Caesarstone Ltd v Ceramiche Caesar SpA (No 2)
[2018] FCA 1096
•31 July 2018
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 2015Judge: 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 [1993] FCA 279; 114 ALR 215
K-Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149
Lodestar Anstalt v Campari America LLC [2016] FCAFC 92; 244 FCR 557
London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264
Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27; 166 FCR 312
McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102
MID Sydney Pty Ltd v Australian Tourism Company Ltd (1998) 90 FCR 236
Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd [2012] FCA 1022; 97 IPR 183
Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; 275 ALR 526
QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553
Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407
Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252
Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901; 132 FCR 326
Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; 294 ALR 661
Davison, M and Horak, I, Shanahan’s Australian Law of Trade Marks and Passing Off (6th ed, Thomson Reuters, 2016)
Date of hearing: 27 March – 3 April 2017 Date of last submissions: 13 April 2017 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 785 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
NSD 1187 of 2015 BETWEEN: CAESARSTONE LTD
Appellant
AND: CERAMICHE CAESAR S.P.A.
Respondent
NSD 1719 of 2015 BETWEEN: CERAMICHE CAESAR S.P.A.
Applicant
AND: CAESARSTONE LTD
Respondent
JUDGE:
ROBERTSON J
DATE OF ORDER:
31 July 2018
THE COURT ORDERS THAT:
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.
REASONS FOR JUDGMENT
ROBERTSON J:
Introduction
[1]
The decisions under appeal
[8]
The issues
[20]
The statutory provisions
[31]
The evidence
[41]
Ceramiche Caesar’s evidence
[41]
Caesarstone’s evidence
[136]
The parties’ submissions
[447]
Ceramiche Caesar’s submissions
[447]
Caesarstone’s submissions
[548]
Consideration
[659]
General
[659]
First disputed mark, trade mark No. 1058321, the priority date by reference to which the claims were to be assessed being 2 June 2005
[694]
Second disputed mark, trade mark No. 1211153, the priority date by reference to which the claims were to be assessed being 26 August 2007.
[757]
Rectification action in which Ceramiche Caesar applied for the cancellation of the third disputed trade mark under s 88(1)
[762]
Conclusion and orders
[783]
Introduction
There are three proceedings before the Court:
(a)Proceedings NSD166/2015 and NSD1187/2015 were appeals brought by Caesarstone Sdot-Yam Ltd, now named Caesarstone Ltd, (Caesarstone) pursuant to s 56 of the Trade Marks Act 1995 (Cth) (the Trade Marks Act) from two decisions of the Registrar of Trade Marks to reject Caesarstone’s applications to register:
(i)trade mark application No. 1058321 for the word mark CAESARSTONE filed in Class 19 (Decision 1: Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2015] ATMO 12; 111 IPR 598; and
(ii)trade mark application No. 1211153 for the CAESARSTONE Device mark filed in Classes 19, 20, 35 and 37 (Decision 2: Ceramiche Caesar SpA vCaesarstone Sdot-Yam Ltd [2015] ATMO 83).
and
(b)Proceeding NSD1719/2015 was a rectification application brought by Ceramiche Caesar S.p.A (Ceramiche Caesar) pursuant to s 88 of the Trade Marks Act to cancel Caesarstone’s Trade Mark Registration No. 1211152 for the word mark CAESARSTONE in respect of certain services in Classes 35 and 37.
Caesarstone’s relevant trade marks were:
(a)Australian trade mark application No. 1058321 for CAESARSTONE in Class 19 (the Caesarstone Goods Word mark);
(b)Australian trade mark application No. 1211153 for the following mark in Classes 19, 20, 35 and 37 (the CAESARSTONE Device mark):
(c)Australian registered trade mark No. 1211152 for CAESARSTONE in Classes 35 and 37 (the Caesarstone Services Word mark).
Ceramiche Caesar’s device mark, the CÆSAR Device mark was:
Not in issue was Caesarstone’s Trade Mark Registration No. 861751 for the word mark CAESARSTONE in Class 20 with a priority date of 28 December 2000, as follows:
Class 20: 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
Counsel for Ceramiche Caesar accepted that his client bore the ultimate onus of establishing that the three Caesarstone trade marks should not enjoy statutory protection under the Trade Marks Act.
