Trade Mark News & Information

Trademark Lawyer – Federal Court – Caesarstone

Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 2) [2018] FCA 1096 (31 July 2018)

This involved an ongoing dispute between Caesarstone Ltd (previously Caesarstone Sdot-Yam Ltd) of Israel and Ceramiche Caesar SpA of Italy concerning three related matters.

1.       An appeal by the Israeli company from a Registrar’s decision upholding the Italian company’s opposition to registration in class 19 of the CAESARSTONE word mark by the Israeli company reported  here

2.       An appeal by the Israeli company from a Registrar’s decision upholding the Italian company’s opposition to registration in classes 19, 20, 35 and 37 of the Caesarstone Logo mark by the Israeli company reported  here

3.       A rectification action by the Italian company seeking cancellation of the Israeli company’s trade mark registration for the word mark CAESARSTONE covering various services in classes 35 and 37.

The Italian company was partly successful, although the Israeli company prevailed in regard to its CAESARSTONE word mark in respect of certain goods and services. Robertson J directed the parties to frame orders to give effect to the reasons and findings discussed below.

Background

The Italian company owns a trademark registration dating from 23 November 2004 for the CAESAR Logo mark shown below and covering “ceramic tiles for indoor and outdoor use” in class 19.

CAESAR Logo

The Italian company commenced selling ceramic wall and floor tiles in Australia under the CAESAR Logo mark in 1988.

The Israeli company owns an earlier trademark registration dating from 28 December 2000 for the word mark CAESARSTONE and covering “Worktops, sinktops; work surfaces and surrounds for kitchens, bathrooms, vanity units and offices, counter tops; table tops; bar tops; tops and facing surfaces for furniture, reception desks and reception areas” in class 20. This trademark registration was not part of the dispute.

The Israeli company’s application for the word mark CAESARSTONE subject of the first appeal was filed on 2 June 2005 and covers “Panels for floors, floor coverings, wall cladding, ceilings; non-metallic covers for use with floors and parts thereof; profiles and floor skirting boards; none of the foregoing being in the nature of tiles” in class 19.

The Israeli company’s application for the Caesarstone Logo mark shown below and subject of the second appeal was filed on 19 November 2007 ( with priority from 26 August 2007) and covers “Panels for floors, floor coverings not in the nature of tiles, wall cladding, flooring not in the nature of tiles, and ceilings; non-metallic covers for use with floors and parts thereof not in the nature of tiles; profiles and floor skirting boards; slabs formed of composite stone for building panels, counter tops, vanity tops, floors, stairs, and walls” in class 19; “Worktops, sinktops; work surfaces and surrounds for kitchens, bathrooms, vanity units and offices, counter tops; table tops; bar tops; tops and facing surfaces for furniture, reception desks and reception areas” in class 20; “Wholesale and retail services; wholesale and retail stores and wholesale and retail showrooms featuring tops and facing surfaces, work surfaces, surrounds, tiles, panels, floor coverings, wall cladding, flooring, ceilings, slabs and tiles formed of composite stone for building panels, counter tops, vanity tops, floors, ceilings, stairs, and walls; provision of commercial information relating to the aforesaid goods; offering consulting, support, marketing, promotional and technical assistance in the establishment and operation of distributorship, dealership, franchising, wholesale and retail stores that feature tops and facing surfaces, work surfaces and surrounds, tiles, panels, floor coverings, wall cladding, flooring, ceilings, slabs and tiles formed of composite stone for building panels, counter tops, vanity tops, floors, ceilings, stairs and walls” in class 35; and “Installation, maintenance and repair services of worktops, sinktops, work surfaces and surrounds for kitchens, bathrooms, vanity units and offices, counter tops, table tops, bar tops, tops and facing surfaces for furniture, reception desks and reception areas, tiles, panels for floors, floor coverings, wall cladding, flooring, ceilings, non-metallic covers for use with floors and parts thereof, profiles and floor skirting boards, slabs and tiles formed of composite stone” in class 37.

caesarstone & device

The Israeli company’s trademark registration for the word mark CAESARSTONE subject of the rectification action was filed on 19 November 2007 ( with priority from 26 August 2007) and covers “Wholesale and retail services; wholesale and retail stores and wholesale and retail showrooms featuring tops and facing surfaces, work surfaces, surrounds, tiles, panels, floor coverings, wall cladding, flooring, ceilings, slabs and tiles formed of composite stone for building panels, counter tops, vanity tops, floors, ceilings, stairs, and walls; provision of commercial information relating to the aforesaid goods; offering consulting, support, marketing, promotional and technical assistance in the establishment and operation of distributorship, dealership, franchising, wholesale and retail stores that feature tops and facing surfaces, work surfaces and surrounds, tiles, panels, floor coverings, wall cladding, flooring, ceilings, slabs and tiles formed of composite stone for building panels, counter tops, vanity tops, floors, ceilings, stairs and walls” in class 35 and “Installation, maintenance and repair services of worktops, sinktops, work surfaces and surrounds for kitchens, bathrooms, vanity units and offices, counter tops, table tops, bar tops, tops and facing surfaces for furniture, reception desks and reception areas, tiles, panels for floors, floor coverings, wall cladding, flooring, ceilings, non-metallic covers for use with floors and parts thereof, profiles and floor skirting boards, slabs and tiles formed of composite stone” in class 37.

