In Australia, a trademark can be a word, shape, sound — the MGM lion’s roar, for example — or a colour. Cadbury owns the colour purple, specifically Pantone 2685c purple, for its Dairy Milk Chocolate in Australia, but recently lost a legal case against Nestlé to trademark it in the UK.
You can even trademark a scent in Australia. A ‘Eucalyptus radiata’ fragrance is trademarked for use in golf tees. Its scent is said to calm you so your golf shots are more accurate!
It’s all about having something that differentiates your product from another. But protecting that trademark can be hard work.
I spoke with Michaela Whitbourn, legal affairs editor from The Sydney Morning Herald, about a coffee trademark battle that amounted to a whole lot more than a hill of beans.
Ross Greenwood: What do the words ‘cinque stelle’ and ‘oro’ mean to you? If you’re Italian, you will know that I’m talking about the words for ‘five stars’ and ‘gold’. But those words have been the subject of a trademark case.
Vittoria Coffee, controlled by the Cantarella family, has been around in Australia for years. They trademarked the words ‘oro’ and ‘cinque stelle’ in Australia in 2000 and 2001, but they lost the rights in 2013, when the Federal Court overturned a previously successful lawsuit against Modena, a rival coffee distributor. Now it’s gone to the High Court. Michaela, can you explain exactly what the argument was?
Michaela Whitbourn: The argument put forward by Modena, which imports the rival coffee brand Caffe Molinari, was that ‘cinque stelle’ and ‘oro’ were common descriptive words used by Italian speakers (meaning ‘five stars’ and ‘gold’, respectively), and were not capable of distinguishing one brand from another.
That argument found favour in the Federal Court, but the High Court said that these words were not well recognised in Australia, a predominantly English-speaking country, and that they were capable of differentiating Vittoria Coffee from other brands, and therefore they could be trademarked.
RG: Now does this mean that if I were to take a common word from a different language and trademark it here in Australia, then maybe I could use it to distinguish my brand from everyone else’s? That’s almost what the court’s ruled, isn’t it?
MW: Yes, that’s what the High Court ruled in the Cantarella coffee case. English words that are in common usage in Australia and that are used to describe a particular product, cannot be trademarked because they are words that ALL traders should be allowed to use. But, when you start using foreign words, not everyone knows what they mean. They may come to be associated with a particular brand, and it is possible to obtain a trademark over them.
RG: Now the other one that has come up is Apple’s ‘App Store’. And, in this case, it seems that Apple may have lost the case in the Federal Court so far.
MW: Apple would like to have a trademark over the words ‘App Store’, but the Registrar of Trade Marks refused registration of Apple’s trademarks in March 2013. Apple appealed that decision to the Federal Court, but the Federal Court found that this was a descriptive term, and it wasn’t capable of being trademarked by Apple.
RG: The intellectual property law firm Watermark reportedly estimated that the appeal alone could have cost Apple between $100,000 and $200,000. Seeing as the company is valued at more than $700 billion on the stockmarket right now, that’s chump change. But the fact is it shows that it can be relatively expensive, for a small business especially, to try and protect its own brand and its own name.
MW: Absolutely, and legal representation is expensive, even for short stints of time
So those figures aren’t surprising, although they’re pretty eye-popping for ordinary consumers.
Ross Greenwood’s verdict
Trademarks are tricky things, but one way to avoid a headache is by making up your own word, and to get proper trademark legal advice before adopting a new brand. I can think of at least one company that has done that. It’s called Google, and in 2014 its brand value was estimated at US$107.43 billion.