Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCATrans 53 (14 March 2014)

Last Updated: 18 March 2014

[2014] HCATrans 053

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Sydney No S202 of 2013

B e t w e e n -

CANTARELLA BROS PTY LIMITED (ACN 000 095 607)

Applicant

and

MODENA TRADING PTY LIMITED (ACN 140 018 015)

Respondent

Application for special leave to appeal

FRENCH CJ
CRENNAN J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 14 MARCH 2014, AT 10.04 AM

Copyright in the High Court of Australia

MR A.J.L. BANNON, SC: May it please the Court, in that matter I appear with my learned friend, MR M. GREEN, for the applicant. (instructed by Clayton Utz Lawyers)

MR I.M. JACKMAN, SC: May it please the Court, I appear with my learned friend, MS C.L. COCHRANE, for the respondent. (instructed by Corrs Chambers Westgarth Lawyers)

FRENCH CJ: Yes, Mr Bannon.

MR BANNON: Your Honour, this matter raises for the first time the opportunity for this Court to consider the question of the inherent capacity of foreign word marks, which have a meaning in their own language, to distinguish as a matter which has not been considered by the Court before, and there is an issue as to the correct approach. It is our submission in summary that the primary judge adopted the correct approach to the question of inherent capacity which was to consider as a first step the inherent nature of each of the relevant marks which involved, in the case of word marks and indeed the same analogously applies to shape marks, whether they had an ordinary signification; in particular, an ordinary signification to the relevant public, and I say “relevant public” having regard to the definition of “trademark” and the nature of a trademark, the function of which is to distinguish between goods of traders in the course of trade.

CRENNAN J: Why is not the relevant public just the relevant customers and traders? There is a rather arid dispute bubbling away, it seems, in the submissions about what Justice Kitto meant when he was referring to traders in the “Michigan” case. Does it matter – I mean, it is the ordinary signification, is it not - - -

MR BANNON: Yes.

CRENNAN J: - - - to consumers and traders?

MR BANNON: Yes, and if it does not capture both areas, then it is not an ordinary signification; in other words, if it does not capture consumers because the definition in section 17 of the Trade Marks Act, and as has always been the concept of it, there be a trademark that is distinguished in the course of trade. The test of whether a trademark is used, and hence infringed, is how it presents to the consumer. This is a test which has been applied in Mark Foy’s, in Shell, in Johnson & Johnson, and his Honour the primary judge applied it both in determining whether they infringed and whether or not we had used the mark; that is, how did it present to the user. In both instances, his Honour correctly found it did not present as a descriptor. It presented as a use as a badge of origin. But a fortiori when one considers inherent capacity to distinguish, the ordinary signification must at least capture, if I can put it that way, the relevant target marker, whether or not it captures the traders as well. It probably has to capture both.

CRENNAN J: Well, it is not only directed to whether traders happen to like using a word in a particular trade that is not part of the vocabulary of description, if I can put it that way, does it?

MR BANNON: Yes, and the fact is you can have them - - -

CRENNAN J: What exactly was the significance before the primary judge of other traders liking to use the word “Oro” or “D’oro” or “Qualità D’oro” as part of composite marks?

MR BANNON: As a first step, we objected to all that evidence because we said it was irrelevant, but his Honour let it in - - -

CRENNAN J: But was there any evidence in relation to the commencement of those uses? Were they post the relevant registration or pre? I could not work out whether they were in Italy or Australia.

MR BANNON: Yes. All of the uses were post, with the exception of two. There were some invoices tendered, which was “Caffè Molinari” use, which was found by the primary judge and confirmed by the Full Court. It appears summarised conveniently at 99 in paragraph 98 that there were some invoices which indicated that Caffè Molinari Oro product and Caffè Molinari Cinque Stelle product had arrived in Australia before each of the registration dates.

CRENNAN J: So what, distributors’ invoices or something, or - - -

MR BANNON: Invoices to a distributor. All it was, was invoices to a distributor.

