FEDERAL COURT OF AUSTRALIA
Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 3) [2019] FCA 7
File numbers: NSD 166 of 2015
NSD 1187 of 2015
NSD 1719 of 2015Judge: ROBERTSON J Date of judgment: 14 January 2019 Catchwords: TRADE MARKS – appropriate form of orders to give effect to reasons for judgment, particularly in relation to goods and services in Class 19, Class 20, Class 35 and Class 37 – appropriate costs order in proceedings before the Registrar where appeals allowed in light of evidence that was not before the Registrar
COSTS – appropriate order where parties have mixed success
Legislation: Trade Marks Act 1995 (Cth) ss 65, 88, 197 Cases cited: Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8; 202 FCR 490
Caesarstone Ltd v Ceramiche Caesar SpA (No 2) [2018] FCA 1096; 133 IPR 417
Frucor Beverages Ltd v Coca-Cola Company [2018] FCA 993; 358 ALR 336
Date of hearing: 8 November 2018 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 94 Counsel for Caesarstone Ltd: Mr T Cordiner QC with Ms R White Solicitor for Caesarstone Ltd: K&L Gates Counsel for Ceramiche Caesar S.p.A: Mr C Burgess with Ms EE Whitby Solicitor for Ceramiche Caesar S.p.A: Spruson & Ferguson Lawyers Pty Limited ORDERS
NSD 166 of 2015 BETWEEN: CAESARSTONE LTD
Appellant
AND: CERAMICHE CAESAR S.P.A.
Respondent
JUDGE:
ROBERTSON J
DATE OF ORDER:
14 JANUARY 2019
THE COURT ORDERS THAT:
1.Pursuant to s 197 of the Trade Marks Act 1995 (Cth), Australian Trade Mark Application No. 1058321 be amended so as to read:
Class 19: Panels for:
(i) floors;
(ii) floor coverings; and
(iii) wall cladding;
formed of composite stone slabs; none of the foregoing being in the nature of tiles.
2.Australian Trade Mark Application No. 1058321 proceed to registration for the goods in order 1.
3.The decision of the Registrar of Trade Marks by her delegate to refuse to register the trade mark, given on 4 February 2015 in respect of Australian Trade Mark Application No. 1058321, be set aside.
4.The decision of the Registrar awarding costs against Caesarstone be set aside.
5.The appeal be otherwise dismissed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
ORDERS
NSD 1187 of 2015 BETWEEN: CAESARSTONE LTD
Appellant
AND: CERAMICHE CAESAR S.P.A.
Respondent
JUDGE:
ROBERTSON J
DATE OF ORDER:
14 JANUARY 2019
THE COURT ORDERS THAT:
1.Pursuant to s 197 of the Trade Marks Act 1995 (Cth), Australian Trade Mark Application No. 1211153 be amended so as to read:
Class 19: Panels for floors, floor coverings and wall cladding; building panels, counter tops, vanity tops, floors, stairs, and walls;
all of the foregoing being formed of composite stone slabs; none of the foregoing being in the nature of tiles.
Class 20: Worktops, sinktops; work surfaces and surrounds for kitchens, bathrooms, vanity units and offices, counter tops; table tops; bar tops; tops…
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- Case
- [2019] FCA 7
- Decision Date
CaseChat Overview and Summary
The court was required to decide whether the trade mark registrations could be amended to include goods in Class 19, specifically "tiles," despite an express exclusion in the original application. The court also needed to determine the appropriate costs order given the mixed success of the parties in the proceedings before the Registrar. The central issue was whether the exclusion of goods "in the nature of tiles" could be ignored, and if not, what form of orders would be appropriate to give effect to the reasons for the judgment.
In its reasoning, the court found that the express exclusion of goods "in the nature of tiles" should not be ignored, as it would extend the rights under the registration beyond what was originally intended. The court rejected Caesarstone's argument that the power in s 197 of the relevant Act should allow for the amendment of the registration to include these goods. The court also dismissed Caesarstone's reliance on s 88 in this context, noting that it was not engaged as there was no application for rectification. Regarding costs, the court ordered that Ceramiche Caesar pay 50% of Caesarstone’s costs in the three proceedings, to be assessed and awarded as a single lump sum by a Registrar.
The court's final orders required Ceramiche Caesar to pay 50% of Caesarstone's costs in the three proceedings, with the amount to be determined by a Registrar. This order was made to reflect the mixed success of the parties and to ensure that the costs were assessed and awarded efficiently. The entry of orders is governed by Rule 39.32 of the Federal Court Rules 2011.
Orders
Orders of the court
1. Ceramiche Caesar pay 50% of Caesarstone’s costs in the three proceedings, those costs being assessed as if the three proceedings were a single proceeding, awarded in a single lump sum in an amount to be determined by a Registrar.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
In oral submissions, Caesarstone submitted that it had succeeded on the fundamental issue in dispute which was honest concurrent use of its trade marks in relation to wall cladding and flooring. Further, the delegate found that Caesarstone’s applications for registration should not proceed at all whereas the Court would make orders which would amount to those applications proceeding substantively for everything which Caesarstone could possibly want. Caesarstone appealed and succeeded in overturning the delegate’s decisions that there should be no trade marks going forward. That was a legal outcome of significance. As to the rectification application, Ceramiche Caesar sought complete removal or cancellation of the trade mark whereas now the appropriate order was for amendment of the registration. Ceramiche Caesar did not succeed in the relief sought. The real matter in dispute, Caesarstone submitted, was whether or not it had prior continuous use and, if not that, did it have honest concurrent use, each giving rise to the same factual scenario and questions. Caesarstone submitted the Court had found in its favour in both of those respects. ConsiderationNSD 166 of 2015 concerning the first mark Tiles can be made of composite stone. Goods “in the nature of tiles” were expressly excluded in the original application and, consistently with s 65(7), may not now be included. Although the drafter may not have understood the overlap between goods made of composite stone and tiles, such that the exclusion creates uncertainty, I do not see that the express exclusion of goods “in the nature of tiles” may now be ignored. I refer in this respect to the Reasons at [756] where I held that the limitation did not subtract all content from the words which preceded it. If goods “in the nature of tiles” were not excluded then the rights that the registration would give would be extended to cover tiles. I refer to the judgment of Yates J in Frucor Beverages Ltd v Coca-Cola Company [2018] FCA 993; 358 ALR 336, particularly at [204]. I do not accept the contrary submission on behalf of Caesarstone by reference to Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8; 202 FCR 490 that the power in s 197 should only be circumscribed by the objects or purposes of the Act with the result, as I understood it, that the Court could, as a matter of discretion, allow an amendment to an application even where the amendment would have the effect of extending the rights the applicant would have under the registration if it were granted. Assuming such a discretion exists, I would not exercise it in the present case to remove a fundamental exclusion for goods “in the nature of tiles”. Further, I do not accept Caesarstone’s reliance on s 88 in this context both because there is no application for rectification and also because it is not apparent that any of the grounds in s 88(2) are engaged. Insofar as s 88 is not relied on as a source of power in the present circumstances but by analogy so as to inform s 197, I am not persuaded that the specific power in s 88 assists in the construction of s 197 which is directed to the hearing of appeals against a decision or direction of the Registrar. For example, s 88 is enlivened by an application by either the Registrar or by an aggrieved person for the rectification of the Register.