices to customers and recorded sales data in the system. The invoices were printed in hard copy and sent to customers by post or facsimile transmission. Molinari kept the hard copies in its archives. However, much of Molinari’s old paper records, including sales invoices, have now been destroyed.

121    Ms Baraccani participated in the migration of data from the Olimpix system to a new management system called “Kronos”. The migration occurred in March 1996. Because of limits on the type of information stored in the Olimpix database, only some information in relation to Molinari’s sales and products, existing before June 1996, was migrated to the Kronos system. The Kronos system can reproduce old sales invoices from 1996 onwards, but it cannot do so for sales before 1996 because the data transferred from the Olimpix system was only for “statistical purposes”. The Kronos system is still in operation at Molinari.

122    The spreadsheets prepared by Ms Baraccani contained data for client codes 110103453 (CMS) and 110103878 (Saeco). The spreadsheets also contain data for client codes 110106320 and 110107006: see [134] below.

123    Fabrizio Mengoli is the Sales, Marketing and Export Manager for Molinari. He was promoted to that position in 2008. He commenced his employment with Molinari on 18 March 1996 as an Export Manager. At that time, he was responsible for administering all exports of Molinari coffee, which included developing procedures for the sale and export of coffee, liaising with overseas clients, managing communications with export authorities, developing relationships with customers in global markets, and ensuring that orders placed with Molinari were fulfilled.

124    Mr Mengoli gave evidence concerning the Molinari coffee business, particularly with reference to the sales of CAFFÈ MOLINARI ORO coffee to Australia.

125    When Mr Mengoli commenced working at Molinari in March 1996, CAFFÈ MOLINARI ORO coffee was packaged as follows:

126    Mr Mengoli (and others in his team) carried out an investigation of Molinari’s records to ascertain whether different packaging was used by Molinari for these products in 1995. The result of this investigation was that nothing was identified which suggested that there was different packaging for these products in 1995.

127    A sample of the 3 kg product is in evidence. The sample was packaged on 25 September 2007. However, I am satisfied that the sample exemplifies the packaging of the 3 kg product in 1995.

128    The use of the word “bar” on the packaging of the 1 kg product refers to the fact that it was sold as part of Molinari’s “bar range”. Products in the bar range are sold to “coffee bars” (the equivalent of cafes). The 3 kg product was also part of Molinari’s bar range. Mr Mengoli’s evidence was that the word “bar” does not appear on the packaging of the 3 kg product because, given the size of the product, it was obviously intended for the hotels, restaurants, and catering distribution line of Molinari’s business.

129    With reference to the first spreadsheet prepared by Ms Baraccani, Mr Mengoli identified that the first recorded shipment by Molinari of coffee to Australia was on 18 September 1995. The supply was to CMS for products having specified product codes. The product codes included code 6093 and code 6091.

130    Mr Mengoli’s evidence was that product codes beginning with “60” and “15” refer to products within (what he called) “Molinari’s Oro range”. The evidence before me includes extracts of records from the Kronos system of various product codes. The records confirm that product code 6093 (which is recorded as having been created on 13 March 1996) refers to the product described as “CAFFE’ ORO BAR GRANI 3000g” and product code 6091 (which is recorded as also having been created on 13 March 1996) refers to the product described as “CAFFE’ ORO BAR GRANI 1000g”. Mr Mengoli said, and I accept, that the word “grani” in Italian means, in English, “grains” or “beans” and that this is how “grani” is used in these descriptions.

131    I draw attention to the recorded dates of creation of the product codes because, on the evidence before me, these dates correspond to the date of migration of Molinari’s sales records into the Kronos system. Mr Mengoli’s evidence was that, throughout March 1996, existing product items were migrated across from the Olimpix system to the Kronos system. However, the product codes themselves existed before 13 March 1996. I accept that evidence.

132    With reference to the first spreadsheet prepared by Ms Baraccani, Mr Mengoli identified further shipments of coffee to CMS on 17 October 1995 and 26 March 1996 (approximately one week after Mr Mengoli commenced his employment with Molinari). Once again, the invoices for the shipments are no longer available, but the Kronos system records that the shipments included product codes 6093 (the 3 kg pack) and 6091 (the 1 kg pack). Mr Mengoli’s personal observation was that, as at 26 March 1996, these particular products were packaged as shown at [125] above.

133    Molinari’s first three shipments to CMS on 18 September 1995, 17 October 1995, and 26 March 1996 comprised 36 units of product code 6093 (the 3 kg pack) and 612 units of product code 6091 (the 1 kg pack), being (in total) 720 kg of CAFFÉ MOLINARI ORO coffee. Mr Mengoli estimated that this was enough product to make approximately 86,400 to 100,800 cups of coffee.

134    The evidence also includes copies of invoices (extracted from the Kronos system) issued by Molinari to CMS and Saeco in the period from 24 July 1996 to 16 April 2003, and to two other Australian customers of Molinari—namely, a business called Coffee Supplies Australia located in Perth, Western Australia (client code 110106320) and Russo Pty Limited located in Hurstville, New South Wales (client code 110107006).

135    The invoices issued by Molinari to CMS in the period from 24 July 1996 to 24 March 2000 (the priority date of the 098 mark) include CAFFÈ MOLINARI ORO coffee in the 250 g pack (packaged as shown at [125] above).

136    The invoices issued by Molinari to Coffee Supplies Australia are for the period 9 December 1999 to 4 April 2002. The only invoice that predates the priority date of the 098 mark is an invoice dated 9 December 1999 which includes CAFFÈ MOLINARI ORO coffee pods (packaged as shown at [125] above).

137    The invoice issued by Molinari to Russo Pty Limited is dated 26 October 2000. This is after the priority date of the 098 mark but before the priority date of the 298 mark. The invoice includes CAFFÈ MOLINARI ORO coffee in the 1 kg pack.

138    To complete the chain of evidence in relation to Molinari’s first supply of coffee to CMS, Lavazza called evidence from Giorgio Massimo Ubertini and Esther Toledano. Cantarella initially objected to the receipt of this evidence (in the form of Mr Ubertini’s and Ms Toledano’s respective affidavits) on the basis that the evidence was not in reply. However, Mr Ubertini’s and Ms Toledano’s affidavits were read (subject to agreed rulings) and both deponents were cross-examined.

139    Mr Ubertini was a director of CMS (and then Saeco) between June 1993 and June 2007. He set up CMS with three business partners—Antonio Petrolito, Vincenzo Nespeca, and Angelo Augello. He was one of CMS’s directors and oversaw all aspects of the operation and management of its business. This included travel to Italy to liaise with manufacturers and to source products for CMS’s business.

140    CMS’s primary business was the importation and distribution of a range of Italian commercial and domestic coffee machines and grinders. The business also offered after-sales servicing and training to its customers, who were mainly commercial coffee suppliers and coffee roasters. However, CMS also supplied non-commercial customers (Mr Ubertini referred to them as “ordinary customers”) who bought domestic coffee machines and grinders for home use.

141    CMS operated from various premises in Melbourne, firstly from 1/33 Acheson Place, Coburg and then, from about August 1996, from 86 Newlands Road, Reservoir. In the middle of 2002, after CMS changed its corporate name to Saeco Australia Pty Ltd, the premises moved “across the road” to 87 Newlands Road.

142    Mr Nespeca and Mr Augello were also coffee roasters. They operated a separate business distributing their own brand of coffee called MONTE COFFEE. For a time, CMS’s business operated next door to the MONTE COFFEE warehouse, which was located at 31 Acheson Place, Coburg.

143    In the first couple of years of its business, CMS provided promotional packs of MONTE COFFEE to purchasers of its coffee machines.

144    In mid-1995, Mr Ubertini and Mr Petrolito purchased Mr Nespeca’s and Mr Augello’s shares in CMS, after which Mr Nespeca and Mr Augello were no longer involved in CMS’s business. Corporate records show that Mr Nespeca and Mr Augello ceased being directors of CMS on 17 August 1995. It seems that the parting was not entirely amicable. There were, apparently, some bad feelings due to disagreements about the operation of the CMS business.

145    After Mr Nespeca and Mr Augello had left, CMS had the opportunity to offer other brands of coffee to its customers. Mr Ubertini took up that opportunity.

146    Mr Ubertini’s evidence was that, in around September 1995, while in Italy on a regular buying trip and in his home town of Modena, he visited Molinari’s headquarters and met Giuseppe Molinari for the purpose of securing supplies of Molinari coffee to replace the MONTE COFFEE that CMS had previously supplied.

147    Mr Ubertini fixed on the period “of around September 1995” for two principal reasons. First, his meeting with Mr Molinari was not long after Mr Nespeca and Mr Augello had left the CMS business. Secondly, Mr Ubertini recalled that his meeting took place during one of his regular trips to Italy to attend the HOST tradeshow. The HOST tradeshow is Italy’s leading trade fair for the catering and hospitality industry. It was where Mr Ubertini met the suppliers of the coffee machinery that CMS was selling. When Mr Ubertini attended the HOST tradeshow, his practice was to travel to Italy at the end of August or the start of September, attend the tradeshow in October, and then return home to Australia immediately thereafter.

148    Mr Ubertini’s evidence was that he placed an initial order with Molinari for CAFFÈ MOLINARI ORO at his first meeting with Mr Molinari. Mr Ubertini was not able to recall precisely when the first shipment of the coffee arrived in Australia. He did recall, however, that the first shipment arrived shortly after he returned from the 1995 HOST tradeshow at the end of October 1995. He also said that, at the time, he was importing a lot of products from Italy which generally arrived by sea sometime between 3 to 6 weeks after orders were placed. This is broadly consistent with Mr Mengoli’s evidence as to the time taken for shipments by sea from Italy to Australia. Mr Mengoli’s evidence was that Molinari’s invoices are dated on the day that products leave its warehouse en route to its customers. Molinari’s shipments to Australia have always been by sea, with shipments generally taking between 25 to 50 days to arrive in Australia.

149    At the time that the first shipment arrived, CMS’s business was still located at 1/33 Acheson Place, Coburg, next door to the MONTE COFFEE warehouse. Mr Ubertini said that he covered the first pallet of the coffee received from Molinari when it arrived at CMS’s premises because he did not want to upset Mr Nespeca and Mr Augello by “showing off” the new brand of coffee he had imported. As I have noted, the circumstances in which Mr Nespeca and Mr Augello left the CMS business were not entirely amicable and Mr Ubertini did not want to increase the tensions between them by selling a competing brand of coffee in close proximity to the MONTE COFFEE warehouse. That said, Mr Ubertini’s evidence was that CMS continued to purchase the cheapest blend of MONTE COFFEE, which was used in the testing and servicing of the coffee machines supplied by CMS (as Mr Ubertini later explained, he did not want to use the more expensive CAFFÈ MOLINARI ORO for this purpose).