By way of introduction, Ceramiche Caesar is an Italian manufacturer of ceramic tiles for indoor and outdoor flooring and wall cladding. It has manufactured and distributed its tile products under the CÆSAR Device mark (together with the word mark CAESAR) in many countries, currently about 90 countries. Since 1988, Ceramiche Caesar has promoted, manufactured and sold substantial quantities of its CAESAR branded tile products in Australia. Ceramiche Caesar’s tiles are made of porcelain stoneware, a type of ceramic that is made by grinding, mixing and pressing raw materials (such as quartz, kaolin, feldspar and clay) into slabs that are heated at approximately 1,200°C to achieve vitrification of the slab. Ceramiche Caesar promotes its tile products by reference to the ceramic material of which they are made. It registered the CÆSAR Device mark in Australia in November 2004. That priority date preceded the later (2005 and 2007) priority dates of the disputed Caesarstone trade marks.
Similarly by way of introduction, Caesarstone is an Israeli company which was founded in 1987. It manufactures and distributes engineered quartz surfaces that are composed of quartz combined with polymers and pigments in the form of slabs and are used as an alternative to natural stone, such as marble and granite, and can be used for the same applications as one would use a natural stone product. The Caesarstone slabs have been sold in Australia since approximately 1998. The underside of all Caesarstone slabs are, and have been since 1987, marked with and promoted by the Caesarstone Word mark. From 2003, Caesarstone distributed its products through two licensees, Carsilstone Pty Ltd (Carsilstone) and Tessera Stones and Tiles Pty Ltd (Tessera). Caesarstone now has an Australian subsidiary, Caesarstone Australia Pty Ltd (Caesarstone Australia), incorporated in September 2006.
The decisions under appeal
In matter NSD166/2015, Caesarstone’s application filed on 2 June 2005 to register the Caesarstone Word mark was examined and accepted for possible registration in respect of the following goods:
Class 19: 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
Ceramiche Caesar filed a notice of opposition to registration of the trade mark which, by Decision 1, was granted by a delegate of the Registrar of Trade Marks on 4 February 2015. The delegate said the products were composed of reconstituted quartz stone. The products were intended for use in bathrooms, as bench and kitchen countertops and splashbacks, or as wall cladding and flooring. Caesarstone first used the trade mark in Australia in 1998. Caesarstone owned registration 861751 for the trade mark: see [4] above.
The delegate found that the goods were at least of the same description as Ceramiche Caesar’s goods. He found, at [43], that the likelihood of confusion or deception was very high. He found that it was almost inevitable that a substantial number of people would be confused or deceived by use of the trade mark. Accordingly, the delegate found that Ceramiche Caesar had made a case under s 44(1) of the Trade Marks Act and so, as the applicant acknowledged and argued, it bore the onus of proof to show that s 44(3) applied on the facts. The delegate, at [59], refused to apply s 44(3)(a). He added that there was nothing to cause him to think that s 44(3)(b) might apply instead.
In matter NSD1187/2015, Caesarstone, by application filed on 19 November 2007, sought registration for the CAESARSTONE Device mark in Classes 19, 20, 35 and 37 under application 1211153.
Those classes were as follows:
Class 19: 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
Class 20: 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
Class 35: 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
Class 37: 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
Caesarstone agreed to amend its specification in Class 19 to remove the item “tiles” and qualify certain items in that class as being not in the nature of tiles.
Ceramiche Caesar filed a notice of opposition to the registration of the trade mark which, by Decision 2, was granted by a delegate of the Registrar of Trade Marks on 9 September 2015. At [26], the delegate said that some of Caesarstone’s goods in Class 19 had been qualified as being “not in the nature of tiles” namely “floor coverings not in the nature of tiles”; “flooring not in the nature of tiles” and “non-metallic covers for use with floors and parts thereof not in the nature of tiles”, whereas items such as “slabs formed of composite stone for ….floors, stairs…” were unqualified. Regardless, the qualification “not in the nature of tiles” did not change the application of those goods as they remained flooring. Panels, slabs and tiles may differ in their nature, but they will be purchased by the same customer through the same trade channels for the same purpose.
At [27], the delegate said the actual nature of the use conducted by Caesarstone was irrelevant at that point as the “question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained”: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 at [50].