CRENNAN J: No retailing evidence?

MR BANNON: No, no retailing evidence. One of the points we made below in the Full Court, there is no evidence as to how it appeared. There is no evidence as to how it was submitted, whether it was a composite mark or any other form. Of course, the difficulty with any reliance on that evidence is exacerbated by the fact that the only Caffè Molinari product which included the words “Oro” and “Cinque Stelle” which were before the court were the ones imported by the respondent, which the primary judge carefully analysed and found that the words “Oro” and “Cinque Stelle” were used by the importer, and indeed Caffè Molinari, as trademarks, and specifically rejected a defence that they were used as mere descriptors. That is the 122 defence. That finding was not challenged in the Full Court.

CRENNAN J: No. What is happening now on the infringement issue? Am I right that now there is only “Qualità D’oro” or “Oro” used, so there is no use of “Oro” alone as a word in a composite mark? Is that right?

MR BANNON: Mid-trial, or shortly before the trial commenced, they switched to “Qualità D’oro” - - -

CRENNAN J: You have got no complaint about that?

MR BANNON: No, we do not complain about that. We did seek an injunction against any further use of “Oro”.

CRENNAN J: “Oro”, yes. What about the position with “Cinque Stelle”?

MR BANNON: As of the date of trial, the evidence was it was being used and was threatened to still continue being used.

CRENNAN J: No injunction in relation to that?

MR BANNON: His Honour the trial judge granted injunctions in relation to both, the use of “Cinque Stelle” and the use of “Oro”.

CRENNAN J: One no longer being used, and one continuing to be used. I understand.

MR BANNON: Yes, and the “Oro” injunction was on the basis that it had been used in the past, and to guard against any future use. It was submitted below that there should not be an injunction because they had stopped using it, apart from other defences.

But coming back to your Honour’s question about the relevance of prior use, that was the only evidence of use before the date, and as I say, in the absence of packaging, you could not conclude how it had been used, and whether it had been used for any putative ordinary signification. As I say, a fortiori you cannot do that where the only Molinari product was proven to be and not contested on appeal a use not as a descriptor, but as a badge of origin.

So the issue both at trial and in the Full Court was whether there was any inherent capacity to distinguish in the marks. There was no issue to say that there was a lack of distinctiveness in fact because of other traders’ uses, no doubt because the only thing they had was some invoices. They could not prove we had a lack of distinctiveness in fact.

CRENNAN J: The “Oro” trademark registration at page 60 has got a reference to the provisions of paragraph 44(3)(b) applying. This is some indication of some aspect of the history of registration, I take it? I just wondered what that was about.

MR BANNON: It did not arise as an issue in trial, your Honour. I do not know what it might refer to.

CRENNAN J: What is the interface between section, I think it is 41(6) – you can file evidence of distinctiveness in fact – and removal applications? In other words, if a mark has developed as distinctiveness in fact, how is a court to deal with an application to remove on the basis lacked any inherent capacity to distinguish?

MR BANNON: I think there is a capacity, perhaps as a discretionary answer, to say if there was evidence of a factual distinctiveness - - -

CRENNAN J: Is your case it was an error to find – to no extent was there a capacity to distinguish. Is that it?

MR BANNON: That is right, yes, and that is how the case proceeded.

FRENCH CJ: I wonder I could just, in that context, go to your draft notice of appeal at 107. Ground 2, which is the first ground, challenges the result, and no doubt by argumentative pathways. Ground 3 challenges the test applied. Is ground 4 anything more than argument? Does that raise some central - - -

MR BANNON: No.

FRENCH CJ: So that is surplus.

MR BANNON: It was just to make sure we were not seeking to expand beyond the issues we think arise.

FRENCH CJ: Yes, and what about ground 5, that is, there was some necessary finding that was not made, is that right?

MR BANNON: Yes, I think that is also, to adopt your Honour’s language, argumentative.