150    Although Mr Ubertini could not recall specifically what was in the first shipment, he nevertheless remembered that it was CAFFÈ MOLINARI ORO, which he described as the “top-quality Molinari coffee used in bars and restaurants in Italy, mainly in 1 kg bags”. He also remembered that CMS imported some larger 3 kg bags of the same blend.

151    Following the first shipment, Mr Ubertini remained the key contact within the CMS business for purchases of CAFFÈ MOLINARI ORO coffee. This involved placing orders by telephone and facsimile, receiving invoices and overseeing the payment of the invoices, and other general correspondence with Molinari. After initially dealing with Mr Molinari directly, Mr Ubertini commenced to deal with Mr Mengoli several months later.

152    The evidence includes a copy of a letter dated 23 July 1996 from Molinari addressed to CMS at 1/33 Acheson Place, Coburg. The copy of the letter was found in Molinari’s archived records. It is written in Italian, but an English translation has been provided by an independent translator. The letter was written by Mr Mengoli. Mr Mengoli addressed the letter personally to “Mr Ubaldini”.

153    Mr Mengoli’s evidence was that the reference to “Mr Ubaldini” was a misspelling of Mr Ubertini’s name. Mr Mengoli says that, at the time, Mr Ubertini was the only person in Australia with whom he was dealing. I accept this explanation of the use of “Mr Ubaldini”.

154    The letter commences by thanking “Mr Ubaldini” for an order and for a “cordial telephone call [on] 18/06/96”. The letter then raises various propositions that Molinari was interested in pursuing with CMS—specifically, filters; “white label” coffee pod production; and developing Molinari coffee distribution in Australia.

155    Mr Ubertini’s evidence did not go so far as to acknowledge his receipt of this letter, although he did say that he recalled receiving “many communications of this sort throughout CMS’s trade relationship with Molinari”.

156    Cantarella submits that this letter is not consistent with “any relevant existing relationship” between Molinari and CMS and that, taken with Mr Mengoli’s cross-examination, indicates, amongst other things, that there was no actual or even potential supply of Molinari coffee to CMS prior to 18 September 1996 (i.e., one year later than the Molinari affidavits show).

157    In that connection, Cantarella draws attention to the fact that the letter refers to Mr Mengoli having included “some samples of pods which we hope may come close to those demanded by your market for a much longer extraction of coffee”. Cantarella submits that it is unlikely that there would have been a supply of sample pods if Mr Ubertini had already ordered them in a previous shipment. Cantarella submits that this makes the possibility of any transaction between Molinari and CMS before 23 July 1996 “improbable”.

158    I do not accept that submission. Molinari’s computer records show that, prior to 23 July 1996, the only shipment of pods to CMS was that covered by an invoice dated 26 March 1996. This was for only 5 units (with 25 pods to a unit). The identity of the pods to which the letter of 23 July 1996 refers has not been established. In other words, it is far from clear that the samples that Mr Mengoli provided were the same product as the relatively small quantity of pods that Molinari had shipped under the invoice. Indeed, there is good reason to think that they were not. In his letter, Mr Mengoli said that “… on the basis of your report, we have included some samples of pods …” (emphasis added). This suggests that Mr Ubertini had already reported to Mr Mengoli on pods and that Mr Mengoli was sending further pods, which had a “much longer extraction of coffee” for Mr Ubertini to try.

159    Mr Ubertini said that, from September 1995 to about 2003, CMS purchased CAFFÈ MOLINARI ORO from Molinari. He said that when pallets arrived in Australia, he arranged for someone in the business to check that all the goods on the relevant invoice had arrived. He said that he did not recall any shipments that he had ordered not arriving or falling short of the orders that had been placed.

160    Mr Ubertini recalled that the packaging of the CAFFÈ MOLINARI ORO coffee that CMS received was that depicted above at [125].

161    Mr Ubertini’s evidence was that CMS imported the CAFFÈ MOLINARI ORO coffee to sell alongside its coffee machines direct from CMS’s premises, rather than the MONTE COFFEE. He said that, from about the end of October 1995 onwards, customers who purchased a domestic coffee machine from CMS were given a “promotional” 1 kg bag of CAFFÈ MOLINARI ORO in the packaging depicted above at [125]. He said that this form of promotion proved to be very successful because many of CMS’s domestic customers would return to purchase more packs. He said that, from the end of October 1995 onwards, he recalled selling CAFFÈ MOLINARI ORO coffee directly to customers “on many occasions”.

162    Mr Ubertini also gave evidence that, at the start of CMS’s importation of CAFFÈ MOLINARI ORO coffee, he also sold 3 kg and 1 kg packs to Giancarlo Squillaciotti for use in the Italian restaurant called “Trattorante”, which operated on Church Street, South Brighton.

163    Mr Ubertini also gave evidence that staff and directors of CMS also used the CAFFÈ MOLINARI ORO coffee to make coffee beverages for themselves and customers at CMS’s premises to promote the coffee.

164    Mr Ubertini said that CMS’s sales of CAFFÈ MOLINARI ORO coffee increased from about August 1997 when CMS moved to new premises at 86 Newlands Road, Reservoir. Mr Ubertini felt that CMS could more freely promote the coffee at the new premises without upsetting Mr Nespeca and Mr Augello. However, CMS only promoted and sold CAFFÈ MOLINARI ORO coffee on its premises. It did not actively promote or advertise the coffee because, although keen to sell it, the focus of CMS’s business was coffee machines and Mr Ubertini did not want to “cut across” CMS’s valued customers who were coffee suppliers or coffee roasters. Therefore, the CAFFÈ MOLINARI ORO coffee was only directly promoted to “domestic” customers and other customers who were not coffee suppliers or coffee roasters.

165    I did not find Mr Ubertini to be an entirely satisfactory witness under cross-examination. On some occasions he appeared to be unable to attend to the questions asked of him. On some occasions, he gave answers that were not entirely responsive. On some occasions, he attempted to offer information he was not asked to offer (he was loquacious).

166    In fairness, I should point out that Mr Ubertini gave his oral evidence by video-link from Italy at a difficult time (late evening/early morning). Mr Ubertini is elderly and giving evidence by this means at this time of the day was likely to have been challenging for him. I make allowance for that possibility in relation to his presentation as a witness. I do not think that Mr Ubertini was intending to be unhelpful. I do not think that he was attempting to evade answering questions. I consider him to be a truthful witness. Nevertheless, based on his presentation in cross-examination, I treat his evidence with circumspection.

167    Ms Toledano was employed by CMS (and then Saeco) between June 1993 and February 2007 as a Finance and Administration Manager. In that role, she was responsible for supervising and maintaining financial and administrative records, and monitoring CMS’s systems to account for and reconcile expenditures, sales, balances, and payments. This involved managing invoices, shipping costs, and data entry in relation to CMS’s imports and sales to ensure that all stock was accounted for.

168    Ms Toledano confirmed that CMS operated from different premises in Melbourne including, first, 1/33 Acheson Place, Coburg until CMS moved its warehouse premises to 86 Newlands Road Reservoir. Ms Toledano fixed the date of the move as (around) August 1996 by reference to the birth of her daughter (having previously deposed that the move occurred around August 1997). Ms Toledano said that CMS moved to 87 Newlands Road in the middle of 2002.

169    I do not think that anything turns on the date of the move to 86 Newlands Road. However, I mention these matters because Cantarella places much reliance on a company search of CMS which shows that the start date for the business address at 1/33 Acheson Place was 24 July 1996—the point being, apparently, that, if this was the actual start date, CMS could not have received supplies of Molinari coffee at 1/33 Acheson Place in 1995 or the early part of 1996.

170    I do not accept that contention. Whatever the corporate records with the Australian Securities and Investments Commission (ASIC) show, I accept Ms Toledano’s evidence as to the actual location of CMS’s business in 1995 and the first half of 1996. I note, in this regard, that, curiously, the same company search also shows that CMS’s principal place of business in the period 30 June 1994 to 23 July 1996 was 31 Acheson Place.

171    The better view of the evidence is that before 24 July 1996 (including in 1995), CMS’s principal place of business was actually 1/33 Acheson Place. It is possible (although I do not need to find) that, because of the corporate and business relationship between the four founders of the CMS business, and bearing in mind that Mr Nespeca’s and Mr Augello’s other business (MONTE COFFEE) was next door to CMS at 31 Acheson Place, the 31 Acheson Place address was originally, but mistakenly, given to the Australian Securities and Investments Commission as CMS’s principal place of business. I am satisfied, however, that CMS did not trade, physically, from the MONTE COFFEE premises at 31 Acheson Place. I am satisfied that Molinari’s early shipments of coffee to CMS were received at 1/33 Acheson Place, which was CMS’s principal place of business before 24 July 1996.

172    I also note that Mr Mengoli’s letter to “Mr Ubaldini” was dated 23 July 1996, and addressed to CMS at 1/33 Acheson Place, indicating that that address was already known to Mr Mengoli (or, at least, Molinari). Cantarella suggests that, at the time of the conversation between Mr Mengoli and Mr Ubertini (to which the letter refers), Mr Ubertini must have given the 1/33 Acheson Place address as a “proposed new address” for CMS. I am not persuaded that this was the case. It is more likely that this address was already known to Molinari because, in fact, it had already made shipments of Molinari coffee to that address.

173    In Ms Toledano’s early years of employment at CMS, she was the only person physically working in the business (apart from Mr Ubertini and Mr Petrolito). This meant that she was responsible for taking orders (in person and over the telephone), packing orders, and selling machinery and coffee to walk-in customers when Mr Ubertini was not at the warehouse. CMS employed another person to assist with these tasks in around April or May 1996, when Ms Toledano was pregnant with her first daughter (who was born in September 1996).

174    Ms Toledano’s affidavit evidence was that, shortly after Mr Nespeca and Mr Augello left the CMS business, CMS began importing coffee from Molinari to supply to its customers. Ms Toledano placed the commencement of this activity at sometime after August 1995, but before the end of 1995. She said that, although not involved in arranging the purchases, she remembered shipments of Molinari coffee arriving at CMS’s warehouse at 1/33 Acheson Place. It was part of her job to take account of all imported goods to make sure they “aligned with the invoices”.

175    Ms Toledano’s evidence was that CMS mainly imported CAFFÈ MOLINARI ORO beans in 1 kg packs. However, she said that, at the start, CMS also imported larger 3 kg packs of CAFFÈ MOLINARI ORO beans. Ms Toledano said that CMS later imported CAFFÈ MOLINARI ORO coffee pods (when CMS started to sell pod machines), and also some ground CAFFÈ MOLINARI ORO coffee in 250 g packets. She said that CMS’s preference was to import beans rather than ground coffee, so that the beans could be sold with CMS’s coffee machines and grinders. Ms Toledano confirmed that the Molinari coffee was packaged as depicted at [125] above.

