Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12

Federal Court of Australia Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12 Appeal from: Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 4) [2024] FCA 419

File numbers: NSD 1549 of 2023 NSD 600 of 2024

Judgment of: NICHOLAS, JACKSON AND ROFE JJ

Date of judgment: 14 February 2025

TRADE MARKS – validity – ownership – where primary judge found appellant (Cantarella) was not the owner of the ORO trade mark and ordered that registrations be cancelled pursuant to ss 88(1)(a) and 58 of the Trade Marks Act 1995 (Cth) ("the Act") – where primary judge found prior use of trade marks by third party (Molinari) – whether primary judge erred in accepting evidence of prior use given by witnesses – whether such evidence glaringly improbable or contrary to compelling inferences – whether ORO simpliciter used as a trade mark where other marks and matter prominently displayed on packaging – whether trade mark was intentionally abandoned by Molinari – whether a person may be an owner of a trade mark for the purposes of s 58 of the Act notwithstanding that they were not the first to use the mark as a trade mark in relation to the relevant goods or the first to apply for the mark with the intention of so using it – consideration of relationship between ss 58 and 44(3) of the Act APPEAL AND NEW TRIAL – whether Cantarella should be permitted to advance argument that it was an owner of the ORO trade mark based on honesty concurrent use occurring after Molinari's first use where argument not raised before primary judge Catchwords: TRADE MARKS – whether primary judge erred in failing to exercise discretion not to cancel trade mark registrations COSTS – application by respondent (Lavazza) for leave to appeal costs orders made by primary judge – whether primary judge erred in awarding Lavazza 50% of its costs of the proceeding Held: Cantarella's appeal and Lavazza's application for leave to appeal dismissed