At [28], the delegate found that the goods in Class 19 of Caesarstone’s specification were similar (being goods of the same description) as the goods in Class 19 of Ceramiche Caesar’s specification. The delegate did not find that Caesarstone’s Class 20 goods were similar to the goods in Class 19 of Ceramiche Caesar’s specification.
At [34], the delegate found that Ceramiche Caesar’s ceramic tiles were closely related to Caesarstone’s services involving the retail and wholesale, installation, maintenance and repair of those goods.
At [39], the delegate found that Caesarstone’s trade mark was deceptively similar to Ceramiche Caesar’s trade mark. The delegate went on to consider whether the exceptions provided for under s 44(3) of the Trade Marks Act were applicable.
At [54], the delegate concluded that it was not appropriate to apply s 44(3)(a). At [58], the delegate concluded that it was not appropriate to apply s 44(3)(b).
The issues
During the course of the proceeding before me, there was a concession by Ceramiche Caesar that:
Ceramiche Caesar S.p.A does not press its grounds of opposition pursuant to sections 42(b) and 60 of the Act with respect to Australian trademark nos. 1058321, 1211152 and 1211153.
There were also concessions by Caesarstone in the following terms:
1. For the purposes of these proceedings, Caesarstone Ltd does not press that the goods claimed in class 19 for Australian trade mark application nos. 1058321 and 1211153 filed in the name of Caesarstone Ltd are not similar goods to the goods claimed in Australian trademark no. 1031251 registered to Ceramiche Caesar S.p.A.
2. For the purposes of these proceedings, Caesarstone Ltd does not rely on proving “predecessor in title” pursuant to section 44 of the Trade Marks Act 1995 (Cth)…
None of the priority dates were in dispute in the proceedings.
The major points of contention between the parties were as follows.
One issue was whether the name and trade mark being projected to the market was “Caesar” rather than “Ceramiche Caesar”. A related issue was whether the word “ceramic” or “CERAMICHE” was an additional alteration that affected the identity of the trade mark. Caesarstone’s contention was that the error in the delegates’ decisions was that each of them failed to have proper regard to the lack of distinctiveness in the name “Caesar” and the effect that had on a proper consideration of whether or not there was deceptive similarity.
There was an issue as to the proper identity of a tile, Caesarstone asserting that their slabs were too big to be tiles, by way of thickness or by way of other dimensions.
There was a dispute about prior use for s 44(4), earlier use for s 58A and intention to use for s 59. The issue of use “under the control of” Caesarstone for ss 7 and 8 was significant.
There was a dispute about the uses of the goods. Ceramiche Caesar submitted that bathroom floors were one example where there was a high likelihood of confusion if Caesarstone were permitted to obtain registration. It was contended that there was a likelihood of confusion in respect of flooring and walling applications.
Substantial time was spent on the question of “splashback” surfaces. Ceramiche Caesar accepted that a splashback is a surround for a kitchen, relevant to Class 20 goods. Caesarstone submitted that splashbacks were not identified separately in the Class 19 goods in respect of which it sought registration. It submitted that use of the product as a splashback was sufficient to give registration in relation to wall cladding generally.
There was a dispute over the channels to the market for Ceramiche Caesar’s tiles and what were common trade channels as between Ceramiche Caesar and Caesarstone. One example was architects, interior designers and developers. Another was retailers who sold tiles and slabs that may be looked at in showrooms and then purchased through those retailers.
Counsel for Ceramic Caesar submitted there was no dispute that the parties could exist concurrently in the Australian market, where Caesarstone’s use of its products was for the kitchen counter top, bathroom counter top, vanity units and splashback surfaces specified in the Class 20 Caesarstone registration. The dispute was about Caesarstone’s wish to extend, by the disputed trade marks, the scope of its registered trade mark rights from those uses, into Ceramiche Caesar’s area of registered trade mark protection which was tiles predominantly used in flooring and wall cladding: it was this extension of Caesarstone’s trade mark rights that was held by the Registrar’s delegates to give rise to a very high likelihood of deception or confusion.
In the rectification application, additional issues included whether Ceramiche Caesar was an aggrieved person and the exercise of the discretions in ss 88 and 89.
The statutory provisions
The relevant provisions of the Trade Marks Act were as follows.
Sections 7 and 8 provided:
7 Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note: For prescribed court see section 190.
