Caesarstone Ltd v Ceramiche Caesar SpA (No 2)

Case [2018] FCA 1096

FEDERAL COURT OF AUSTRALIA

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

File numbers: NSD 166 of 2015
NSD 1187 of 2015
NSD 1719 of 2015
Judge: ROBERTSON J
Date of judgment: 31 July 2018
Catchwords: TRADE MARKS – what trade mark was in fact used by the respondent – trade marks similar – whether deceptively similar – where no actual confusion – whether applicant had continuously used its trade mark before the priority date – whether use was authorised use under the control of applicant for the purposes of ss 7 and 8 of the Trade Marks Act 1995 (Cth) – if so, whether, for the purposes of s 58A, the respondent first used the similar trade mark before the applicant first used its trade mark – whether honest concurrent use of the two trade marks or “other circumstances” for the purposes of s 44(3) – exercise of s 44(3) discretion to accept application for registration, subject to conditions or limitations – whether, for the purposes of s 59, applicant not intending to use the trade mark in Australia in relation to the goods and/or services specified in the application – application under s 88 to rectify the Register by cancelling the registration of a trade mark – whether application made by an aggrieved person – whether any of the grounds established on which the registration of the trade mark could have been opposed – whether the ground established that because of the circumstances applying at the time when the application for rectification was filed, the use of the trade mark was likely to deceive or cause confusion – whether discretion under ss 88 and 89 should be exercised against rectification
Legislation:

Trade Marks Act 1995 (Cth) ss 7, 8, 10, 14, 44, 57, 58A, 59, 88 and 89

Trade Marks Regulations 1995 (Cth) r 8.2

Cases cited:

Australian Broadcasting Corporation v Commercial Radio Australia Ltd [2010] ATMO 46; 88 IPR 376

Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; 58 CLR 641

Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43;129 CLR 353

Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337

Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2015] ATMO 12; 111 IPR 598

Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2015] ATMO 83

Clark v Sharp (1898) 15 RPC 141

Crazy Ron’s Communication Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; 209 ALR 1

Daiquiri Rum Trade Mark [1969] RPC 600

Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company [2018] FCA 1014

E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144

Frigiking Trade Mark [1973] RPC 739

General Electric Co v The General Electric Co Ltd [1973] RPC 297

Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590

Johnson & Johnson v Kalnin

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Details
AGLC
Caesarstone Ltd v Ceramiche Caesar SpA (No 2) [2018] FCA 1096
Case
[2018] FCA 1096
Decision Date

CaseChat Overview and Summary

Caesarstone Ltd sought to cancel the registration of a trade mark held by Ceramiche Caesar SpA on the grounds that it was deceptively similar to Caesarstone Ltd's trade mark. The Federal Court of Australia was required to determine whether the trade marks were deceptively similar, whether the applicant had continuously used its trade mark before the priority date, and whether the respondent first used the similar trade mark before the applicant first used its trade mark. The Court was also required to determine whether there was honest concurrent use of the two trade marks or "other circumstances" for the purposes of s 44(3) of the Trade Marks Act 1995 (Cth). Additionally, the Court was required to determine whether the discretion under ss 88 and 89 should be exercised against rectification.

The Court found that the trade marks were not deceptively similar, and that Caesarstone Ltd had continuously used its trade mark before the priority date. The Court also found that Ceramiche Caesar SpA first used the similar trade mark before Caesarstone Ltd first used its trade mark. However, the Court found that there was honest concurrent use of the two trade marks, and that there were "other circumstances" for the purposes of s 44(3). The Court exercised its discretion to accept the application for registration, subject to conditions or limitations. The Court also found that the applicant was not intending to use the trade mark in Australia in relation to the goods and/or services specified in the application. Therefore, the Court refused the application for rectification of the Register.

Orders

Orders of the court

1. By 14 August 2018, after conferring, the parties are to file a joint document indicating where, if at all, it is claimed that the reasons for judgment contain information in respect of which a non-publication order has been made or should be made. Where a non-publication order has not been made, an affidavit in support of each claim is to be filed by the same date.

2. By 28 August 2018, Ceramiche Caesar is to provide its proposed form of orders, including orders as to costs, to Caesarstone.

3. By 4 September 2018, Caesarstone is to respond to the form of orders proposed by Ceramiche Caesar in accordance with order 2.

4. By 10 September 2018, a document is to be filed with the Court, setting out the parties’ proposed form of orders, either in an agreed form or setting out the differences between the parties.

5. If there is a dispute between the parties in relation to the proposed form of orders, including orders as to costs:

(i) by 17 September 2018, Ceramiche Caesar is to file and serve short written submissions, limited to 5 pages, in support of the orders for which it contends and which are in dispute;

(ii) by 24 September 2018, Caesarstone is to file and serve its corresponding submissions answering the submissions of Ceramiche Caesar.

Each set of submissions made in accordance with this order, order 5, should state whether or not the parties are content for the form of orders, including orders as to costs, to be determined on the papers.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

In the circumstances of this case, there should be conformity of result in relation to registration for the word mark Caesarstone in respect of certain services in Classes 35 and 37. I will hear the parties accordingly.Conclusion and orders The parties should also have an opportunity to ensure that these reasons contain no information in respect of which a non-publication order has been made or should be made. Fourteen days seems appropriate for that task to be completed and for a joint document filed with the Court. It was common ground that the parties should have an opportunity to frame orders to give effect to these reasons. For example, Caesarstone submitted that it appeared that at least in relation to Class 19 for countertops and vanity tops, Ceramiche Caesar was content for that registration to proceed and a specific order to that effect might be required in order for that to occur. See also [754] and [782] above. The orders I make for this purpose are as follows:1.By 14 August 2018, after conferring, the parties are to file a joint document indicating where, if at all, it is claimed that the reasons for judgment contain information in respect of which a non-publication order has been made or should be made. Where a non-publication order has not been made, an affidavit in support of each claim is to be filed by the same date.2.By 28 August 2018, Ceramiche Caesar is to provide its proposed form of orders, including orders as to costs, to Caesarstone. 3.By 4 September 2018, Caesarstone is to respond to the form of orders proposed by Ceramiche Caesar in accordance with order 2. 4.By 10 September 2018, a document is to be filed with the Court, setting out the parties’ proposed form of orders, either in an agreed form or setting out the differences between the parties. 5.If there is a dispute between the parties in relation to the proposed form of orders, including orders as to costs:(i)by 17 September 2018, Ceramiche Caesar is to file and serve short written submissions, limited to 5 pages, in support of the orders for which it contends and which are in dispute;(ii)by 24 September 2018, Caesarstone is to file and serve its corresponding submissions answering the submissions of Ceramiche Caesar.Each set of submissions made in accordance with this order, order 5, should state whether or not the parties are content for the form of orders, including orders as to costs, to be determined on the papers.

Ratio Decidendi

Legal Principle Established

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