176    Ms Toledano’s evidence was that the CAFFÈ MOLINARI ORO coffee was kept in CMS’s showroom at its warehouse at 1/33 Acheson Place, and that, in order to promote sales of the coffee, 1 kg packs were provided to customers when they purchased coffee machines. Ms Toledano recalled that customers who purchased domestic coffee making machines from CMS, and had received a “promotional” pack of CAFFÈ MOLINARI ORO, would often return to CMS’s warehouse to purchase more of the coffee. Her evidence was that some customers returned within a month of receiving the first pack. Ms Toledano said that she specifically recalled providing and selling bags of CAFFÈ MOLINARI ORO coffee to several of these walk-in customers when she was alone in CMS’s showroom at 1/33 Acheson Place.

177    Ms Toledano’s evidence was that CMS continued to import and sell CAFFÈ MOLINARI ORO after CMS moved its warehouse premises to 86 Newlands Place in around August 1996.

178    Ms Toledano said that CMS “did not ever widely advertise its distribution” of Molinari coffee. This was because selling coffee was only a small part of the CMS business and CMS did not want to be seen by its coffee supplier customer-base to be promoting and selling coffee that would be a rival brand to the coffee supplied by those customers. Nevertheless, Ms Toledano said that, before April/May 1996 (i.e., at a time when she was CMS’s only employee at the premises at 1/33 Acheson Place), she often made cups of coffee for walk-in customers using the 3 kg and 1 kg bags of CAFFÈ MOLINARI ORO. She said that these bags were displayed next to the coffee machines and grinders used in the warehouse, for customers to see and purchase.

179    Ms Toledano was not directly challenged in cross-examination on her affidavit evidence. She agreed that the first supply of Molinari coffee was to CMS’s premises at 1/33 Acheson Place. She said that CMS was at 1/33 Acheson Place from 1993. It was put to her that the ASIC records showed that CMS’s principal place of business did not become 1/33 Acheson Place until 24 July 1996. She responded by saying that she did not know what the ASIC records showed, but CMS was trading at 1/33 Acheson Place before 1996.

180    It was put to Ms Toledano that the first shipment of Molinari coffee did not arrive until after 24 July 1996. She gave this answer:

… Well, I know it arrived when we were still at 1/33 Acheson Place – yes – so July – no, it would have been before that, I think. Or maybe around that time. I can’t recall exactly when the shipment arrived.

And do you accept that the first arrival was at 1/33 Acheson Place?---Yes.

181    Ms Toledano later accepted that it was possible that the first shipment arrived after 24 July 1996. But, in the end, her oral evidence was no more definite than that (a) the first shipment would have arrived before 24 July 1996; (b) that it was at least possible that it arrived after 24 July 1996; and (c) that the first shipment arrived at 1/33 Acheson Place which CMS had occupied from 1993.

182    Ms Toledano’s affidavit gives a more focussed recollection—namely, that CMS commenced ordering Molinari coffee shortly after Mr Nespeca and Mr Augello had left the CMS business, and that the first two shipments from Molinari arrived before the end of 1995. Although Ms Toledano’s oral evidence throws some doubt on the reliability of this recollection, I do not take her to have resiled from what she had said in her affidavit. Moreover, her evidence must be considered as a whole and with the other evidence before the Court, which includes Mr Ubertini’s evidence as to his first order on Molinari and the timing of the arrival of that order at 1/33 Acheson Place, and Molinari’s available accounting records, which accord with Mr Ubertini’s evidence on this topic.

183    It is necessary for me to say something about an affidavit given by Mr Molinari in the Modena proceeding (to which I refer at [264] below). In that affidavit, which was tendered by Cantarella in this proceeding, Mr Molinari deposed that Molinari commenced exporting products to Australia “in or about July 1996”. He referred to CMS’s distribution of products in Australia in the period July 1996 to March 2001. He produced a number of invoices evidencing that supply. He also referred to Molinari’s supplies to Coffee Supplies Australia and to Russo Pty Ltd.

184    Mr Molinari’s evidence that Molinari commenced exporting products to Australia “in or about July 1996” is inconsistent with the evidence before me. Although Lavazza emphasises Mr Molinari’s use of the expression “in or about” (to suggest a degree of imprecision), I do not accept that the expression “in or about” has the plenitude which Lavazza seeks to attribute to it.

185    Cantarella submits that precedence should be given to the statements in, and evidence given through, Mr Molinari’s affidavit read in the Modena proceeding over the evidence given in this proceeding by, and through, Mr Mengoli, Ms Baraccani, Mr Ubertini, and Ms Toledano. Cantarella submits that the Court ought to presume that Mr Molinari, as a director of Molinari, interrogated all relevant electronic records and had “taken great care to produce the best evidence available and to present the best case possible in the Modena proceedings”. Cantarella also submits that if, in giving evidence in the Modena proceeding, Mr Molinari could advance a case that Molinari was the owner of the ORO word mark, then it can be expected that Mr Molinari would have done so. Cantarella argues that the fact that no such case was advanced in the Modena proceeding “must be a complete answer” to the case now advanced by Lavazza and “speaks to the inherent unreliability of the purported business records … which are asserted to evidence sales from Molinari to CMS” before 18 September 1996.

186    Cantarella also contends that the records on which Lavazza relies in respect of the supply of CAFFÈ MOLINARI ORO coffee to CMS are “incomplete”—an apparent reference to the fact that certain invoices cannot be reproduced by Molinari notwithstanding the fact that evidence of the transactions in question is captured within Molinari’s Kronos system.

187    Cantarella points out that Lavazza has not adduced evidence that Molinari has searched its paper records in an attempt to locate invoices with respect to its early supplies of CAFFÈ MOLINARI ORO coffee to Australia. I observe, however, that the supplies in question were, at the time of the hearing, some 25 years ago. Ms Baraccani’s evidence was that while Italian law requires companies to keep hard copies of invoices for a period of not less than five years, much of Molinari’s old paper documentation, including sales invoices, has been destroyed. Cantarella submits that, in the absence of evidence of search and destruction, “the Court must infer that such records exist and were not destroyed”.

188    Notwithstanding these submissions, I accept the evidence of Mr Mengoli, Ms Baraccani, and Ms Toledano. I consider their evidence to be credible and reliable. Despite some unsatisfactory aspects of Mr Ubertini’s oral evidence (to which I have referred), I accept his evidence as well. In particular, I accept his evidence that he first ordered Molinari coffee when he was in Modena in September 1995 and that the first shipment of Molinari coffee arrived at 1/33 Acheson Place by the end of October 1995.

189    Further, I am satisfied that reliance can, and should, be placed on Molinari’s computer records tendered in this proceeding through Ms Baraccani and Mr Mengoli. I do not accept Cantarella’s contention that these records should not be given weight.

190    I reach these findings fully cognisant of the significance that this evidence has to Cantarella’s present rights of ownership of the ORO word mark as a registered trade mark.

191    On the whole, the evidence adduced by Lavazza on this topic is comprehensive and detailed, and has been subjected to testing by Cantarella in the cross-examination of all the witnesses who contributed to the evidence on this topic. Subject to the comments I have made with respect to Mr Ubertini’s testimony, I have not found that evidence to be wanting.

192    I prefer this body of evidence to the statement made in Mr Molinari’s affidavit with respect to the time that Molinari began exporting products to Australia. Based on the other evidence before me, I am satisfied that Mr Molinari’s statement in this regard is mistaken and inaccurate. The statement was made some 16 years after the event. It appears to have been made on the basis of incomplete information provided to him. It may be, as Mr Mengoli suggested, that the change to Molinari’s computer system in the first half of 1996 explains why Mr Mengoli did not provide evidence of the supply of CAFFÈ MOLINARI ORO coffee to Australia prior to July 1996 and why, in his affidavit, Mr Molinari proceeded on the basis that export to Australia only commenced “in or about July 1996”. I do not propose, however, to speculate about that matter.

193    Having regard to all the evidence before me on this issue, I am satisfied that Molinari supplied CAFFÈ MOLINARI ORO coffee to CMS in 1995 and in the first half of 1996. In particular, I am satisfied that:

(a)    each shipment to CMS covered by the invoices dated 18 September 1995, 17 October 1995, and 26 March 1996 (as recorded in Molinari’s Kronos system) was made;

(b)    the products identified by product codes 6091 and 6093 were included in the shipments in the quantities stated in Molinari’s Kronos system, and were packaged in the packaging depicted at [125] above;

(c)    each shipment left Molinari’s warehouse in Italy on the date of the invoice corresponding to that shipment as recorded in Molinari’s Kronos system;

(d)    each shipment was received at CMS’s warehouse premises, in accordance with the invoice corresponding to that shipment, at 1/33 Acheson Place, Coburg, approximately 4 to 7 weeks after the invoice date; and

(e)    the CAFFÈ MOLINARI ORO coffee received by CMS was used, displayed for sale, and supplied by CMS, as described in Ms Toledano’s evidence.

194    For reasons that will become apparent, it is appropriate that I refer to other aspects of Molinari’s supply of CAFFÈ MOLINARI ORO coffee to the Australian market.

195    Espresso Group Pty Ltd (Espresso Group) distributed Molinari products in Australia from about January 2001 until November 2009. It was appointed as Molinari’s exclusive Australian distributor in around March 2003.

196    Modena Trading Pty Ltd (Modena) is Molinari’s current Australian distributor. It was appointed as Molinari’s exclusive Australian distributor in around 2009.

197    I have already referred to copies of invoices (extracted from the Kronos system) that Molinari issued to CMS in the period 24 July 1996 to 16 April 2003 and to Coffee Supplies Australia in the period 9 December 1999 to 4 April 2002 in respect of CAFFÈ MOLINARI ORO coffee. The supplies covered by these invoices included supply of CAFFÈ MOLINARI ORO coffee in the 250 g pack (product code 1525E). These packs are directed to the retail sector of the market, for supermarkets and consumers.

198    There is also a spreadsheet in evidence which contains details of invoices of CAFFÈ MOLINARI ORO coffee supplied to Espresso Group (for the period January 2001 to August 2009) and Modena (for the period October 2009 to September 2021). This spreadsheet evidences that CAFFÈ MOLINARI ORO coffee in the 250 g pack was also supplied to Espresso Group as late as 6 November 2007.

199    At some time before December 2003 (the evidence is no clearer than that) the packaging of the 250 g pack was updated to the following packaging:

200    I am satisfied that the 250 g packs of CAFFÈ MOLINARI ORO coffee (product code 1525E) that Molinari supplied to CMS (invoice dated 25 September 1997) and Coffee Supplies Australia (invoices dated 26 July 2001 and 4 April 2002) were in the form of the packaging depicted at [125] above, and that the 250 g packs of CAFFÈ MOLINARI ORO coffee that Molinari supplied to Espresso Group (invoices dated 11 September 2001, 17 January 2002, 19 February 2002, 18 April 2002, 18 December 2002, 25 March 2004, 12 April 2005, 21 November 2006, and 8 June 2007) were either in the form of the packaging depicted at [125] above or at [199] above.

