Marianna Papadakis Reporter

Marianna writes for The Australian Financial Review and Business Review Weekly from the Sydney newsroom. She has an interest in legal affairs, technology and business.

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Vittoria Coffee wins court battle with car dealer over trademarks

Published 14 February 2013 12:02, Updated 20 February 2013 07:31

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Vittoria Coffee wins court battle with car dealer over trademarks

Vittoria has won its battle over the of use the ‘Oro’ trademark worn by its coffee. Photo: Supplied

The producers of Vittoria coffee, Cantarella Bros, woke up to a sweeter cup than usual after it won a two-year trademark dispute against a prominent Australian prestige car dealer.

Cantarella won its trademark claim against coffee importer Modena Trading, which was bringing in Italian made products by Molinari that used its “Cinque Stelle” and “Oro” trademarks.

Modena is owned by Sydney and Melbourne prestige car dealer Ian Pagent and his daughter, Amanda Pagent.

The dispute has seen the long-standing friendship between Mr Pagent and Cantarella’s chief executive Les Schirato turn bitter.

Deals are often struck over a cup of coffee and this dispute arose after Mr Schirato bought company cars through Mr Pagent in exchange for the supply of Vittoria coffee to the car dealership lounges and Mr Pagent’s restaurants, including the award-winning MG Garage and Fuel Bistro at Sydney’s Surry Hills.

The relationship went sour in 2010, when Modena began importing Molinari products bearing Vittoria’s Cinque Stelle and Oro labels to sell to cafes, bars and restaurants. These make about $140,000 a month for Modena.

Mr Schiarato said Cantarella had produced millions of coffee packs bearing these trademarks and he was disappointed that the two required the court to finally settle the matter.

Cantarella sold nearly 3.6 tonnes of Oro-branded coffee from 2000 to 2011, equating to more than 511 million cups, and used actor Al Pacino in its television advertising campaign.

“We have been roasting coffee in Australia since 1958. Over that time we have built a significant reputation and consumer trust in all our trademarks. We are committed to protecting our intellectual property rights,” Mr Schiarato said.

Cantarella’s annual turnover for its Australian and international businesses is about $200 million.

Cinque Stelle means “five stars” in Italian and Oro means “gold”.

Modena had contended the usage of both terms was commonplace to indicate top quality and was used by dozens of Italian-style coffee traders, including Lavazza Coffee.

In a judgment, highly instructive of the history of coffee supply and production in Australia, as well as coffee quality testing, Justice Arthur Emmett ruled that if the terms were registered in English there would be no doubt they would not be considered distinctive.

But as there were a limited number of Italian speakers in Australia, the trademarks were valid.

Cantarella, however, will not be gulping down to celebrate its success after it lost its claim for damages.

Modena was found not to have engaged in misleading and deceptive conduct or having passed off its products as Cantarella’s, which has a well-established reputation.

Coffee roasting in Australia has grown from two or three multinational companies and a handful of family businesses to an industry with about 350 coffee roasters now supplying the increasing demand for high-quality coffee.

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