FRENCH CJ: All right. What about 6?

MR BANNON: Ground 6, the Full Court found that the trademark was to be expunged contrary to what the trial judge has said, because we had not used as a trademark - - -

CRENNAN J: That is a discrete point really, is it not?

MR BANNON: Except it is a consequential point. If one looks at AB 100, that is paragraph 105, his Honour in the time-honoured way, the primary judge, went through and looked at the way we had used it and said it was presented as a trademark, not as a badge of origin. Their Honours simply said at 105 that his Honour was correct on the assumption – I am paraphrasing – his Honour’s finding as to distinctiveness was correct, but in the light of their Honours’ finding as to lack of distinctiveness, his Honour’s finding failed.

CRENNAN J: Therefore, could not be used as a trademark.

MR BANNON: Yes. That is actually wrong in law, that statement, if I may say so, but it does not much matter - - -

CRENNAN J: If you are right on the main point?

MR BANNON: If we are right on the main point, there is no additional argument – they may want to have another go in contention, but it is a short point if they do.

FRENCH CJ: So the grounds you have are 2, 3 and 6?

MR BANNON: Yes. Can I just say, your Honours, if one goes to 80, his Honour the primary judge made a finding of fact which appears at 113 through to 118 that there was no ordinary signification. That finding was not overturned by the Full Court, so pages 36 to 37, it is really paragraphs 113 to 118.

FRENCH CJ: Paragraphs 113 onwards.

MR BANNON: Yes. But what the Full Court did was they said – and may I say so, that accords with the correct approach, we say, as encapsulated in Burger King and referred to by the various judgments in Kenman Kandy where Justice Gibbs, relying on Kenman – could I just briefly refer to that excerpt from Burger King in the bundle of authorities. It is fully set out in tab 7 of Justice Lindgren’s judgment in Kenman Kandy at 138 of the authorities book, paragraph 83, which is a statement which is also picked up in your Honour Justice French’s judgment but your Honour’s quote did not include the Clark Equipment reference. At 83 on page 138:

“Inherent adaptability is something which depends on the nature of the trade mark itself . . . not something that can be acquired; the inherent nature . . . cannot be changed by use or otherwise.”

That was again picked up by your Honour at 130, but one continues in paragraph 84, although Justice Lindgren was in dissent but not on a matter of principle. The last sentence of paragraph 84 picks up:

Whether the Bug shape is inherently adapted to distinguish can be tested by assessing how it would be perceived and understood by members of the public seeing items of confectionery –

That is exactly right, and your Honour Justice French in that same decision, if I could just go back to the definition of “trademark” which is at 118 of the bundle, that approach of that ordinary signification is informed, at the bottom of 118, the definition of “trademark” which is set out there, which is still the definition relevantly for the purposes here, “dealt with . . . in the course of trade”.

CRENNAN J: Well, that explains why there is this paradoxical concept that you see in the cases in dicta and in the textbooks about varying degrees of inherent distinctiveness.

MR BANNON: Yes, exactly. Your Honour, if one just goes to the Full Court to encapsulate, we say, where error is involved. At paragraph 83 of the judgment which appears at – sorry, page 95, paragraph 81, after referring to in effect his Honour’s approach, their Honours say:

Where the words used are English language words then considerations of the “common heritage” . . . may very well be apt –

Paragraph 82:

This was the approach taken by the primary judge.

Then over the page:

However, this approach was not appropriate –

in the case of foreign words. So they are positing a different approach. There, they go on to say - - -

CRENNAN J: Well, now, what do you say about – and this is a repeated theme in the Full Court’s judgment, that the words were common Italian words descriptive of quality. Then if I may just direct your attention to the last sentence in paragraph 87:

Molinari, amongst others, has imported coffee products to Australia using the descriptive words Oro and additionally . . . Cinque Stelle since well before Cantarella applied to register them as trade marks.