The Israeli company commenced selling engineered quartz polymer products in slab form for work tops and surfaces in Australia under the CAESARSTONE mark in 1998.

The respective trade marks had been coexisting in Australia, but the dispute arose from the Israeli company’s attempt to extend its activities from work tops and surfaces to flooring and wall claddings, particularly splashbacks, which have the same function as the Italian company’s ceramic tiles.

In the first appeal, the Registrar’s delegate upheld the opposition under s44 based on the Italian company’s earlier registration for the CAESAR Logo mark. The delegate considered the Israeli company’s non-tile floor and wall claddings were similar goods to ceramic tiles. He also took the view that, in the context of these goods, the CAESARSTONE trade mark was deceptively similar to the registered CAESAR Logo mark. The delegate formed the view that the likelihood of deception or confusion is very high and declined to favourably exercise the honest concurrent use or other circumstances provisions in favour of the Israeli company.

In the second appeal, the Registrar’s delegate also upheld the opposition under s44 based on the Italian company’s earlier registration for the CAESAR Logo mark. The delegate regarded the Israeli company’s applied for goods in class 19 to be similar to those covered by the Italian company’s earlier registered CAESAR Logo mark, but its class 20 goods were sufficiently different. The delegate also regarded the Israeli company’s class 35 retail and wholesale services and class 37 installation, maintenance and repair services were, insofar as they extended to services provided in relation to ceramic tiles, closely related to the ceramic tiles covered by the Italian company’s registered CAESAR Logo mark. Not surprisingly, the delegate also considered the applied for CAESARSTONE Logo trade mark was deceptively similar to the Italian company’s earlier registered CAESAR Logo mark. The design element in the applied for mark did not make any appreciable difference to the comparison of the respective marks. The memorable and essential feature of both trade marks is the word CAESAR.

The delegate then went on to consider whether the Israeli company could satisfy the ‘honest concurrent use’ exception, but formed the view that the use being relied upon was not use of the composite mark sought to be registered. Rather, the Israeli company’s evidence related to use of the plain word CAESARSTONE and an earlier composite mark.

In case he was wrong on that aspect, the delegate went on to consider the Israeli company’s evidence. However, much of the evidence related to quartz slabs for use on work tops. The flooring applications for these slabs was after the relevant 2007 priority date. The delegate found that “any concurrent use of the trade marks is minimal, and either dated after the priority date, or was not in relation to the conflicting goods and services”. The delegate was also not prepared to apply the “other circumstances” exception even though the Israeli company had an earlier registration for its CAESARSTONE trade mark in class 20 covering worktops and work surfaces. The Israeli company’s evidence was insufficient to justify registration for the extended applications of its quartz slab products.

General findings

Robertson J found that, in most cases, the Italian company used the CAESAR Logo beneath the word CERAMICHE and that word would be readily understood as equivalent to the English word CERAMIC which lacks distinctiveness. This was not use as a composite mark. Rather, the word CAESAR was of first importance in recalling this mark.

His Honour considered a splashback is a wall cladding. Further, what is or is not a tile is largely answered by reference to the dimensions of the material in question. An unfabricated slab is not a tile but, once shaped by a stonemason into panels for floors or wall cladding, it then becomes in the nature of a tile. Class 19 is the correct class for the Israeli company’s slabs.

Robertson J found the applied for CAESARSTONE word and Logo marks of the Israeli company were deceptively similar to the Italian Company’s registered CAESAR Logo mark.

The class 19 goods of the Israeli company are similar to those class 19 goods covered by the Italian company’s registered CAESAR Logo mark. Further, the Israeli company’s class 35 and class 37 services are closely related to the class 19 goods covered by the Italian company’s registered CAESAR Logo mark because they include such services in respect of tiles.

The absence of actual confusion in the market does not support the Israeli company’s contention that the respective marks and the designated goods and services are relevantly distinguishable.

First appeal – opposition to CAESARSTONE word mark

Given the findings that the applied for CAESARSTONE word mark is deceptively similar to the Italian company’s registered CAESAR Logo mark and covers similar goods, the s44 ground of opposition was upheld.

Robertson J then went on to find the s44(4) prior continuous use provision could be applied. His Honour found the Israeli company had used its CAESARSTONE word mark continuously from April 2001 for splashbacks (and necessarily for walling and wall cladding) and flooring. There was also continuous use, from 2001, by the Israeli company’s Australian licensees of the CAESARSTONE word mark for wholesale services (but not retail services) in class 35. It’s Australian licensees also offered technical and warranty assistance including repairs and installation advice to consumers continuously from at least 2002. Importantly, this was authorised use of the CAESARSTONE word mark under the control of the Israeli company.