(2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4) In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).
(5) In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
8 Definitions of authorised user and authorised use
(1)A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2)The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3) If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If:
(a)a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b)the owner of the trade mark exercises financial control over the other person’s relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5)Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).
By s 10, for the purposes of the Trade Marks Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
Section 14 provided:
14 Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
Section 44 provided:
44 Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Section 58A provided:
58A Opponent’s earlier use of similar trade mark
(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b)a similar provision of the regulations made for the purposes of Part 17A.
Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b)has continuously used the similar trade mark in respect of those goods or services since that first use.
Note: For predecessor in title see section 6.
Section 59 provided:
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
Section 88 provided:
88 Amendment or cancellation—other specified grounds
(1)Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:
(a) cancelling the registration of a trade mark; or
(b)removing or amending an entry wrongly made or remaining on the Register; or
(c)entering any condition or limitation affecting the registration of a trade mark that ought to be entered.
(2)An application may be made on any of the following grounds, and on no other grounds:
(a)any of the grounds on which the registration of the trade mark could have been opposed under this Act;
(b)an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation;
(c)because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion;
(e)if the application is in respect of an entry in the Register—the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation.
Note 1: For prescribed court see section 190.
Note 2: For file, registered owner and this Act see section 6.
Section 89 provided:
89Rectification may not be granted in certain cases if registered owner not at fault etc.
(1) The court may decide not to grant an application for rectification made:
(a) under section 87; or
(b)on the ground that the trade mark is liable to deceive or confuse (a ground on which its registration could have been opposed, see paragraph 88(2)(a)); or
(c) on the ground referred to in paragraph 88(2)(c);
if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner.
Note: For registered owner see section 6.
(2) In making a decision under subsection (1), the court:
(a) must also take into account any matter that is prescribed; and
(b)may take into account any other matter that the court considers relevant.
The “matter that is prescribed” for the purposes of s 89(2)(a) was set out in r 8.2 of the Trade Marks Regulations 1995 (Cth) as follows:
8.2 Amendment or cancellation—matters for the court
For the purposes of paragraph 89(2)(a) of the Act (which deals with amendment or cancellation by a prescribed court), a prescribed court, in making a decision under subsection 89(1) of the Act on an application for rectification of the Register, must take into account the following matters, so far as they are relevant:
(a)the extent to which the public interest will be affected if registration of the trade mark is not cancelled;
(b)whether any circumstances that gave rise to the application have ceased to exist;
(c)the extent to which the trade mark distinguished the relevant goods and/or services before the circumstances giving rise to the application arose;
(d)whether there is any order or other remedy, other than an order for rectification, that would be adequate in the circumstances.
The evidence
Ceramiche Caesar’s evidence
Ceramiche Caesar’s general catalogues for the years 1993 to 2007 were tendered, relating to the issue of continuity of usage. There was no dispute that continuity was proved after the priority date 2007, the priority date of the second and third disputed trade marks. Its general catalogue for 2015 was also tendered. 2015 was the year the rectification suit was filed, so Ceramiche Caesar sought to establish affairs as they stood in that year.
Ceramiche Caesar published and distributed an annual general catalogue to promote its product lines in each year since 1988. I find that the annual catalogues were distributed by Ceramiche Caesar to its Australian customers in the corresponding year for the purpose of those customers providing the catalogues to their own clients and displaying them in their showrooms. I accept the catalogues were also distributed, in 1994 to 1996, 1997 to 2007 and from 2011 to Ceramiche Caesar’s local Australian sales agent for the purposes of distribution by that agent to potential future customers of Ceramiche Caesar.
The general catalogue for 1993 had on its cover, at the bottom of the page, the following:
On page 1, it was said: “CERAMICHE CAESAR”, founded on decades of experience in the sector, was established in 1988 to produce Fine Porcelain Stoneware.” It was also said, later on that page, that the firm’s output “places Caesar among the leading companies in the sector.”
The same applied to the general catalogues for each of the years 1994-1997. For 1996 and 1997 the words “the continuous investments put in research and the excellent quality of the product” also appeared.
In the general catalogue for 1998, the cover page was the same as the previous years and the introductory prose in English was to the same effect, the firm also being referred to as “Caesar Ceramics”. That catalogue also contained the following photograph:
For the general catalogues for 1999-2001, the image at [43] above was at the top of the cover page rather than the bottom. Each also included the photograph at [45] above.