MR BANNON: That comes back to the point namely that there was no evidence of how they used it before the relevant date, just the invoices, and the only evidence in relation to how Molinari actually used it was the infringing use which was found by his Honour the primary judge to be not descriptive use. That finding appears, if I may say so, your Honours, starting at 41 of the application book – this is the primary judge’s reasoning. The heading is “Modena’s Use of Cinque Stelle” and that was its importation of the Molinari product, and his Honour deals with that in the time-honoured way and it concludes at AB 44, paragraph 144, namely that they were used as a trademark. In the course of that reasoning, if I could just take your Honours back to 43, top of page 43 of the application book, his Honour actually said:

That suggests that Cinque Stelle has an inherent capacity to distinguish.

In other words, the very fact that a trader is using something as a trademark rather reinforces the notion - - -

CRENNAN J: Or even if lots of people want to use the word as a - - -

MR BANNON: Even if lots of people, and that is the syllogism which falls foul – if you do not approach it from the starting point as what is the inherent nature and ask the second question after that, is it likely that traders will want to use the mark for that ordinary signification – you do not do it in that order, you run into the difficulty which your Honour is really identifying, namely you start to inquire as to why is a trader – the fact that a trader used it does not of itself tell you that it has an ordinary signification. Two traders may independently think this is a good idea as a badge of origin.

CRENNAN J: Well, words can suddenly become chic, like “echo” for green products.

MR BANNON: Exactly.

CRENNAN J: But what about paragraph 125 at page 36? The primary judge says:

Dozens of coffee distributors in Australia use –

I am not sure whether that is trademark use –

Oro to denote products within their ranges or to denote their own house brand.

I am not sure if his Honour is describing a submission – I am sorry, Mr Bannon, page 39, paragraph 125, first sentence. What is the significance of that in the context of ordinary signification of a word?

MR BANNON: You start at 123, and this is in the context of working out whether we used – this is the section dealing with whether we used the marks as trademark - - -

CRENNAN J: I know it is the attack on you that you did not use it as a trademark - - -

MR BANNON: Exactly.

CRENNAN J: - - - but nevertheless, his Honour does make reference there to - - -

MR BANNON: We submit his Honour is not making a finding that that is how that is used, but rather recording a submission.

CRENNAN J: The argument. That is what I was asking you.

MR BANNON: Yes, and it becomes apparent if one goes back to page 30 of the application book, paragraph 92. Our learned friends in their submissions say this is a finding of his Honour, the first sentence; that is:

Against that background, Modena draws attention to the frequent use in Australia of oro in relation to coffee products as an indication of coffee of the highest quality.

His Honour is just reporting a submission.

CRENNAN J: So is your case two points, really; the correct test for a foreign word and the ordinary signification aspect of the foreign word, and a want of evidence in relation to an argument perhaps that “Oro” was common to the trade, or “Cinque Stelle” was common to the trade, or whatever?

MR BANNON: Quite, both.

CRENNAN J: Both.

MR BANNON: The second one – we win on the first point. If the correct test is, as we say, inherent capacity as the first step, there is a finding of fact which has not been overturned. It has no ordinary meaning and you do not have to go any further, and all the evidence about other use is utterly irrelevant.

CRENNAN J: Then the Full Court goes to the meaning in Italian.

MR BANNON: Yes, but it does not overturn the finding that it does not have an ordinary signification in Australia. It says two things; firstly that the key is how the traders understood it, which we say is irrelevant and wrong, and secondly that the - - -

CRENNAN J: Well, it will not be wrong if you are talking about the ordinary signification.

MR BANNON: Generally, yes, but they go backwards. They start with how the traders use - - -

CRENNAN J: Or what traders might want to do?