Nonetheless, his Honour found the Italian company could trump this by relying on s58A and its continuous use of a deceptively similar mark, namely its CAESAR Logo mark, in Australia from an earlier time, namely 1988.

However, s58A does not prevent the operation of the honest concurrent use provision under s44(3)(a) and Robertson J found in favour of the Israeli company on this; although his Honour did not consider it appropriate to apply the other circumstances provision under s44(3)(b) in favour of the Israeli company. After considering discretionary factors, his Honour indicated that the Israeli company’s class 19 goods should be subject to the express condition or limitation that they be formed of composite stone and that goods such as ceilings, non-metallic covers and profiles should be excised as they were not supported by use.

Robertson J rejected the Italian company’s contention that the Israeli company did not have an intention to use the CAESARSTONE word mark due to it entering a limitation to its specification that all of its relevant goods were not in the nature of tiles. That limitation did not subtract all content from the words which precede it.

Second appeal – opposition to Caesarstone Logo mark

Robertson J considered the swirl device element in this Logo mark was insignificant and his Honour’s findings in relation to the CAESARSTONE word mark applied equally to the Logo mark. However, the Israeli company did not rely on honest concurrent use or prior continuous use and so his Honour upheld the opposition under the s44 ground as the applied for mark was deceptively similar to the Italian company’s registered CAESAR Logo mark and covered similar goods and closely related services.

Rectification action

As a preliminary issue, Robertson J found the Italian company was a ‘person aggrieved’ and had standing to seek rectification.

Rectification under s88(2)(a) may be sought on any grounds on which registration of the trade mark may have been opposed. The Italian company relied on the same grounds as those discussed above under the first appeal.

His Honour’s conclusions regarding the CAESARSTONE word mark for class 19 goods subject of the first appeal applied to the rectification action against the CAESARSTONE word mark in respect of the services in classes 35 and 37. Robertson J also found that, as at the 26 August 2007 priority date, there was continuous use by the Israeli company of the CAESARSTONE word mark for wholesale services but not retail services in class 35. For class 37, there was continuous use for maintenance and repair services, but not for installation services. However, the Italian company had superior rights under s58A by virtue of is earlier use since 1988 of its CAESAR Logo mark for ceramic tiles.

His Honour did not directly discuss whether the Israeli company could rely on honest concurrent use of the CAESARSTONE word mark for wholesale services and/or maintenance and repair services relating to its composite stone slabs, splashbacks, wall cladding and flooring products; although it may be inferred from the general findings that it could do so.

A further ground of rectification under s88(2)(c) is that, because of the circumstances applying at the time when the application for rectification is filed (21 December 2015), the use of the trade mark is likely to deceive or cause confusion.

Deceptive similarity of the respective marks continued as at the 21 December 2015 date of the rectification action.

Robertson J found that the Italian company had established grounds for rectification under s88(2)(a) and (c) and indicated that, subject to s89 discussed below, he would not exercise the discretion in s 88 against rectification by cancelling the registration.

Under s89 the Court may decide not to grant an application for rectification on the ground that the trade mark is liable to deceive or confuse at the relevant time if the registered owner of the trade mark satisfies the Court that the ground relied on by the applicant for rectification has not arisen through any act or fault of the registered owner. Relevant considerations are the extent to which the public interest will be affected if registration of the trade mark is not cancelled; whether any circumstances that gave rise to the application have ceased to exist; and the extent to which the trade mark distinguished the relevant services before the circumstances giving rise to the application arose.

The discretion is enlivened if the Court is satisfied that the deceptive similarity has not arisen through any act or fault of Caesarstone. Robertson J considered the emphasis here is not limited to fault but to conduct connected with the ground of deceptive similarity. There are two relevant aspects of the public interest if the registration is not cancelled. The first is the issue of deceptive similarity, including no evidence of actual confusion, and the second is the Israeli company’s use of and reputation in the CAESARSTONE word mark for the relevant services. His Honour considered the public interest will be adversely affected if the Israeli company may no longer use the CAESARSTONE word mark for its services and favoured conformity of the outcome in the first appeal involving the CAESARSTONE word mark for goods and the issue of cancellation of registration of this word mark for the relevant services. However, his Honour found that that circumstances that gave rise to the application for rectification have not ceased to exist and that the CAESARSTONE word mark did not distinguish the relevant services before the circumstances giving rise to the application for rectification arose. His Honour did not attach any significant weight to the Italian company not opposing registration of the CAESARSTONE word mark for the relevant services.

Robertson J concluded that in the circumstances of this case, there should be conformity of result in relation to registration for the CAESARSTONE word mark in respect of certain services in Classes 35 and 37.