In 2019 Cantarella filed trade mark infringement proceedings against Lavazza, alleging that the new packaging of Lavazza Qualità Oro coffee, a product it had sold in Australia for over four decades, infringed Cantarella’s ORO trade marks. Lavazza defended the claims and filed a cross-claim challenging the validity of Cantarella’s ORO registrations.
In 2023, Justice Yates of the Federal Court ruled that Cantarella’s Australia ORO trade marks were invalid and should be cancelled because Cantarella was not the first user and owner of the ORO trade mark in Australia. Lavazza’s evidence established that first use of the ORO mark in Australia was by another Italian coffee company, Caffè Molinari in the mid-1990s. This also meant that there was no basis for Cantarella’s infringement claim to succeed.
On appeal, Cantarella argued there were errors in the factual findings made by Justice Yates concerning Caffè Molinari’s early shipments of its Oro coffee to Australia and its use of ORO as a trade mark. Cantarella also raised for the first time an alternative argument that it was a “concurrent owner” of the ORO trade mark in Australia with Caffè Molinari.
In the Full Court’s judgment, delivered by Justices Nicholas, Jackson and Rofe, the Court upheld Justice Yates’ factual findings concerning first use of the ORO trade mark and unanimously dismissed the appeal with costs.
Lead partner on the case, Siabon Seet, stated:
We are delighted to have succeeded for Lavazza in this appeal. This outcome reinforces Lavazza’s strong commitment to protecting its brand and intellectual property rights in Australia. Once again, it highlights G+T’s complete focus on defending our clients’ rights and successfully supporting them through the most fiercely contested cases.
The Gilbert + Tobin team was led by partners Siabon Seet, John Lee, and included lawyers Annabelle Klimt, Jodie Lilir, Stephanie Leong and Louisa Sinclair. Counsel for Lavazza were Richard Cobden SC, Ed Heerey KC and Gabriella Rubagotti.
The decision is Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2025] FCAFC 12.
