Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 3)

Caesarstone Ltd took legal action against Ceramiche Caesar S.p.A. in the Federal Court of Australia over trade mark disputes. Caesarstone, which manufactures composite stone tiles, sought to amend its trade mark registrations to include a wider range of goods, while Ceramiche Caesar opposed these amendments. The case centered on the appropriate form of orders to be made regarding the trade marks and the costs associated with the proceedings. The dispute also involved whether the trade marks could be amended to cover goods and services in various classes, including Class 19 (building construction materials), Class 20 (furniture), Class 35 (advertising and business management), and Class 37 (rebuilding services).

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.