201    The packaging of the 1 kg pack of CAFFÈ MOLINARI ORO coffee (product code 6091) was also updated to the following:

202    The evidence is unclear as to when this packaging change occurred. The best evidence that Mr Mengoli could give was that the change occurred sometime after the similar change to the packaging of the 250 g pack of CAFFÈ MOLINARI ORO coffee was made.

203    The spreadsheet records numerous supplies, in significant quantities, of CAFFÈ MOLINARI ORO coffee in 1 kg packs to both Espresso Group and then to Modena in the period 22 January 2001 to 22 October 2009. I am satisfied these supplies in the period after December 2003 included supplies to Espresso Group of 1 kg packs (product code 6091) in the form of the packaging depicted at [201] above: see invoices dated 25 March 2004; 27 May 2004; and 15 July 2004 totalling 13,540 packs. (I note that the spreadsheet records numerous supplies, in significant quantities, of CAFFÈ MOLINARI ORO in 1 kg packs to both Espresso Group and then to Modena in the same period under product code 6091E. There is no direct evidence of the packaging for this product code.)

204    Mr Mengoli said that, to the best of his recollection, 1 kg packs of CAFFÈ MOLINARI ORO coffee in the packaging depicted at [201] above were exported to Molinari’s Australian distributors until the packaging was further updated, as follows:

205    I understand from Mr Mengoli’s evidence, and find, that: (a) from May 2010 until June 2011, the packaging used for CAFFÈ MOLINARI ORO coffee supplied into the Australian market in 1 kg packs was the packaging shown immediately above under the heading “From May 2010 Worldwide”, and (b) from 2013, the packaging for this product has been the packaging shown immediately above under the heading “From 2013 to present Worldwide”. However, for the period from June 2011 to sometime in 2013, the packaging of 1 kg packs of CAFFÈ MOLINARI ORO coffee supplied into the Australian market was the packaging shown immediately above under the heading “From June 2011 Australian market only”.

206    The products that were supplied by Molinari to Modena in the period from May 2010 include 1 kg packs of CAFFÈ MOLINARI ORO coffee with product codes 6071, 6077, 6021A, and 6021E. With reference to the images depicted at [204] above, the packaging for these product codes was as follows:

207    The packaging for product code 6021A was created to include the name and address of Modena. The evidence before me is that the packaging is otherwise the same as the packaging used for product code 6021E.

208    The spreadsheet records numerous supplies, in significant quantities, of CAFFÈ MOLINARI ORO coffee to Modena and Espresso Group in 1 kg packs under product code 6071 (in the period 25 March 2009 to 3 March 2011), and to Modena under product codes 6077 (in the period 6 May 2011 to 17 September 2013), 6021E (in the period 17 September 2013 to 29 June 2017), and 6021A (in the period 13 July 2017 to 17 September 2021).

The use of “oro” by other traders in Australia

209    In Annexure B of its third further amended defence and Annexure A of its further amended statement of cross-claim, Lavazza lists other suppliers of coffee in Australia who use, or have used, the words “oro” or “d’oro” in combination with other words in relation to their products.

210    In closing submissions, Lavazza relied on particular uses:

(a)    before 1996;

(b)    before 24 March 2000;

(c)    before 30 September 2013; and

(d)    since 2020.

211    These “uses” include applications made for certain registered trade marks. Although the evidence shows that a number of these applications proceeded to registration, the evidence also shows that some of the registrations have since been removed from the Register of Trade Marks (the Register).

Uses before 1996

212    La Casa is a family business operated through the corporate entity La Casa Del Caffe (Australia) Pty Ltd. La Casa sells its coffee products online (via a website) and through its roastery shop at Minto in New South Wales. La Casa offers a number of different coffee blends under the LA CASA DEL CAFFE brand, including a blend referred to as TAZZA D’ORO. This blend has been continuously roasted and sold by La Casa under that name since 1973.

213    On 8 March 1984, Bean Alliance Group Pty Ltd applied to register a composite mark which included the words GUSTO AROMA E QUALITA and TAZZA D’ORO:

214    The mark was entered on the Register on 10 April 1987 as Trade Mark No. 404924 in respect of “coffee” in Class 30. There is no evidence that the mark was used.

215    On 3 January 1990, Mauro Demetrio SpA applied to register a composite mark which included the words MAURO; CAFFE SCELTA D’ORO ESPRESSO; and COFFEE – KAFFEE - CAFE:

216    The mark was entered on the Register on 22 January 1992 as Trade Mark No. 526225 for “coffee” in Class 30. There is no evidence that the mark was used. The mark was removed from the Register on 20 January 1998 for non-payment of the renewal fee.

217    On 25 February 1992, Cipolla Imports Pty Ltd applied to register a composite mark which included the words ORO MIO:

218    The mark was entered on the Register on 25 October 1993 as Trade Mark No. 573069 for “pasta, flour, sauces, coffee and cocoa” in Class 30. There is no evidence that the mark was used. The mark was removed from the Register on 13 March 2000 for non-payment of the renewal fee.

219    On 9 September 1993, an application to register the mark PIAZZA D’ORO was filed. The mark was entered on the Register on 31 January 1995 in the name of Koninklijke Douwe Egberts BV as Trade Mark No. 611223 for various goods in Class 30, including “coffee”.

Use before 24 March 2000

220    Mokum International Trading Pty Ltd, which trades as Cafexpress, conducts a mobile cafe business that has been selling espresso-based coffee, food and other hot and cold beverages to customers in Victoria, Queensland, and New South Wales. Cafexpress commenced trading in 1996 and has supplied PIAZZA D’ORO coffee exclusively. It conducts its business using vans that have a particular livery which includes a PIAZZA D’ORO logo:

221    When Cafexpress first began supplying PIAZZA D’ORO coffee beverages, the packaging was in this form:

222    The packaging has been changed relatively recently:

Uses before 30 September 2013

223    Lavazza adduced evidence of a webpage for a business called Coffee Lovers. A screenshot of the webpage, taken on 9 December 2002, indicates that, as at that date, the business, which apparently operated in Queensland, supplied coffee, coffee machines, coffee roasters, and coffee accessories through online and telephone sales. The screenshot shows that Coffee Lovers offered a blend of coffee called the COSTA D’ORO blend.

224    On 9 August 2001, Sara Lee/DE NV applied to register the mark TAZZA D’ORO. The mark was entered on the Register on 2 September 2004 as Trade Mark No. 885222 for various goods in Class 30, including “coffee”. There is no evidence that the mark was used. The mark was removed from the Register on 23 February 2012 for non-payment of the renewal fee.

225    On 28 June 2002, Swedish Match Cigars BV applied to register a composite mark which included the words CASA DEL ORO:

226    The mark was entered on the Register on 22 January 2003 as Trade Mark No. 926676 for various goods and services, including “coffee” in Class 30. There is no evidence that the mark was used. The mark was removed from the Register on 28 June 2013 for non-payment of the renewal fee.

227    On 20 November 2002, Coreco (Aust) Pty Ltd applied to register the mark STELLA D’ORO. The mark was entered on the Register on 24 December 2004 as Trade Mark No. 934942 for various goods in Class 30, including “coffee”. There is no evidence that the mark was used.

228    On 28 March 2003, Koninklijke Douwe Egberts BV applied to register a composite mark which included the words PIAZZA D’ORO:

229    The mark was entered on the Register on 29 March 2004 as Trade Mark No. 963739 for various goods, including “coffee” in Class 30. This is the mark used by Cafexpress: see [220] – [221] above.

230    In 2003, Guy Thompson commenced a wholesale coffee distribution business which trades under the name CREMA D’ORO. This name is registered as a business name. A company associated with Mr Thompson—Thompson Management Consulting Pty Ltd (Thompson Management)—is the holder of that name. The business supplies coffee beans to commercial clients, including cafes and restaurants, throughout New South Wales. Some of the cafes include cafes owned or operated by Mr Thompson or one of his companies. The name CREMA D’ORO is also the name given by Mr Thompson to a coffee blend he created. This blend has received a number of awards.

231    On 16 October 2003, Mr Thompson’s wife, Virginia Thompson, applied to register a composite mark which included the words CREMA D’ORO:

232    The mark was entered on the Register on 23 August 2004 as Trade Mark No. 974475 for “coffee” in Class 30, and certain services in Class 43. The mark was removed from the Register on 2 May 2014 for non-payment of the renewal fee. Mr Thompson’s evidence was that the non-payment of the renewal fee was an oversight and that this only came to his attention at the time he prepared his affidavit that was read in this proceeding.

233    Mr Thompson gave evidence that since at least 2007, Thompson Management has operated a website on which the trade mark CREMA D’ORO has been used. Mr Thompson also gave evidence that Thompson Management has used the trade mark on the packaging of CREMA D’ORO coffee beans; on coffee-related products such as espresso machine cleaners, ceramic cups and mugs; on invoices and business stationery, including business cards; and on outdoor café barriers.

234    On 3 March 2004, Sweets of Gold Pty Limited applied to register the mark DOLCI D’ORO. The mark was entered on the Register on 6 December 2004 as Trade Mark No. 991744 in respect of various goods in Class 30, including “coffee”. There is no evidence that the mark was used. The mark was removed from the Register on 17 September 2014 for non-payment of the renewal fee.

235    Lavazza adduced evidence of webpages for a business called Coffee Mio. Screenshots of the webpages, taken on 10 December 2004, 19 July 2008, 3 October 2008, and 25 October 2009, indicate that, as at those dates, the business, which operates in Victoria, supplied coffee of various blends, including blends called MIO D’ORO and BRAZIL ORO. A 500g pack of the MIO D’ORO blend (coffee beans) was purchased from the Coffee Mio website on 4 May 2020 and is in evidence:

236    A business called The Grind, which operates from five locations in Adelaide, supplies a blend of coffee called BRAZILIAN BLU ORO. It has been supplying the blend since 2005. Silvio Lombardi, who is one of the owners and operators of the business, gave evidence that The Grind uses various packaging for its coffee, which features The Grind’s logo and the name of the blend (there are various blends). He gave the following example:

237    A 250g pack of beans said to have been purchased as the BRAZILIAN BLU ORO blend was purchased from the website for the business on 5 May 2020, and is in evidence. However, the pack does not bear the blend name.

