Sign up to save your podcasts
Or
Share Cantarella Bros Round 2 - Ep 9
Share to email
Share to Facebook
Share to X
Share to email
Share to Facebook
Share to X
Or
Cantarella Bros Round 2 - Ep 9
In this episode of Elise Explains IP, we dig deeper into the long-running ORO trade mark saga — this time through the lens of the Federal Court case Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258. Rather than overturn the earlier High Court decision, this judgment demonstrates another way the enforceability of a foreign-word trade mark can be defeated.
🔎 Key Issues Explored
1. Background of the Dispute
Cantarella Bros owns two registered trade marks for the Italian word ORO for coffee products. It sued Lavazza Australia, alleging that Lavazza’s use of ORO on packaging and advertising infringed those rights.
2. Was Lavazza Using ORO as a Trade Mark?
Justice Yates confirmed that Lavazza was using ORO as a trade mark — despite arguments that it was only descriptive — because of how the word appeared and operated on the packaging. The Court reiterated that even descriptive elements can function as trade marks depending on use and presentation.
3. The High Court’s Earlier Ruling
In 2014, the High Court confirmed ORO was inherently adapted to distinguish in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (the 2014 High Court decision), meaning the mark was not merely descriptive. You can read the full High Court judgment here: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 — https://www.hcourt.gov.au/showCase/2014/HCA/48.
4. Ownership and First Use Are Fatal
The turning point in the Federal Court case was the cross-claim on ownership. Lavazza introduced evidence that an Italian company, Caffè Molinari SpA, had used ORO as a trade mark in Australia before Cantarella’s first use, undermining Cantarella’s claim to be the first user and owner of the mark. Justice Yates found that Molinari had not abandoned its earlier use, and therefore Cantarella was not the true owner of the ORO trade marks.
5. Invalidity and Cancellation
Because Cantarella was not the first user, the Court held its registered ORO marks were invalid and should be cancelled. Although Lavazza arguably infringed the marks on the facts, that finding could not stand because the registrations themselves were defective.
6. Broader Legal Themes
This case highlights two critical trade mark risks:
Ownership matters as much as distinctiveness — valid registration doesn’t guarantee enforceability if first use is challenged.
Unregistered use can be decisive — evidence of earlier use by others may invalidate a registered mark.
🧠 What This Means for Your Brand
Trade mark enforcement isn’t just about distinctiveness — ownership and priority can make or break a case.
Comprehensive due-diligence and historical use research are essential before you register and before you litigate.
Keeping systematic records of use from first commercial use strengthens your rights and helps preserve enforceability years later.
🔗 Relevant Cases
Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48
High Court decision confirming the inherent distinctiveness of ORO and Cinque Stelle in Australia.
https://www.hcourt.gov.au/showCase/2014/HCA/48
Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258
Federal Court decision finding Cantarella’s ORO registrations invalid due to prior use by Molinari.
View all episodes
By elisesteegstraIn this episode of Elise Explains IP, we dig deeper into the long-running ORO trade mark saga — this time through the lens of the Federal Court case Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258. Rather than overturn the earlier High Court decision, this judgment demonstrates another way the enforceability of a foreign-word trade mark can be defeated.
🔎 Key Issues Explored
1. Background of the Dispute
Cantarella Bros owns two registered trade marks for the Italian word ORO for coffee products. It sued Lavazza Australia, alleging that Lavazza’s use of ORO on packaging and advertising infringed those rights.
2. Was Lavazza Using ORO as a Trade Mark?
Justice Yates confirmed that Lavazza was using ORO as a trade mark — despite arguments that it was only descriptive — because of how the word appeared and operated on the packaging. The Court reiterated that even descriptive elements can function as trade marks depending on use and presentation.
3. The High Court’s Earlier Ruling
In 2014, the High Court confirmed ORO was inherently adapted to distinguish in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (the 2014 High Court decision), meaning the mark was not merely descriptive. You can read the full High Court judgment here: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 — https://www.hcourt.gov.au/showCase/2014/HCA/48.
4. Ownership and First Use Are Fatal
The turning point in the Federal Court case was the cross-claim on ownership. Lavazza introduced evidence that an Italian company, Caffè Molinari SpA, had used ORO as a trade mark in Australia before Cantarella’s first use, undermining Cantarella’s claim to be the first user and owner of the mark. Justice Yates found that Molinari had not abandoned its earlier use, and therefore Cantarella was not the true owner of the ORO trade marks.
5. Invalidity and Cancellation
Because Cantarella was not the first user, the Court held its registered ORO marks were invalid and should be cancelled. Although Lavazza arguably infringed the marks on the facts, that finding could not stand because the registrations themselves were defective.
6. Broader Legal Themes
This case highlights two critical trade mark risks:
Ownership matters as much as distinctiveness — valid registration doesn’t guarantee enforceability if first use is challenged.
Unregistered use can be decisive — evidence of earlier use by others may invalidate a registered mark.
🧠 What This Means for Your Brand
Trade mark enforcement isn’t just about distinctiveness — ownership and priority can make or break a case.
Comprehensive due-diligence and historical use research are essential before you register and before you litigate.
Keeping systematic records of use from first commercial use strengthens your rights and helps preserve enforceability years later.
🔗 Relevant Cases
Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48
High Court decision confirming the inherent distinctiveness of ORO and Cinque Stelle in Australia.
https://www.hcourt.gov.au/showCase/2014/HCA/48
Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258
Federal Court decision finding Cantarella’s ORO registrations invalid due to prior use by Molinari.