In this episode of Elise Explains IP, Elise breaks down how foreign words are treated under Australian trade mark law, and whether they can be considered descriptive — potentially undermining distinctiveness. We walk through the legal framework, practical examples, and what brand owners need to know when choosing and protecting trade marks that use words from another language.
Trade mark distinctiveness in Australia: All marks — including foreign words — must be capable of distinguishing your goods or services from others.
Ordinary Australian consumer test: A foreign word may be treated as descriptive if Australian consumers — or a relevant segment of the public — understand its meaning and see it as referring to the goods or services.
When foreign words may still qualify: Words that are obscure, not widely understood, or arbitrary in context can be registrable.
Brand strategy implications: Descriptive marks are hard to enforce and protect — early clearance and strategy are critical.
Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48
This High Court of Australia case considered whether the Italian words “ORO” (meaning “gold”) and “CINQUE STELLE” (“five stars”) were inherently adapted to distinguish coffee products under the Trade Marks Act 1995 (Cth). Cantarella succeeded on appeal, with the High Court holding that the marks were sufficiently distinctive and not directly descriptive for the relevant Australian audience.
Full judgment:
https://www.hcourt.gov.au/cases/case_s67-2014
If a foreign word is understood in Australia as simply describing a quality or characteristic of goods and services, it may be considered descriptive — which can lead to refusal of registration or vulnerability to cancellation. This episode helps you navigate these issues with examples, legal context, and strategic insights.
Trade mark clearance & strategy guidance
IP Audit Tool (link available via the show page)