238    On 23 August 2005, Primo Products Pty Ltd applied to register a composite mark which included the words PRIMO CAFFE TAZZA D’ORO and 100% ARABICA COFFEE; CAPPUCCINO, AFFAGATO, ESPRESSO LATTE:

239    The mark was entered on the Register on 4 April 2006 as Trade Mark No. 1071434 for “coffee” in Class 30. The mark was removed from the Register on 8 March 2016 for non-payment of the renewal fee.

240    Lavazza has adduced evidence of screenshots of webpages for a business called Complete Coffee Pty Ltd, which operates in New South Wales, and a business called Primo Caffe. The webpages advertise the Primo Caffe coffee product range, including a blend called TAZZA D’ORO. A number of the screenshots of the webpages are undated. However, some are dated (23 August 2009; 19 February 2011; 17 March 2012; 22 March 2012; 21 June 2012; 17 August 2012; 18 August 2012; 13 April 2013; and 11 August 2013) and show the TAZZA D’ORO pack. An example is:

241    A 1 kg pack of TAZZA D’ORO (coffee beans) was purchased from the Primo Caffe website on 4 May 2020. An image of the product is in evidence:

242    On 27 March 2007, Miscela D’Oro SpA applied to register a composite mark which included the words MISCELA D’ORO:

243    The mark was entered on the Register on 11 February 2008 as Trade Mark No. 1200041 in respect of various goods in Class 30, including “coffee”.

244    Caffè Trombetta (Australia) Pty Ltd (Caffè Trombetta Australia) commenced business in Melbourne in 2008 supplying products and services to the Melbourne café, restaurant and European grocery market. The products it supplies are manufactured by the Italian company Caffè Trombetta SpA, which was established in Rome in 1890 by Vittorio Trombetta.

245    Caffè Trombetta Australia sells a range of coffee products including coffee beans and ground coffee in six different blends. One of the blends is CAFFÈ TROMBETTA ORO. Caffè Trombetta Australia has been supplying this blend since 2008. It is one of the company’s top three selling blends by volume. The blend is sold as coffee beans, ground coffee, and coffee capsules.

246    The packaging for CAFFÈ TROMBETTA ORO coffee beans is:

247    The packaging for CAFFÈ TROMBETTA ORO ground coffee is:

248    The packaging for CAFFÈ TROMBETTA ORO coffee capsules is:

249    A 250g pack of CAFFÈ TROMBETTA ORO ground coffee was purchased on 4 May 2020. An image of the product is in evidence:

250    A 1 kg pack of CAFFÈ TROMBETTA ORO coffee beans was purchased on 8 December 2020. An image of the product is in evidence:

251    There is also evidence before me of a package in the same form having been purchased much earlier on 12 April 2011.

252    On 27 August 2010, Sara Lee Coffee and Tea France applied to register the mark L’ORO ESPRESSO. The mark was entered on the Register on 22 July 2011 as Trade Mark No. 1394827 for various goods in Class 30, including “coffee” and “packaged coffee”. The registration was cancelled on 8 September 2011 at the request of the International Bureau.

253    As at 28 March 2011, Caffe D’Italia Pty Ltd supplied a blend of coffee in Australia called CAFÉ MAURO ORO. A 250g pack of CAFÉ MAURO ORO ground coffee was purchased on this date. An image of the pack, as purchased, is in evidence:

254    As at 28 March 2011, Crown Coffee International Pty Ltd (which traded as Casa & Bottega) supplied a blend of coffee in Australia called CAFÉ EL MUNDO MOKA ORO.

255    As at 28 March 2011, Global Coffee Solutions Pty Ltd supplied a blend of LÁ ZUMBA coffee in Australia called ZUMBA ORO. A 1 kg bag of LA ZUMBA ZUMBA ORO was purchased on this date. An image of the pack, as purchased, is in evidence:

256    As at 30 March 2011, Casa Italia Gourmet Food and Wines supplied a blend of CAFFE INCAS coffee in Australia called ORO GOLD BLEND. A 1 kg pack of ORO GOLD BLEND was purchased on this date. An image of the pack, as purchased, is in evidence:

257    As at 28 April 2011:

(a)    a business called Espresso Essential offered (on its website) to supply coffee beans in Australia called EL PRIMO D’ORO;

(b)    Cadonite Pty Ltd offered (on its website) to supply coffee beans roasted by Miscela d’Oro SpA;

(c)    a business called Mokador Direct offered (on its website) to supply in Australia a blend of Mokador brand ground coffee called ORO. A 250g pack of this product was purchased on 28 April 2011. An image of the product, as purchased, is in evidence. The packaging itself does not appear to include the word ORO:

(d)    P & T Basile Pty Limited (trading as Basile Imports) offered (on its website) to supply in Australia a blend of Caffe Camardo brand coffee called ESPRESSO ORO;

(e)    Arte Antica International Pty Ltd (trading as Coffee n’ Coffee) offered (on its website) to supply in Australia a blend of Caffe Per Bar brand coffee called GOCCIA D’ORO.

258    As at 24 May 2011, Gulli Food Distributors Pty Ltd offered (on its website) to supply in Australia a blend of Caffe Giuglielmo brand coffee called ESPRESSO ORO.

259    On 29 September 2011, Camardo SpA applied to register a composite mark which included the words CAFFÈ CAMARDO and ESPRESSO ORO:

260    The mark was registered on 13 October 2014 as Trade Mark No. 1451349 for goods in Class 30, including “coffee” and “coffee beans”. There is no evidence that the mark was used.

261    Lavazza adduced evidence of webpages for a business called Caffè Bianchi. Screenshots taken as at 20 April 2013 and 9 May 2013 show that Caffè Bianchi offered to supply a blend of coffee called MISCELA D’ORO.

Uses since 2020

262    Lavazza adduced evidence of a number of uses in Australia in the period May to June 2020 of “oro” and “d’oro” on the packaging of the coffee of other traders. Typically, but not universally, the use of “oro” or “d’oro” was in conjunction with other words, such as “tazza”, “costa”, “bella”, “crema” and “nero”, or with respect to bean type, such as “Arabica”. In each case, the words “oro” or “d’oro” are clearly visible on the packaging.

263    I do not propose to descend to the detail of this evidence. In light of the conclusions to which I have come, I do not regard this evidence to be of probative value to the issues raised in this proceeding.

Earlier litigation involving the ORO word mark

264    This case takes place against the background of earlier litigation which Cantarella brought against Modena for infringement of the 098 mark and another registered trade mark—Trade Mark No. 878231 (the 231 mark) comprising the words CINQUE STELLE in class 30 for “Coffee, coffee essences and coffee extracts; coffee substitutes; and extracts of coffee substitutes’ coffee-based drinks; tea, tea extracts and tea-based drinks; cocoa, cocoa-based preparations and drinks” (the Modena proceeding). Cantarella advanced other causes of action against Modena (for contravention of the Trade Practices Act 1974 (Cth) and the Australian Consumer Law, and for passing-off). It is not necessary for me to dwell on the fate of these causes of action.

265    Cantarella established infringement of the two marks: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8; 299 ALR 752 (Cantarella (PJ)). Modena failed in its defence that it had not used the two marks as trade marks and had only used the words “oro” and “cinque stelle” in good faith to indicate the characteristics of the coffee products the subject of the infringements.

266    Modena also failed in its cross-claim that the registrations of the two marks should be cancelled on the ground that, with reference to s 41 of the Act in its then form, the marks were not capable of distinguishing Cantarella’s goods from the goods of other persons. (It is to be understood that, when referring to Cantarella’s “goods” and the “goods” of other persons, I am referring to the registered goods.)

267    Modena also brought a cross-claim seeking an order that the two marks be removed from the Register on the ground of non-use. It is not necessary for me to dwell on this aspect of the cross-claim beyond noting that it failed.

268    In relation to its allegation that the two marks were not capable of distinguishing Cantarella’s goods from the goods of other persons, Modena contended that, as words, “oro” and “cinque stelle” were not inherently adapted to distinguish Cantarella’s goods.

269    One plank in Modena’s case was that, based on data sourced from the Australian Bureau of Statistics, there were many Italian speakers or persons of Italian ancestry in Australia who would understand that “oro” and “cinque stelle” mean, respectively, “gold” and “five stars”.

270    Modena argued that, just as the English translations of the words—“gold” and “five stars”, respectively—would not be registrable as trade marks for the registered goods, so too the Italian words would not be registrable. This was because both the Italian words, and their English translations, were laudatory terms and, therefore, descriptive expressions that were incapable of indicating a connection in the course of trade between Cantarella and those goods.

271    At [117] and [118], the primary judge held:

117    It may be clear enough to an Italian speaker that Cinque Stelle signifies five stars and that Oro signifies some connection with gold. However, neither Cinque Stelle nor Oro means anything in English. While an educated English speaker, with some knowledge of Romance languages, or Latin, may well be able to deduce those meanings, I am not persuaded that any more than a very small minority of English-speaking people in Australia would understand the allusions made by Cinque Stelle and Oro. Modena relies on the census evidence summarised above in support of its proposition that there are sufficient numbers of Italian speakers in Australia to render the common meaning of Cinque Stelle and Oro sufficiently well understood in Australia. I am not persuaded, on the material before me, that the Italian language is so widely spread that the conclusion should be drawn that Cinque Stelle and Oro would be generally understood in Australia as having those meanings.

118    I consider that both Cinque Stelle and Oro are sufficiently inherently adapted to distinguish goods of Cantarella from goods of other persons. That is to say, the Italian words are not so obvious to ordinary English speaking persons in Australia that Cinque Stelle and Oro have a specific meaning. I am satisfied that Cinque Stelle and Oro are capable of distinguishing Cantarella’s goods from the goods of other persons. Accordingly, Modena has not established a basis for cancelling either of the trade marks under s 88 of the Trade Marks Act.

272    Another plank in Modena’s case (as to why the two marks were not inherently adapted to distinguish Cantarella’s goods from the goods of other persons) was summarised by the primary judge (at [103]) as follows:

103    Alternatively, Modena also relies on … the proposition that there is significant and extensive use of Oro on the packaging of coffee products by persons other than Cantarella, thus indicating that Oro is not inherently adapted to distinguish the Italian-style coffee products of Cantarella. Modena says that Oro and Cinque Stelle are words that other traders might, without improper motive, want to use as varietal indicators on their Italian-style coffee products. It says that a broad range of businesses use five star or 5 star in their business names. The word oro is used extensively in relation to coffee by other traders. Accordingly, traders such as Modena should be free to use gold and five star, and the Italian translations of those words.

273    At [106], the primary judge noted:

106     Modena says that the evidence demonstrates that Oro and Cinque Stelle are commonplace words in marketing generally and are commonplace words in the marketing of Italian-style coffee in Australia. Molinari was using the words before Cantarella and has used them continuously in Italy since 1996 and 1998 respectively. Therefore, Modena says, s 41(5) simply cannot have any application.