The introductory prose was as follows:
Ceramiche Caesar was founded in 1988 to produce PORCELAIN STONEWARE.
…
The vast range of products available has placed Caesar Ceramics within the leading companies in this sector.
To confirm the importance that the company has always dedicated to total quality, Caesar Ceramics obtained in 1996 the ISO 9001 certification…
Ceramiche CAESAR is the first Italian manufacturer of ceramic tiles to obtain the prestigious ISO 14001…
For the years 2002-2007 the image at [43] above returned to the bottom of the cover page.
The photograph at [45] above was included in the general catalogues for each of 2002-2005 but not in the catalogues for 2006-2007.
In the general catalogue for 2002 the introductory prose was as follows:
Since 1988 Caesar has been synonymous with top quality porcelain stoneware, the perfect union between technology performance, functionality and aesthetics.
…
Caesar’s porcelain stoneware is distributed in over 80 countries throughout the world. It is used both for flooring and cladding in installations and projects of diverse natures.
The same prose also appeared in the general catalogues for 2003-2007.
The following photograph also appeared at the beginning of the general catalogues for the period 2002-2007:
For 2015, the image at [43] above remained at the bottom of the cover page. The photograph at [45] above was not included, although there were other photographs of the same building. The references in the prose are to “Caesar”, with one photographs of the CÆSAR Device mark alone and another with “Ceramiche” appearing above that mark.
Mr Adolfo Tancredi was the Chief Executive Officer “of the Caesar tiles business of Ceramiche Caesar S.p.A” and he had held that position since November 2006. Previously he was Sales Manager and, before that, Marketing Manager
The written evidence of Mr Tancredi was given in affidavits affirmed 3 May 2016, 4 August 2016 and 25 March 2017.
In his first affidavit, Mr Tancredi stated that as at 2005 and 2007, the tile products within Ceramiche Caesar’s range varied in size from 14.8 x 14.8cm (the smallest) to 60 x 60cm (the largest tile in 2005) and 60 x 120cm (the largest tile in 2007). The thickness of Ceramiche Caesar’s tiles in those years ranged between 7.9 and 14mm. As at 2016, the largest tiles that were available for purchase in Australia in Ceramiche Caesar’s range had dimensions of 120 x 240cm, and a thickness of 30mm.
He stated that the CÆSAR Device mark was, and had in each year since 1988 been, part of the house or master branding that Ceramiche Caesar used to advertise, promote and sell its tile products. More particularly, the CÆSAR Device mark had been used to identify the origin of Ceramiche Caesar’s tile products, as follows.
First, Ceramiche Caesar had applied the CÆSAR Device mark physically to the underside of its tile products, including the tile products that it had distributed and sold in Australia. He deposed that it had been the company policy since 1988 to apply the CÆSAR Device mark to the underside of every tile product that it manufactured. To his knowledge, this policy had always been followed. He had observed the CÆSAR Device mark present on the underside of every Caesar tile product that he had seen since he began working at Ceramiche Caesar in 1998. In cross-examination, Mr Tancredi accepted that in terms of the depictions on the back of tiles, whether the CÆSAR Device mark by itself or the CÆSAR Device mark with “Ceramiche”, he could not be sure which tile had which stamp on it and could not tell which of the tiles in fact went to Australia.
Second, Mr Tancredi deposed, the CÆSAR Device mark had been applied physically to the side of the tile samples that Ceramiche Caesar had manufactured and distributed to its customers and prospective customers for promotional purposes, including its customers in Australia.
Third, the CÆSAR Device mark had been displayed since 1988 on the invoices issued by Ceramiche Caesar to purchasers of its products, including its Australian customers. In cross-examination, Mr Tancredi accepted that from 1988 to the present the CÆSAR Device mark had always been used on invoices with the word Ceramiche in combination with it.
