Section 41 and the Cantarella Test: Inherent Adaptation to Distinguish in Australia

The threshold question for any trade mark application in Australia is whether the mark is capable of distinguishing the applicant’s goods or services from those of other traders. This requirement is found in Section 41 of the Trade Marks Act 1995, and it was fundamentally clarified by the High Court of Australia in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48. The Cantarella decision established a two-step test that applies to all word marks — including foreign-language words — and remains the authoritative framework for assessing inherent distinctiveness in Australia.

The Two-Step Test

Under Section 41(3), the Registrar must first consider the extent to which a trade mark is inherently adapted to distinguish the applicant’s goods or services. The Cantarella decision makes clear that this assessment involves two inquiries:

Step 1: Determine the “Ordinary Signification”

The first step is to identify the ordinary signification — that is, the ordinary meaning — of the word to persons in Australia who will purchase, consume, or trade in the relevant goods or services. This is an assessment of what the mark means to the Australian public at the filing date, not what it means in translation or in the abstract.

For English words, the ordinary signification is usually straightforward. A word like “Fresh” for fruit juice has a clear descriptive meaning. For foreign-language words, however, the inquiry becomes more nuanced. The critical question is not what the foreign word means in its language of origin, but whether Australian consumers of the relevant goods would understand the word as having a directly descriptive meaning.

Step 2: Assess Whether Other Traders Would Legitimately Need the Word

The second step applies the classic test from Clark Equipment Co v Registrar of Trade Marks: whether the word is one that other traders might legitimately wish to use in the ordinary course of business, without any improper motive, in connection with their own goods. If honest traders would need to use the word to describe their products, the mark is not inherently adapted to distinguish.

The Cantarella Decision: Foreign Words

The Cantarella case involved two Italian words — ORO (meaning “gold”) and CINQUE STELLE (meaning “five stars”) — registered as trade marks for coffee. Modena sought to cancel the registrations, arguing that these were common laudatory terms that other coffee traders should be free to use.

The High Court majority held that ORO and CINQUE STELLE were inherently adapted to distinguish. The key reasoning was that only a very small minority of English-speaking Australians would understand the Italian words as meaning “gold” or “five stars.” Because the ordinary signification of these words to Australian consumers was not directly descriptive of coffee’s character or quality, the marks were registrable.

The distinction the High Court drew is between a direct reference to the character or quality of goods (which prevents registration) and a covert and skilful allusion to the goods (which does not). A foreign word that Australian consumers would not understand as descriptive falls into the allusive category, even if its translated meaning would be descriptive in English.

The Three Categories

Following Cantarella, all trade marks assessed under Section 41 fall into one of three categories:

Category (a): Marks that are sufficiently inherently adapted to distinguish and are therefore prima facie capable of distinguishing. These include coined words, arbitrary terms, and foreign words whose ordinary signification in Australia is not descriptive. They proceed to registration without evidence of use.

Category (b): Marks that have some but insufficient inherent adaptation. These are suggestive or somewhat descriptive marks that may be capable of distinguishing if supported by evidence that the mark does in fact distinguish the applicant’s goods through use. Under subsection 41(3), evidence of use before the filing date may be required.

Category (c): Marks with no inherent adaptation to distinguish. These are directly descriptive or generic terms. Under subsection 41(6), they can only be registered if the applicant proves that the mark does in fact distinguish the goods or services as at the filing date — requiring substantial evidence of acquired distinctiveness.

Practical Implications of Cantarella

The Cantarella test has several practical consequences for trade mark applicants:

• Foreign words are not automatically safe: If the relevant Australian consumer base for your goods understands the foreign word’s meaning, it will be treated as descriptive. Italian words for Italian food, French words for French wine, and Japanese words for Japanese goods are all assessed against the understanding of Australian consumers of those specific products.
• Context matters: The same foreign word may be inherently distinctive for one category of goods but not for another, depending on the likely consumer demographic and their linguistic knowledge.
• Evidence of consumer understanding can shift the outcome: If an opponent can demonstrate that a significant portion of the relevant Australian public understands the foreign word as descriptive, the mark’s inherent distinctiveness may be challenged.
• Allusion is permissible, direct reference is not: A mark that evokes a quality without directly stating it may still qualify for registration.

Responding to a Section 41 Objection

If IP Australia raises a Section 41 objection, the applicant has several options depending on which category the mark falls into. For marks with some inherent adaptation, evidence of use before the filing date showing the mark does in fact distinguish may overcome the objection. For marks with no inherent adaptation, the evidentiary burden is heavier — requiring proof of acquired distinctiveness through substantial commercial use in Australia. The applicant may also argue that the mark’s ordinary signification is allusive rather than directly descriptive, supported by evidence about consumer perception.

Key Takeaway

In Australia, the registrability of a word mark — whether English or foreign — turns on its ordinary signification to the relevant Australian consuming public. The Cantarella test requires IP Australia to assess what the word means to Australian buyers of the relevant goods, not what it means when translated. Marks that directly describe the character or quality of goods will fail; marks that merely allude to those qualities may succeed. For applicants using foreign-language marks, the critical question is whether Australian consumers of the relevant products would understand the descriptive meaning.