MR BANNON: Yes, and the second is they interpret Clark and Burger King as reinforcing their approach to say it is all about the traders. But it is a significant misread of both of those cases. In Clark, there was an ordinary meaning, “Michigan” – it meant “for everybody”, the whole world. It even meant a place. The next question his Honour Justice Kitto asked was is that ordinary meaning one traders are likely to use? Equally, in “barrier cream” in Faulding the question was “barrier” had an ordinary meaning. It was in the dictionary. The next question his Honour said, it still may not be the case that traders would not want to use that ordinary meaning, and then he investigated that. But here, if you do not get to an ordinary meaning, you do not get beyond that.

FRENCH CJ: Thank you, Mr Bannon. Mr Jackman, are you going to give us the policeman’s response; nothing to see here, move on?

MR JACKMAN: Well, one of the reasons, your Honours, why the Clark Equipment test has survived the test of time is its fluidity, to use an expression that the Full Federal Court uses, and its ability to apply to a very wide variety of different circumstances - - -

CRENNAN J: It had a long history, Mr Jackman, in terms of fluidity.

MR JACKMAN: Indeed, and nobody is - - -

CRENNAN J: I mean, a very consistent history, going back to Solio, an old 19th century case.

MR JACKMAN: Yes, quite, it goes back to English cases in the 19th century as - - -

CRENNAN J: What do you intend to convey by fluidity?

MR JACKMAN: That the way in which it is applied may well vary from case to case, and that is a theme of the Full Court’s judgment beginning at paragraph 72, and carrying through to the reasoning concerning ordinary signification. Paragraph 72 begins by making the point that this test is not a statute, and it:

will have a content and application in a variety of ways depending on the facts and circumstances of the case –

Paragraph 73 –

It should not be thought, for example, that the “public” necessarily means the general population, or . . . adult population –

That must be right, because there are many cases – we give Eutectic as an example in our written submissions – where a word simply is not known to the ordinary public, but it is known to the specialised section of the public with whom traders are relevantly dealing, and you cannot monopolise that.

CRENNAN J: No, but the key factor in terms of what you cannot monopolise is you cannot have a monopoly in a word that is the natural vocabulary of description for the relevant goods or services.

MR JACKMAN: Within the relevant trade, yes, that is right.

CRENNAN J: It is in the relevant trade.

MR JACKMAN: Quite.

CRENNAN J: That is not particularly fluid, is it? Of course, I accept what you say about it; it applies to a wide variety of circumstances, but - - -

MR JACKMAN: Well, one might hypothesise a case not far removed from the present where, for example, a Chinese grocery wholesaler wants to register the Cantonese word for “cabbage”, let us say, because that Chinese word simply is not known to the general population. Taken to my learned friend’s extreme, you can monopolise that, but within the trade the term is obviously frequently used as descriptive and you cannot have a monopoly, and the Trade Marks Act has to work for ethnic communities just as it does for the Anglo-Celtic population at large.

But what the Full Court is saying is not what my learned friend attributes to the Full Court, namely that it is all about how traders use the word. What the Full Court says quite clearly at the end of 74 and in paragraph 80 and in paragraph 84 is that the inquiry may well extend beyond the class of traders to consumers for the relevant goods or services. In paragraph 80, line 25:

as we have explained, an appreciation of the words used, beyond the class of traders and extending to consumers . . . may also inform the answer to the inquiry because it may also be relevant to consider what consumers in the particular market in which those goods or services are traded know of the mark –

and so on, and the theme is taken up again in 84. It is not a mutually exclusive choice between the minds of consumers and the minds of traders. The Full Court is at pains to say that both are relevant to the inquiry, and in the present - - -

CRENNAN J: I think in paragraph 88 anyway, the Full Court takes the view that:

It is unnecessary . . . that consumers know what the words mean in English.

So they seem explicitly to take that view. Then in that last sentence, they say –

Many Italian speakers would have understood the words Cinque Stelle and Oro as common Italian laudatory and therefore descriptive words.

There is quite a slide there in the sense that not every laudatory word would be incapable of being inherently distinctive. In other words, laudatory words are quite popular with traders. They are often good trademarks if they are elusive and mildly laudatory, but at the same time are not part of the ordinary vocabulary of description for the product. This is the “sheen” type of situation versus the “barrier” type of situation.

