I Own That Word So You Cant Use It
You’d think the use of a word would be open to all. After all “shirt-front” is the Australian Dictionary 2014 word of the year thanks to the Prime Minister’s use of it when describing what he planned to do to the Russian President, and he took the phrase from rugby and AFL.
But the High Court recently ruled the Italian words “oro” meaning gold, and “cinque stelle” (five stars) were exclusively owned (the legal word is trademarked) by one coffee company.
The decision by the highest court in the land meant the coffee brand Vittoria had exclusive use of the words on its packaging and in advertising, and its coffee rival couldn’t use the words.
It was the culmination of a long legal battle over the trademarks. Cantarella, owner of Vittoria, obtained a trademark on the Italian words in 2000. When another coffee brand used the Italian words on its packaging, Cantarella took them to court.
The Federal Court first heard the case and ruled in the rival’s favour, saying the words were descriptive, so nobody could have exclusive use of them.
Cantarella took the matter to the High Court. In a majority decision the High Court found the Italian words did not convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee so that they were descriptive. In other words, not enough people in Australia understood what the Italian words meant, so they could not be held as descriptive.
It was the first time the High Court had ruled whether non-English words could distinguish one product from another.
Lawyers for the rival coffee company had argued if a company could trademark the words “gold” and “five stars” in a foreign language, then there would be nothing to stop a Chinese company trademarking the Cantonese word for cabbage.
One of the High Court judges dissented, saying the words were descriptive no matter what language they were in.
The case throws a light on the often vexed issue of the Trade Marks Act and what marks a person or company can claim an exclusive right to use in Australia.
For instance the word “champagne” can’t be put on bottles of bubbly made in Australia because France insists champagne can only come from the French region it is named after. France has the law on its side. That’s why the Aussie grown stuff is labeled sparkling wine.
Still, just pop a bottle of the fizzy stuff over Christmas and New Year and enjoy it, whatever it’s called.