Using a foreign word in a brand name can feel clever, distinctive, or sophisticated. Many businesses assume that choosing a non-English word automatically gives them a stronger, more protectable trade mark.
Unfortunately, Australian trade mark law does not work that way.
Foreign words are assessed under the same legal framework as English words, and in many cases they can be just as descriptive — and just as vulnerable.
Distinctiveness Is the Starting Point
To be registrable in Australia, a trade mark must be capable of distinguishing your goods or services from those of others.
Marks that merely describe:
This rule applies regardless of the language used.
How Australia Assesses Foreign Words
The key question is not what the word means in another country, but how it is understood in Australia.
Australian examiners and courts ask whether the ordinary Australian consumer, or the relevant section of the public, would:
This is particularly relevant in industries where foreign terms are commonly used or widely understood, such as:
The High Court and the Cantarella Bros Case
A leading Australian authority on this issue is the High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48.
The case concerned the Italian words ORO (“gold”) and CINQUE STELLE (“five stars”) used as trade marks for coffee.
A competitor argued that these words were descriptive of quality and therefore not capable of distinguishing Cantarella’s products. While that argument initially succeeded in the Federal Court, the High Court ultimately disagreed.
The High Court clarified several important principles:
When Foreign Words Can Still Work
Foreign words are not automatically doomed.
A foreign word may still be registrable if:
Why This Is a Branding Risk Issue
This issue goes far beyond legal technicalities.
Businesses regularly invest significant time, money, and goodwill into branding built around foreign words, only to discover later that:
Trade mark strategy should be part of the brand development process, not an afterthought once marketing assets are already live.
Key Takeaways
Foreign words can be powerful brand tools — but they are not a shortcut to distinctiveness.
Before committing to a name, it is critical to assess:
Unfortunately, Australian trade mark law does not work that way.
Foreign words are assessed under the same legal framework as English words, and in many cases they can be just as descriptive — and just as vulnerable.
Distinctiveness Is the Starting Point
To be registrable in Australia, a trade mark must be capable of distinguishing your goods or services from those of others.
Marks that merely describe:
- the nature of the goods or services,
- their quality or characteristics, or
- something traders might legitimately want to use,
This rule applies regardless of the language used.
How Australia Assesses Foreign Words
The key question is not what the word means in another country, but how it is understood in Australia.
Australian examiners and courts ask whether the ordinary Australian consumer, or the relevant section of the public, would:
- recognise the language, and
- readily understand the meaning of the word in context.
This is particularly relevant in industries where foreign terms are commonly used or widely understood, such as:
- food and beverage,
- fashion,
- wine and hospitality, and
- lifestyle and consumer brands.
The High Court and the Cantarella Bros Case
A leading Australian authority on this issue is the High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48.
The case concerned the Italian words ORO (“gold”) and CINQUE STELLE (“five stars”) used as trade marks for coffee.
A competitor argued that these words were descriptive of quality and therefore not capable of distinguishing Cantarella’s products. While that argument initially succeeded in the Federal Court, the High Court ultimately disagreed.
The High Court clarified several important principles:
- There is no special or additional test for foreign word marks.
- The same distinctiveness test applies to English and non-English words.
- What matters is how the words are understood in Australia, not their literal dictionary translation.
- It must be shown that Australian consumers would see the words as directly describing the goods or services.
- There must also be evidence that other traders need to use those words to honestly describe their goods.
When Foreign Words Can Still Work
Foreign words are not automatically doomed.
A foreign word may still be registrable if:
- it is obscure or not commonly understood in Australia,
- it has no clear descriptive connection to the goods or services, or
- it is used in an unexpected or arbitrary way.
Why This Is a Branding Risk Issue
This issue goes far beyond legal technicalities.
Businesses regularly invest significant time, money, and goodwill into branding built around foreign words, only to discover later that:
- the mark cannot be registered,
- protection is extremely narrow, or
- competitors are free to use similar language.
Trade mark strategy should be part of the brand development process, not an afterthought once marketing assets are already live.
Key Takeaways
Foreign words can be powerful brand tools — but they are not a shortcut to distinctiveness.
Before committing to a name, it is critical to assess:
- how Australian consumers are likely to understand it,
- whether it is descriptive in context, and
- whether it will actually function as a trade mark.