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

Federal Court of Australia

Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258 File number: NSD 1389 of 2019

Judgment of: YATES J

Date of judgment: 20 October 2023

Catchwords: TRADE MARKS – infringement – whether the respondents have infringed the applicant's registered trade marks comprising the word ORO TRADE MARKS – infringement – defences to infringement – whether the respondents can establish the defences under ss 122(1)(b)(i), 122(1)(e), 122(1)(f) and (fa), and 124 of the Trade Marks Act 1995 (Cth) TRADE MARKS – validity –whether the word ORO is not capable of distinguishing the applicant's goods by reason of the common use of, or the desire of other traders to use, the word in relation to the registered goods TRADE MARKS – validity – whether the word ORO is not capable of distinguishing the applicant's goods because it is not inherently adapted to distinguish by reason of descriptiveness – where ORO held to be inherently adapted to distinguish in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337 – whether the doctrine of stare decisis applies to preclude a different finding in this proceeding TRADE MARKS – validity – ownership – whether the applicant is the owner of the trade mark ORO for the registered goods – where circumstances of prior use by another – whether any rights acquired by the prior use were abandoned at common law TRADE MARKS – cancellation of registered trade marks – where ground of cancellation established – whether discretion should be exercised not to cancel the registrations