274    At [114], the primary judge again referred to Modena’s contention based on the use of “oro” and “cinque stelle” by other suppliers and distributors of coffee products in Australia. This reference was made in the context of noting, as well, Modena’s contention about the number of Italian speakers in Australia or persons of Italian ancestry who would understand “oro” to mean “gold” and “cinque stelle” to mean “five stars”. It is clear that, in reaching his conclusion at [118]—that both marks were capable of distinguishing Cantarella’s goods from the goods of other persons—the primary judge rejected both of Modena’s contentions. I draw attention to this finding because, in the present case, Lavazza submits that the primary judge’s analysis of s 41 in the Modena proceeding did not deal with the question of whether “oro” lacked capacity to distinguish “due to its commonality rather than its descriptiveness”. I do not accept that submission: see [409] below.

275    At [195] – [196], the primary judge concluded that injunctions against future trade mark infringement should lie, but that on the state of the evidence, damages for infringement should not be awarded. His Honour noted that no claim for an account of profits had been pressed. His Honour also concluded that Modena’s cross-claim challenging the validity of the registrations in suit should be dismissed.

276    Modena appealed to a Full Court of this Court against the dismissal of its cross-claim. The Full Court allowed the appeal: Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110; 215 FCR 16. The primary judge’s findings of fact were not disturbed. However, at [49], the Full Court considered that, in rejecting Modena’s contention that, as words, “oro” and “cinque stelle” were not inherently adapted to distinguish Cantarella’s goods from the goods of other persons, the primary judge had adopted an approach that was “not apt to the present case”.

277    It is important to note that, in reaching that conclusion, the Full Court accepted that the general principle concerning whether a word mark is inherently adapted to distinguish is to be found in Kitto J’s statement in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514 (Clark Equipment):

[T]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives—in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess—will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

278    In doing so, the Full Court rejected Modena’s contention that the correct test was to be found in an arguably wider statement of principle by Kitto J in FH Faulding & Co Ltd v Imperial Chemical Industries of Australia & New Zealand Ltd (1965) 112 CLR 537 (Faulding) which omitted reference to the following important parenthetical words used in Clark Equipment (see the quote immediately above):

… in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess …

279    In rejecting Modena’s contention, the Full Court noted (at [67]) that Full Courts of this Court have consistently treated Kitto J’s statement in Clark Equipment as stating the general principle that informs the inquiry as to whether a word mark is inherently adapted to distinguish.

280    The Full Court noted (at [82]) that, in determining whether “oro” and “cinque stelle” were sufficiently inherently adapted to distinguish Cantarella’s goods from the goods of other persons, the primary judge had posited whether the Italian words were “commonly understood” or “generally understood” in Australia by “ordinary English speaking persons” as meaning “gold” and “five stars” respectively. The Full Court reasoned (at [83]) that this approach was “not appropriate”, and revealed “demonstrable error”, where “common Italian words descriptive of quality” are in issue.

281    At [85], the Full Court continued:

85    There is no necessity to approach the enquiry from an Anglocentric perspective in the Australian context which has rich cultural and ethnic diversities within its population. Adopting the language of Kitto J, to accommodate this reality in the marketplace, one may consider the relevant words against the collective diverse heritage. Viewed in that way, the “common heritage” here included that of traders in coffee products sourced from Italy. Such traders may well be Italian or local importers. They may be local distributors who have in mind the large Italian speaking population in Australia as well as other Australians who, when it comes to coffee, want something with an Italian look and feel. Much of this country’s coffee heritage in its language has its provenance in the Italian language e.g. caffè latte; cappuccino; affogato; caffè machiatto and espresso. It is evident that pure coffee in Australia is often associated with Italy and Italian coffee products.

282    Noting that distinctiveness is a question of fact involving contextual considerations, the Full Court said (at [88]):

88    It is unnecessary, in our opinion, that consumers know what the words mean in English. However, given that Italian is the second most spoken language in Australia, self-evidently many people in this country would in fact know what the words meant. Moreover, as the primary judge noted (at [86]), Cantarella explains on its packaging that “Oro” means “gold”. Many Italian speakers would have understood the words Cinque Stelle and Oro as common Italian laudatory and therefore descriptive words.

283    The Full Court concluded (at [103]) that, by applying Clark Equipment “in a way which is apt to this particular case”, “oro” and “cinque stelle” were not inherently adapted to distinguish Cantarella’s goods from the goods of other persons.

284    On the day that judgment was given by the Full Court (30 September 2013), Cantarella filed its application for the 290 mark. It provided evidence of its use of the ORO word mark. The application for the 290 mark proceeded to registration with an endorsement that evidence and/or other circumstances were provided under s 41(4) of the Act.

285    Cantarella was granted special leave to appeal to the High Court from the Full Court’s judgment. On appeal, the High Court, by majority (French CJ, Hayne, Crennan, and Kiefel JJ), found that, on the evidence that had been adduced in the proceeding, the 098 mark and the 231 mark were inherently adapted to distinguish Cantarella’s goods from the goods of other persons. Thus, the registrations of the 098 mark and the 231 mark were valid: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337. In the following summary, I will concentrate on the majority’s findings and conclusions with respect to the 098 mark.

286    The majority recorded that the evidence at trial showed that coffee products were advertised, offered for sale, and sold by other traders in the coffee industry using composite marks that included “oro” as an Italian word, including in the form “d’oro”. The majority noted that “oro” is an Italian word meaning “gold”. The majority noted that “oro” is also a Spanish word meaning “gold”—both languages (being Romance languages) having derived the word “oro” from the Latin “aurum” (meaning, “gold”).

287    At [15], the majority said:

15    As in English, “gold” is used in Italian as a noun and has adjectival forms. Therefore, both the word “oro” and the form “d’oro” readily combine with other words to form composite trade marks, as in Cantarella’s registered trade marks “MEDAGLIA D’ORO” and “CHICCO D’ORO”. This can also be seen in examples of registered trade marks of numerous other registered proprietors in evidence at trial – “LAVAZZA QUALITA ORO plus device”, “CDO CASA DEL ORO plus device”, “PIAZZA D’ORO plus device”, “TAZZA D’ORO plus device”, “STELLA D’ORO” and “CREMA D’ORO plus device” – which are registered in respect of a variety of goods, including coffee. It was not contended that these registered composite marks, which included foreign words, were deceptively similar, whether visually, aurally or semantically.

288    After surveying various provisions of the Act, the majority said (at [22]):

22    The Act effected significant changes to Australian trade mark law: earlier legislation had specified the kinds of trade marks which were registrable; for the first time in Australia, the Act only specified the kinds of trade marks which were not registrable. However, it was common ground that the provisions of the Act which specify the applications for registration which must be rejected cannot be understood fully without some reference to the interpretation of provisions in the Trade Marks Act 1905 (Cth) (the 1905 Act) and the Trade Marks Act 1955 (Cth) (the 1955 Act) which specified the kinds of trade marks which were registrable. This is because the statutory language which gives rise to the question on this appeal has a well-understood provenance.

289    The majority noted Kitto J’s statement of principle in Clark Equipment and observed that the parenthetical words used by Kitto J were not only a particular focus of the argument before the Full Court, but a matter of dispute that was reiterated in the High Court.

290    At [28] and [29], the majority said:

28    Cantarella relied on the emphasised passage to support the proposition that the inherent adaptability of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is, the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods, characterised by Cantarella as “the target audience”.

29    Modena asserted that the emphasised language was not essential to the test because Lord Parker of Waddington in Registrar of Trade Marks v W & G Du Cros Ltd stated the test in terms of the likelihood that other traders might legitimately desire to use the word in connection with their goods.

(Footnote omitted.)

291    The majority then referred to the legislative antecedents in the United Kingdom and in Australia to the present Act, in particular s 9(5) of the Trade Marks Act 1905 (UK) (on which s 16 of the Trade Marks Act 1905 (Cth) was based). Under that provision, a trade mark was registrable if it contained or consisted of at least one of certain “essential particulars” or was “any other distinctive mark”. A “distinctive” mark was defined to be a mark that was “adapted to distinguish the goods of the proprietor of the trade mark from those of other persons”. In determining whether a trade mark was so adapted, the extent to which a mark, in actual use, had been rendered “in fact distinctive” for the goods with respect to which it was registered or proposed to be registered, could be taken into account.

292    The majority then discussed the “trio of cases” constituted by In re Joseph Crosfield & Sons Ltd [1910] 1 Ch 130; In re California Fig Syrup Co [1910] 1 Ch 130; and In re H N Brock & Co Ltd [1910] 1 Ch 130. Their Honours also discussed In re R J Lea Ltd’s Application [1913] 1 Ch 446 and Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 (Du Cros). The majority quoted the statement in Lord Parker’s speech in Du Cros that the determination of whether a trade mark is “distinctive” for the purposes of s 9(5) of the Trade Marks Act 1905 (UK) should:

largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.

293    This is referred to as Lord Parker’s “other traders” test.

294    The majority identified two significant matters that emerged from these cases.

295    First, the majority noted (at [36] – [40]) that under s 9(5) of the Trade Marks Act 1905 (UK) the ordinary signification of a word affected whether the mark was registrable as a trade mark. If the ordinary signification of a word was: (a) directly descriptive of the goods; or (b) a laudatory epithet, used as an adjective in respect of the goods; or (c) a geographical name recognised as a place of manufacture or sale of the relevant goods; or (d) the phonetic equivalent of words that were directly descriptive of the goods; or (e) a mere surname (i.e., not represented in some distinctive style) that other traders might wish to use, then the word was not adapted to distinguish the goods of the proprietor from those of other persons.

296    In Du Cros it was held that the same result ensued under s 9(5) of the Trade Marks Act 1905 (UK) if the mark consisted of letters of the alphabet simply used as initials that other traders, without improper motives, might wish to use.

297    Secondly, the majority noted (at [41] – [44]) that, in considering whether a word mark was “adapted to distinguish” under s 9(5), it had been established that regard should be had to: (a) “the possible impairment of the rights of honest traders to do that which, apart from the grant of a monopoly, would be their natural mode of conducting business”; and (b) “the wider point of view of the public”.

298    The majority then noted (at [45]) that establishing the “ordinary signification” of a trade mark consisting of a word was just as critical for a word that is found in a dictionary of a foreign language. After discussing a number of cases, the majority said (at [48]):

48    These authorities show that it is not the meaning of a foreign word as translated which is critical, although it might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.

299    Further, the majority noted (at [50] – [52]) that there is a practical difference between a word mark that makes some “covert and skilful illusion” to the goods and a word having a “direct reference” to goods—the former being prima facie registrable (for example, the words TUB HAPPY in respect of cotton garments (Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 (Mark Foy’s)) or KIKU (a phonetic representation of the Japanese for chrysanthemum) in respect of perfume (Kiku Trade Mark [1978] FSR 246) and the latter being prima facie not registrable (for example, DIABOLO for “tops” (i.e., the toys) because it applied to a well-known game in England called “the devil on two sticks”: Philippart v William Whiteley Ltd [1908] 2 Ch 274).