MR JACKMAN: The question comes down to what is the relevant subject that we are talking about, and the Full Court’s approach is apt, in our respectful submission, for the contexts that they are dealing with. After all, we are dealing here with the wholesale trade. Both my client, Mr Bannon’s client, are wholesalers of Italian-style coffee. Both courts have found they sell to cafes and restaurants where one’s own experience would indicate there is a far higher percentage of Italian buyers than one might find in the population at large, although in the population - - -

CRENNAN J: All right, are you saying then that the test for ordinary signification can be limited to understandings of wholesale traders? Are you saying that?

MR JACKMAN: We do not have to go that far, and the Full Court does not have to go that far. What the Full Court says is that at least in this context, the primary focus is on the traders and that, in our respectful submission, is apt when one considers we are dealing with wholesale trade of products. Can I take your Honours to paragraph 85, which conveys the point quite succinctly? It begins with an observation of rich cultural and ethnic diversities within our population, and the reality of the marketplace:

Viewed in that way, the “common heritage” here included that of traders in coffee products sourced from Italy. Such traders may well be Italian –

like the original Cantarella brothers –

or local importers –

like us –

They may be local distributors who have in mind the large Italian speaking population in Australia as well as other Australians who, when it comes to coffee, want something with an Italian look and feel –

The signification - - -

CRENNAN J: Are their Honours trying to displace the Mark Foy’s test, which is the ordinary person test about ordinary signification?

MR JACKMAN: No, because what they go on to say is to talk about the ordinary signification to ordinary people in the coffee trade as being closely associated with Italy. Now, the ordinary signification may vary from, say, an Italian café or restaurant on the one hand where the word is understood as descriptive and laudatory, to the ordinary signification to a non-Italian speaking Australian. For the latter, the signification may be no more than the product has an Italian look and feel, and that is an attraction.

If one is going to give one’s product an Italian look and feel, then the most obvious thing to do is to write Italian words on the packaging, and the most obvious Italian words to choose are those that are common within the Italian coffee trade such as “Oro” and “Cinque Stelle”. Herein lies the significance that your Honour Justice Crennan asked about of the finding that “Oro” and “Cinque Stelle” have actually been used in the coffee trade in Australia, both before and after the registration by Cantarella Bros of their marks, because Justice Kitto’s test in Clark Equipment looks to the mere likelihood that other traders would innocently, without improper motive, want to use those words in relation to their goods. We can go beyond mere likelihood and show absolute certainty because other traders did actually use “Oro” and “Cinque Stelle” in relation to their coffee before Cantarella Bros ever had the idea of applying for registration of it.

CRENNAN J: Well, I think that you are right to point to that, but it may mean no more than those words are rather popular, laudatory, elusive epithets. There is always a fine line, if I may say so, between something of that sort – and the line might have been crossed, I am not debating that, something of that kind – and a word which in its ordinary signification is part of the common vocabulary to describe those goods. A word like “roasted”, for example, would not be registrable for coffee because it is part of the ordinary vocabulary, and traders will want to use it and consumers will understand it. But laudatory words have their own special difficulties. Sometimes they might cross the line into being purely descriptive, but if you think of the “sheen” case, you have a word that is laudatory but is also not part of the vocabulary which should be available to everybody for descriptive purposes.

MR JACKMAN: Quite, because on the Clark Equipment test, it is not a word which other traders would be likely to use without improper motive in relation to their goods, and to return to a theme of the Full Court’s judgment, they pick up what your Honour the learned Chief Justice said in Kenman Kandy, that this is a practical, evaluative judgment in all the circumstances, and it is really no more than that. Of course, we accept that there are questions of degree as there are with every practical evaluative judgment - - -

CRENNAN J: I suppose what I am putting to you, just to think about, is that a word which might be popular with certain traders as part of a composite, a mark, is not necessarily part of the ordinary vocabulary of description. It might be, or it might not be. It might depend on the evidence.

