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

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

The appeal was dismissed because the Full Court found that the primary judge did not err in finding Molinari was the prior user of the 'ORO' trade mark in Australia, that use was as a trade mark, and there was no abandonment proved. Cantarella was not entitled to retain the registrations; concurrent use did not confer ownership under s 58, and the discretion under s 88(1) was properly exercised. Lavazza's application for leave to appeal costs was also refused; no error was found in the discount or refusal of indemnity costs.

Parties
Appellant / Respondent in NSD 600 of 2024: Cantarella Bros Pty Ltd; First Respondent in NSD 1549 of 2023 / First Applicant in NSD 600 of 2024: Lavazza Australia Pty Ltd; Second Respondent in NSD 1549 of 2023 / Second Applicant in NSD 600 of 2024: Lavazza Australia OCS Pty Ltd
Jurisdiction
Australia
Judgment Date
14 February 2025
Procedural Posture
Appeal and Cross Appeal Against Orders Cancelling Trade Mark Registrations and Related Costs Orders / Full Court Appeal Determination
Outcome
Appeal dismissed; application for leave to appeal dismissed; costs orders as per the reasons.
Legal Topics
Ownership of Trade Marks, Validity of Registration, Prior Use, Abandonment, Honest Concurrent Use, Discretion to Cancel Registration, Costs Orders
Intellectual Property Trade Marks Law Ownership of Trade Marks Validity of Registration Prior Use Abandonment Honest Concurrent Use Discretion to Cancel Registration +1 more

Case Brief

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Parties

Cantarella Bros Pty Ltd

Appellant / Respondent in NSD 600 of 2024

Lavazza Australia Pty Ltd

First Respondent in NSD 1549 of 2023 / First Applicant in NSD 600 of 2024

Lavazza Australia OCS Pty Ltd

Second Respondent in NSD 1549 of 2023 / Second Applicant in NSD 600 of 2024

Procedural Posture

Appeal and Cross Appeal Against Orders Cancelling Trade Mark Registrations and Related Costs Orders / Full Court Appeal Determination

Legal Issues

  1. 1 Whether Molinari's prior use invalidates Cantarella's trade mark registrations under s 58 of the Trade Marks Act 1995 (Cth)
  2. 2 Whether the use of 'ORO' on Molinari packaging amounts to trade mark use in Australia before Cantarella's first use
  3. 3 Whether the registrations should be cancelled at the court’s discretion under s 88(1)

Ratio Decidendi

The appeal was dismissed because the Full Court found that the primary judge did not err in finding Molinari was the prior user of the 'ORO' trade mark in Australia, that use was as a trade mark, and there was no abandonment proved. Cantarella was not entitled to retain the registrations; concurrent use did not confer ownership under s 58, and the discretion under s 88(1) was properly exercised. Lavazza's application for leave to appeal costs was also refused; no error was found in the discount or refusal of indemnity costs.

Court Disposition

Appeal dismissed; application for leave to appeal dismissed; costs orders as per the reasons.

Orders

  • The appeal be dismissed.
  • The appellant pay the respondents' costs of the appeal, to be assessed if not agreed.