300    The majority then discussed the provenance of the concept of a mark being “inherently adapted to distinguish” (the concept adopted in s 41 of the Act and s 26(2)(a) of the Trade Marks Act 1955 (Cth)) and the relationship of that concept to the ordinary signification of a word that is sought to be registered as a trade mark. The majority discussed Kitto J’s judgment Faulding before returning to his Honour’s statement of general principle in Clark Equipment which (at [57]) the majority described as an elaboration of the principle derived from Lord Parker’s speech in Du Cros. The majority also discussed Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417, where Gibbs J applied Kitto J’s statement of general principle.

301    At [59], the majority said:

59    The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

302    The majority said (at [63]) that the Full Court considered, correctly, that the applicable principle to apply, in interpreting s 41(3) of the Act, was Kitto J’s statement in Clark Equipment.

303    At [70] and [71], their Honours said:

70    In accordance with the principles established in Mark Foy’s and restated in Clark Equipment, Faulding and Burger King, determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.

71    As shown by the authorities in this Court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.

(Footnotes omitted.)

304    The majority found (at [72]) that the primary judge’s consideration of the ordinary significations of the words “oro” and “cinque stelle” accorded with settled principles, whereas the Full Court’s rejection of what it called an “Anglocentric” approach revealed a misunderstanding of the expression “ordinary signification” as it had been used in Australia and in the United Kingdom since at least 1905.

305    At [73] – [77], the majority held:

73    Both Modena in argument and the Full Court in its reasons misunderstood Lord Parker’s reference in Du Cros to the desire of other traders to use the same or similar mark in respect of their goods. Lord Parker was not referring to the desire of traders to use words, English or foreign, which convey an allusive or metaphorical meaning in respect of certain goods. What Lord Parker’s “other traders” test means in practice is well illustrated by the fate of the marks considered in Faulding, Clark Equipment and Burger King. Like “TUB HAPPY” in respect of cotton goods, “ORO” and “CINQUE STELLE” were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods.

74    The evidence, relied on by Modena at trial, did not show that “ORO” and “CINQUE STELLE” should not be registered as trade marks (and should be removed from the Register as trade marks) because their registration would preclude honest rival traders from having words available to describe their coffee products either as Italian coffee products or as premium coffee products or as premium blend coffee products.

75    The evidence led by Modena purporting to show that rival traders used (or desired to use) the word “oro” to directly describe their coffee products showed no more than that the word “oro” or the form “d’oro” had been employed on internet sites and coffee product packaging in respect of coffee products in a range of composite marks featuring Italian words which ostensibly were distinguishable aurally, visually and semantically. Further, the presence on the Register, before Cantarella’s trade mark “ORO” was registered, of another proprietor’s composite mark “LAVAZZA QUALITA ORO plus device” and Cantarella’s own composite mark “MEDAGLIA D’ORO” in respect of coffee products fell well short of proving that the word “oro”, standing alone, is understood in Australia by persons concerned with coffee products to be directly descriptive of the character or quality of such goods.

76    The evidence led by Modena to show that some traders in Australia used the expression “five star” on packaging of coffee and many traders used “five star” in respect of a range of services including restaurant and accommodation services also fell well short of proving that “cinque stelle” is understood in Australia by persons concerned with coffee products to be directly descriptive of the character or quality of such goods.

77    Modena’s complaint that the primary judge insufficiently considered the desires of rival traders to use the words “oro” or “cinque stelle” to directly describe their coffee goods was premised on a misconception that such was demonstrated by the evidence. The primary judge was right to reject Modena’s submission, based on the evidence, that honest traders might legitimately wish to use the words to directly describe, or indicate, the character or quality of their goods.

306    The reference in this quotation to “LAVAZZA QUALITA ORO plus device” is notable. It is a reference to the Lavazza device mark (depicted at [43] above) registered in the name of LL SpA.

307    In his dissenting judgment, Gageler J (at [80]) expressed his agreement with the Full Court’s “construction and application of s 41” of the Act. His Honour reasoned (at [84]) that the concept of a mark being inherently adapted to distinguish, which originated from s 9(3) of the Trade Marks Act 1938 (UK) and was first introduced in Australia in s 26(2)(a) of the Trade Marks Act 1955 (Cth), has always been treated as giving expression to the public policy that a trader ought not be allowed to obtain, by registration, a monopoly in what other traders may legitimately desire to use: Chancellor, Masters and Scholars of the University of Oxford v Registrar of Trade Marks (1990) 24 FCR 1. His Honour observed (at [85] – [86]) that this public policy was expressed in Lord Parker’s speech in Du Cros and was given “succinct authoritative expression” by Kitto J in Faulding.

308    In this connection, his Honour said (at [94]) that the test in Faulding:

is not exhausted by an inquiry into the intrinsic capacity of a word or other sign to acquire connotations which would in fact distinguish the goods or services of an applicant for registration from the goods or services of rival traders. … [T]he test is not exhausted by an inquiry into how the mark might be expected to be understood in Australia by “ordinary persons” or by actual or potential purchasers of goods or services of the relevant kind. The relevant perspective is, rather, that of another trader, located in Australia or elsewhere, who might desire to use the word or other sign in the ordinary course of its business.

309    Gageler J distinguished the “Faulding test” from the “Tub Happy test”, the latter being a reference to the decision in Mark Foy’s which concerned the criterion in s 16(1)(d) of the Trade Marks Act 1905 (Cth) (as amended by the Trade Marks Act 1912 (Cth)) that permitted registration of a mark containing or consisting of a word or words “having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or surname” (emphasis added). As to that criterion, Dixon CJ in Mark Foy’s said (at 195):

… The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.

310    At [98], Gageler J said:

98    What is significant for present purposes is that a conclusion, based on the application of the Tub Happy test, that a word does not have direct reference to the character or quality of goods or services, is not itself a conclusion that the word is inherently adapted to distinguish the goods or services of the applicant from the goods or services of other persons. In the case of an ordinary English word, the considerations affecting each conclusion will often be similar. In the case of a technical word or a word in another language, other considerations will almost certainly arise.

311    At [100], his Honour said:

100    The Full Court held that his Honour erred in equating the F H Faulding test with the Tub Happy test, and in applying the latter to the exclusion of the former. That conclusion was correct. The central contention of the appellant (Cantarella) in this Court is that the two tests are the same. They are not.

    (Footnote omitted.)

312    At this juncture, the following matters should be emphasised.

313    First, the appeal to the High Court in the Modena proceeding squarely raised the legal question: what is the correct test to be applied when determining, for the purposes of s 41 of the Act, whether a word mark is inherently adapted to distinguish? This was the same question raised in the intermediate appeal before the Full Court. As the majority in the High Court noted at [28] – [29], the battle lines were drawn up between the principle stated by Kitto J in Clark Equipment and the arguably broader principle stated by Lord Parker in Du Cros.

314    Secondly, the High Court held, by majority, that the correct test is the principle stated by Kitto J in Clark Equipment, including where the word mark is a foreign word. The Full Court reached the same conclusion, noting (at [67]) that Full Courts of this Court have consistently treated Clark Equipment as setting out the general principle. What emerges from the majority judgment in the High Court is that the Full Court in the Modena proceeding had misunderstood, and therefore misapplied, what Kitto J had said in Clark Equipment.

315    Thirdly, while Kitto J’s statement of general principle in Clark Equipment is derived from Lord Parker’s speech in Du Cros, it is an elaboration of what Lord Parker had said. The majority in the High Court in the Modena proceeding made clear that, in Australian trade mark law, Kitto J’s elaboration states the correct principle, not the arguably broader principle stated by Lord Parker.

316    Fourthly, and relatedly, the majority in the High Court rejected the case advanced by Modena, which was that, having regard to Lord Parker’s speech in Du Cros, the test of whether a word mark is inherently adapted to distinguish is the broadly-stated likelihood that other traders might legitimately desire to use the word in connection with their own goods.

317    Fifthly, in applying Kitto J’s statement of principle in Clark Equipment, the first step, which is crucial, is to establish the ordinary signification of the word or words (for which registration, as a trade mark, is or are sought) to all persons in Australia concerned with the goods. This involves a finding of fact based on the evidence before the Court.

318    As to the decision in Clark Equipment, it is important to note that Kitto J was specifically addressing the requirements of s 26 of the Trade Marks Act 1955 (Cth) in the context of s 25 of that Act.

319    Section 25 provided for the registration of a mark in (former) Part B of the Register if the mark was distinctive or, if not distinctive, if the mark was capable of becoming distinctive of the goods for which registration was sought, being goods with which the trade mark applicant was or might be connected in the course of trade.

320    At the relevant time, s 26(1) provided that a trade mark was not distinctive of the goods of a person unless it was “adapted to distinguish” the goods with which the applicant was or might be connected in the course of trade from goods which did not have that connection. Section 26(2) provided the following criteria for distinctiveness:

In determining whether a trade mark is distinctive, regard may be had to the extent to which—

(a)    the trade mark is inherently adapted so to distinguish; and

(b)    by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish.

321    In Clark Equipment (at 513), Kitto J said that s 26(2) dissected the expression “adapted to distinguish” in s 26(1) into two inquiries—an inquiry concerning acquired distinctiveness (s 26(2)(b)) and an inquiry concerning “the inherent fitness of the mark for the purpose of distinguishing the applicant’s goods from those of other persons” (s 26(2)(a)). In that context, Kitto J said:

It is undeniable that a mark which, considered by itself, would seem unadapted to that purpose, because its natural signification is against a notion that goods to which it is applied are the goods of the applicant and of no one else, may yet come by actual use or by virtue of special circumstances to be so closely associated with the applicant's goods in the minds of the relevant public that its apparently disqualifying signification is effectually obscured, and distinctiveness in fact is thus achieved. But although such a measure of practical success with the mark may well provide a sufficient foundation for a passing-off action, the Trade Marks Act does not accept it as necessarily sufficient for the special protection which it affords to registered trade marks. True, the Act does not say that a mark which has any degree of natural unsuitability to distinguish an applicant’s goods shall be refused registration notwithstanding that it has acquired a degree of distinctiveness in relation to his goods; but it does require that if the mark is to any extent inherently unadapted for the purpose that fact shall be weighed in the scales against the degree of acquired distinctiveness in determining the ultimate question whether the mark is registrable as being “adapted to distinguish” the applicant's goods.