MR JACKMAN: Indeed, yes. I accept that it is not necessarily of that calibre, but the Full Court’s reasoning here is that both on its own analysis of the facts and on the way the primary judge analysed the facts, these words “Oro” and “Cinque Stelle” have been used as descriptive of quality.

FRENCH CJ: I suppose we have two things about it. First of all, they are not simply descriptive terms, they are metaphors - - -

MR JACKMAN: They are metaphors, yes.

FRENCH CJ: - - - probably does not come in a gold colour.

MR JACKMAN: No, but they are about the most obvious metaphors to pick.

FRENCH CJ: They are laudatory metaphors, if one can pick up the word that Justice Crennan used, and they are in a foreign language. So that, if you like, if one is taking a multifactorial approach to characterisation, they are characteristics which are of significance, are they not, and distinguish them, for example, from, say, the use of the English word such as “excellent”, “superlative” or “highest quality” or even an Italian version of those words.

MR JACKMAN: Yes, and they are factors that were taken into account in the practical - - -

FRENCH CJ: Yes, I understand that is your point. It is a multifactorial exercise, in a way.

MR JACKMAN: Quite, and there might be some things to be said in favour of Cantarella Bros’ position. There are some things to be said again. It is all weighed up by the Full Court, which comes to their own practical evaluative judgment, looking at the reality of the marketplace, applying the test that has stood for generations. In terms of my learned friend’s appeal to the novelty of the High Court looking at trademarks which are foreign words that have not actually passed into the English language as yet, neither of us is contending for a different test than the test in Clark Equipment which is applied to inherent capacity - - -

FRENCH CJ: You say “same test, different characteristics”, that is all.

MR JACKMAN: Yes, it is a different context for the application of a test that we both accept is the correct test, and necessarily has a flexibility to it according to the circumstances, which is why it has lasted so long, and why it is capable of application to this special context, if you like, of foreign words. May it please the Court, those are our submissions.

FRENCH CJ: Thank you, Mr Jackman. Yes, Mr Bannon.

MR BANNON: The proposition that the Full Court undertook the evaluative judgment which was suggested is not correct. It is not correct for this reason. Yes, one can have a mark which has some inherent capacity to distinguish and consider the matters which your Honour the Chief Justice raised. They did not do that. The issue before the primary judge and before the Full Court was whether it had any inherent capacity to distinguish, and the Full Court said it had none. So it did not go to the next step saying assuming it had some, is it enough? That is why it raises a point of principle.

The way they dealt with it was a way, which is to say, it had no inherent capacity to distinguish based on a test which did not start as a starting point, the ordinary signification, and as such, it does conflict – and expressly said that is not the correct approach in these sorts of cases. As such, it is in conflict with Clark and other cases. It stands in conflict with another Full Court decision, Kenman Kandy, and it is a matter which is important and ought to be resolved.

It is a paragraph of the Full Court judgment which encapsulates what they regarded as the key thing, paragraph 97 on page 99, namely this use by other traders without determining, without overturning, without addressing what was the ordinary signification to the relevant class, or which included at least consumers. In a sense, they adopted a mechanical approach, which is to say other traders used it, including after the date – it was almost all after the date except the two Molinari ones – and that is the end of the matter. We say that is incorrect as a matter of principle, and it is a matter which warrants the clarification and determination of this Court.

FRENCH CJ: Thank you, Mr Bannon. There will be a grant of special leave. This would not take more than a day?

MR BANNON: No.

FRENCH CJ: You might look at the necessity for grounds 4 and 5, I think.

MR BANNON: If it please the Court.

FRENCH CJ: Yes, all right. You will have leave to file an amended notice of appeal within seven days, and there is a standard form of timetable.

AT 10.42 AM THE MATTER WAS CONCLUDED