Gilbert + Tobin has successfully defended global coffee company Lavazza against trade mark infringement proceedings in the Federal Court brought by Cantarella Bros Pty Ltd, the purveyors of Vittoria coffee. On 20 October 2023, Justice Yates delivered a judgment in favour of Lavazza after a long and hard-fought legal battle.

Lavazza is an iconic global Italian coffee brand. It started in Turin in 1895 and its coffee has been imported into Australia for over 40 years. For all that time, its most popular coffee has been Lavazza Qualità Oro; “Oro” being the word for “gold” in Italian.

Cantarella alleged that Lavazza’s new packaging for its Lavazza Qualità Oro coffee infringed Cantarella’s trade mark registrations for ORO, and sought to capitalise on its previous success in the landmark High Court case relating to the ORO and CINQUE STELLE marks: Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48.

Gilbert + Tobin defended Lavazza including by challenging the validity of Cantarella’s ORO registrations.

In the judgment delivered by Justice Yates, Cantarella’s two registrations for the ORO trade mark were invalidated by the Court based on comprehensive and detailed evidence filed by Gilbert + Tobin relating to use of the ORO mark in Australia by another Italian coffee company, Caffè Molinari. This use pre-dated Cantarella’s first use of the mark which means that Cantarella is not the owner of the ORO trade mark in Australia. The invalidation of those registrations removed any basis for the allegations of trade mark infringement against Lavazza.

Siabon Seet stated, “We are very pleased to have obtained this result for Lavazza. Cantarella decided to file proceedings against Lavazza who had been selling Lavazza Qualità Oro coffee in Australia for more than 4 decades. Lavazza had no choice but to take all steps available to defend itself in a dispute it did not invite and did not wish to be involved in.”

This is a significant decision given it was Caffè Molinari’s local distributor (Modena Trading Pty Limited) that was previously defeated by Cantarella in the landmark High Court proceedings relating to the same ORO trade mark.

The Gilbert + Tobin team was led by IP partner, Siabon Seet, along with partner John Lee, and lawyers Annabelle Klimt, Natalie Zwar and Stephanie Leong. 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 (No 3) [2023] FCA 1258.