322    Three matters should be noted in this part of Kitto J’s judgment. First, his Honour was addressing, directly and as a matter of principle, the notion of a mark being “inherently adapted to distinguish” within the meaning of s 26(2)(a) as a step on the path to determining whether a mark is “adapted to distinguish” (within the meaning of s 26(1)). Secondly, his Honour saw that notion as referring to the “inherent fitness” of a word mark for registration as a trade mark. Thirdly, his Honour identified that a word’s “inherent fitness” for registration as a trade mark is tied to its “natural signification”.

323    It was in this context that Kitto J referred to, and quoted from, Lord Parker’s speech in Du Cros. By doing so, his Honour recognised the need, when considering whether a word is inherently adapted to distinguish, to take account of the desire of other traders to use the word in relation to the goods in respect of which the mark is registered or is sought to be registered. However, his Honour did not see this as some desire considered in the abstract. It was a desire conditioned on a particular need to use the word—namely, for its “natural” signification in relation to those goods.

324    Thus, when Kitto J came to apply those principles to the case at hand (an application for the registration of MICHIGAN—a word having a prima facie geographical signification in respect of particular types of earth-moving equipment) his Honour said (at 514 – 515):

It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur: see per Lord Simonds in the Yorkshire Copper Works Case. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as “North Pole” in connexion with bananas: A. Bailey & Co. Ltd. v. Clark, Son & Morland Ltd. (the Glastonbury Case) (see also the Livron Case), or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification. Cf. in the case of a descriptive word: Dunlop Rubber Co.’s Application. But the probability that some competitor, without impropriety, may want to use the name of a place on his goods must ordinarily increase in proportion to the likelihood that goods of the relevant kind will in fact emanate from that place. A descriptive word is in like case: the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer. This may seem at first blush a paradox, as Lord Simonds and Lord Asquith suggested in the Yorkshire Copper Works Case, but surely not when Lord Parker's exposition of the subject is borne in mind.

(Footnotes omitted.)

325    Kitto J reasoned (at 515 – 516) that the name of a place or area can hardly ever be “adapted to distinguish” when used by itself, or with no addition except a description or designation of the goods, if goods of that kind are produced at that place or in that area, or if it is reasonable to suppose that the goods may be produced in that place or in that area. His Honour referred in particular to words that are the names of large and important industrial towns and districts, as well as smaller towns and districts if they are a seat of manufacture of the goods for which registration is sought. He concluded that MICHIGAN was such a word in respect of the goods for which registration was sought.

326    Subsequently, Kitto J undertook the same analysis in Faulding when considering the validity of the registration of BARRIER for “chemical substances prepared for use in medicine and pharmacy”. His Honour said (at 554):

… the word Barrier, unexceptionable though it may be as a trade mark for other kinds of chemical substances prepared for use in medicine and pharmacy, is, in its application to skin protective creams, one of that class of words which are “so apt for normal description that no trade mark use and momentary distinctiveness can justify a permanent monopoly”: Dunlop rubber Co.’s Application.

327    In explaining this conclusion, Kitto J observed (at 555) that it would not only be difficult but “surely impossible” to find that a word mark was distinctive when its “descriptiveness” referred to the distinguishing characteristic of a whole class of goods of which the trade mark owner’s goods are examples.

328    Although the mark in question had been registered under the Trade Marks Act 1905 (Cth), Kitto J’s analysis was directed also to the requirement of s 26(1)(a) of the Trade Marks Act 1955 (Cth) and hence whether BARRIER was inherently adapted to distinguish.

329    As to this, Kitto J said (at 555):

But for the evidence, it might have been said that the word, though inherently suited to be used adjectivally for the purpose of referring to the distinguishing characteristic of skin protective creams generally, is not one which would spring instantly to the mind of a person who wanted a word for the purpose but had never known Barrier to be so employed. This might have been said with the general principle in mind that 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 which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods: Registrar of Trade Marks v W. & G. Du Cros Ltd; Eclipse Sleep Products Inc. v The Registrar of Trade Marks; Clark Equipment Co. v Registrar of Trade Marks. But the evidence shows clearly, and it satisfied the learned primary Judge, that Barrier has long appealed to persons in industry, in pharmacy and in allied occupations as meeting their need for a word to describe succinctly and yet exactly the essential characteristic of protection which distinguishes the whole of the relevant class of creams.

(Footnotes omitted).

330    Kitto J then considered various aspects of the evidence, before concluding (at 556):

The conclusion seems inevitable that at least by the year of the initial registration of the appellant’s trade mark (1943) the word Barrier had caught on as a word peculiarly apt, according to its ordinary signification, for descriptive use in connexion with skin protective creams, so that any trader in such creams would be very likely indeed, in the ordinary course of business and without any improper motive, to desire to use the word in order to distinguish such creams in general from creams intended for other purposes.

(Emphasis added).

331    Kitto J’s analysis in Faulding makes plain that, when determining whether a word mark is inherently adapted to distinguish, any consideration of the desire of other traders to use the word for the goods or services in question is anchored in the word’s ordinary signification in respect of those goods or services. Hence, the emphasis given by the majority in the High Court in the Modena proceeding to the importance of determining, as a first step, the ordinary signification of the word.

The case on infringement

Introduction

332    The case on infringement is based on s 120(1) of the Act:

(1)     A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

Note 1:    For registered trade mark see section 6.

Note 2:    For deceptively similar see section 10.

Note 3:    In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.

333    Cantarella’s case on infringement concerns the packaging of LAVAZZA QUALITÀ ORO coffee sold in Australia incorporating the “Perfect Pack” revisions to which I have referred. In its evidence and submissions, Cantarella refers to this packaging as the “2016 Product Packaging”. I note, however, that Simona Musso (LL SpA’s General Counsel) said that the “Perfect Pack” revisions were rolled out in 2017.

334    Cantarella’s case also concerns the “new” packaging of LAVAZZA QUALITÀ ORO coffee introduced in 2019 following the market research carried out by Lavazza in 2018: see [106] to [109] above. This packaging includes the packaging of the “Mountain Grown” sub-blend. In its submissions, Cantarella refers to this packaging as the “2019 Product Packaging” and, in the case of the “Mountain Grown” sub-blend, as the “2019 Mountain Grown Product Packaging”.

335    Further, Cantarella’s case concerns the packaging of the LAVAZZA QUALITÀ ORO NCCCs. I will refer to this as the NCCC Packaging.

336    When I refer to the 2016 Product Packaging, the 2019 Product Packaging, the 2019 Mountain Grown Product Packaging, and the NCCC Packaging in the context of infringement, I mean the 2016 Product Packaging, the 2019 Product Packaging, the 2019 Mountain Grown Product Packaging, and the NCCC Packaging as particularised by Cantarella in its second further amended statement of claim: see Schedule 1 to these reasons.

337    The issue that dominates the case on infringement is whether, in respect of the 2016 Product Packaging, the 2019 Product Packaging, the 2019 Mountain Grown Product Packaging, and the NCCC Packaging as particularised, Lavazza has used the word “oro” as a trade mark. There can be no question that if Lavazza has used the word “oro” as a trade mark on that packaging, then it has used the 098 mark and the 290 mark (i.e., the ORO word mark). Subject to Lavazza establishing that the registrations of the 098 mark and 290 mark are invalid, or that one or more of the defences on which it relies are made out, infringement will have been established.

Trade mark use

338    In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144 (E & J Gallo Winery), the plurality in the High Court said (at [41]) that the concept of “use” of a trade mark must be understood in the context of s 17 of the Act, which provides:

17    What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note: For sign see section 6.

339    Although their Honours’ statement was made with respect to the “removal” provisions of the Act, the same consideration applies with respect to the “infringement” provisions of the Act.

340    The plurality explained (at [42] – [43]):

42    Whilst that definition contains no express reference to the requirement, to be found in s 6(1) of the Trade Marks Act 1955 (Cth), that a trade mark indicate “a connexion in the course of trade” between the goods and the owner, the requirement that a trade mark “distinguish” goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of “goods to which the mark is applied”. Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark. There is nothing in the relevant Explanatory Memorandum to suggest that s 17 was to effect any change in the orthodox understanding of the function or essential characteristics of a trade mark.

43    In Coca-Cola Co v All-Fect Distributors Ltd a Full Court of the Federal Court of Australia said:

Use “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of “trade mark” in s 17 — a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

That statement should be approved.

(Footnotes omitted.)

341    More recently, in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; 408 ALR 195 (Self Care IP Holdings), the High Court said (at [23] – [24]):

23    Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.

24     Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not “as a trade mark” was in Irving’s Yeast-Vite Ltd v FA Horsenail (t/as The Herbal Dispensary), where the phrase “Yeast tablets a substitute for ‘Yeast-Vite’” was held to be merely descriptive and not a use of “Yeast-Vite” as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.

(Footnotes omitted.)

342    In Anheuser-Busch Inc v Budejovický Budvar [2002] FCA 390; 56 IPR 182 (Anheuser-Busch), Allsop J said (at [185] – [186]):

185     The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others: The Shell Co, supra at 422-25; Mark Foys Ltd, supra at 198-200; Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326, 335, 342-45, 347-49; Pepsico Australia, supra at 162-63, 167-69 and 178-82; Musidor BV v Tansing (t/as Apple Music House) (1994) 52 FCR 363, 376-77; Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 48 IPR 257, 265-66; and Aldi Stores, supra at [22] to [30] and [54] to [58].

186     The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use: The Shell Co, supra at 425; Wrigley's (Australasia) Ltd v Life Savers (Australasia) Ltd (1936) 37 SR (NSW) 9, 16; Aldi Stores, supra at [22] to [24] and [76].

343    In considering the way in which the words have been displayed, and how they would present themselves to persons who read them and form a view about what they connote, it is important to understand that the use of a word or words in relation to goods or services may function as a trade mark whilst nevertheless having a descriptive element.

344    In Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 (Johnson & Johnson), Gummow J noted (at 347 – 348):

When the issue is one of infringement, a pivotal question is whether the use complained of is use by the alleged infringer as a trade mark. The answer to that question requires an understanding of the “purpose and nature” of the impugned use: see Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (the Shell case) (1963) 109 CLR 407 at 426, per Kitto J. As his Honour there points out, with reference to Edward Young & Co Ltd v Grierson Oldham & Co Ltd (1924) 41 RPC 548, and as s 66 of the present Act also indicates, the nature of the allegedly infringing use may be considered in the light of a usage common in the relevant trade. The relevant context, where the mark is a word mark, includes a consideration of the way in which the word has been displayed in relation to the goods and advertisements of which complaint is made: see Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 402, per Whitford J.

Where the trade mark allegedly used by the defendant comprises ordinary English words (such as “Page Three”, considered by Slade J in News Group Newspapers Ltd v The Rocket Record Co Ltd [1981] FSR 89 at 102) then, as this decision illustrates, that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foys Ltd v Davies Coop and Co Ltd (the Tub Happy case) (1956) 95 CLR 190 at 194-195 that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case (supra) (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “partly because” (emphasis supplied) they are described by the words in question.