Fourth, the CÆSAR Device mark had been displayed on the websites operated by Ceramiche Caesar. Ceramiche Caesar had also used the CÆSAR Device mark on social media (such as Facebook) and web platforms dedicated to designers, architects or specific industries, such as In cross-examination, Mr Tancredi accepted that how Ceramiche Caesar’s website looked in 2017, and probably back in 2016, was that the CÆSAR Device mark was used in combination with the word Ceramiche above it, although he could not make out the presence of the word Ceramiche on the second page of the printout. Mr Tancredi accepted that the CÆSAR Device mark was used in combination with the word Ceramiche above it in the original website in 1998.
Fifth, the CÆSAR Device mark had been displayed in advertising and promotional materials for (and at exhibitions of) Ceramiche Caesar’s tile products.
Sixth, the CÆSAR Device mark had been displayed in product showrooms.
Seventh, the CÆSAR Device mark had been displayed at Ceramiche Caesar’s offices and its Italian manufacturing facility.
Mr Tancredi said that Ceramiche Caesar had also used the word CAESAR, without the stylised script used in the CÆSAR Device trade mark, to identify the origin of its tile products.
Mr Tancredi deposed that since 2011, Ceramiche Caesar had engaged a local (Perth based) Australian sales agent, Mr Gianfranco Circati. Ceramiche Caesar’s instructions to Mr Circati were that he physically visit the premises of Ceramiche Caesar’s customers at least four or five times per year to promote Ceramiche Caesar’s products. Mr Circati was instructed by Ceramiche Caesar to distribute, during such visits, its product catalogues and product samples, to present and explain new products or sales offers and promotions, to provide advice regarding current orders, to solicit new product orders and to negotiate for major products and sales. Between 1988 and 2011, Mr Circati’s role was performed by either different local Australian or foreign based sales agents, or Ceramiche Caesar’s own Italy based staff. The years prior to 2011 in which Ceramiche Caesar had an Australian sales agent were between March 1994 and August 1996, June 1997 and January 2003 and February 2003 and October 2007.
Ceramiche Caesar’s customers in Australia, Mr Tancredi deposed, placed orders for Ceramiche Caesar’s tile products either directly with its sales office in Italy, or with its Australian sales agent (who then dispatched the sales order to Ceramiche Caesar’s sales office in Italy for processing). Ceramiche Caesar’s sales office invoiced the Australian customer and made the purchased product available to be shipped from Italy to Australia on an Ex Works basis.
Mr Tancredi deposed that the ultimate consumers of Ceramiche Caesar’s tile products in Australia were the clients of Ceramiche Caesar’s customers. In the case of Ceramiche Caesar’s property developer, contractor and architect customers, Ceramiche Caesar’s sales resulted from the developer, contractor or architect recommending to their client that Ceramiche Caesar’s tiles should be used in their building project. The developer, contractor or architect customer then purchased Ceramiche Caesar’s tiles for use in the project. Ceramiche Caesar’s tiles had been purchased by developers, contractors and architects in Australia for use in both commercial and residential building projects.
Ceramiche Caesar’s Australian tile wholesaler and retailer customers stocked Ceramiche Caesar’s tiles and sold them to building professionals (such as developers, contractor and architect clients), tile retail outlets and (in the case of tile retailers) the general public. Since before 2005, none of Ceramiche Caesar’s Australian tile wholesaler and retailer customers had been exclusively dedicated to the brand. Rather, each had stocked and sold a range of different tile brands.
Many of Ceramiche Caesar’s Australian tile wholesaler and retailer customers had tile showrooms. Ceramiche Caesar’s tile products were, and had since before 2005 been, stocked and displayed together with other tile brands in those showrooms.
Mr Tancredi deposed that from 1988 onwards Ceramiche Caesar had either Jordan used the CÆSAR Device mark and the word CAESAR to promote and identify the origin of the tile products that it sold in Australia in the following manner: the tile products and the samples that Ceramiche Caesar had distributed in Australia had been physically marked with the CÆSAR Device mark on the underside or side (respectively); all invoices dispatched by Ceramiche Caesar’s Italian sales office to its Australian customers since 1988 had borne the CÆSAR Device mark; Ceramiche Caesar had published and distributed an annual general catalogue to promote its product lines in each year since 1988. Each annual general catalogue published by Ceramiche Caesar had borne the CÆSAR Device mark and/or the word CAESAR without stylised script; Ceramiche Caesar had published and distributed catalogues for specific product lines that bore the CÆSAR Device mark and/or the word CAESAR without stylised script since 2001; some of Ceramiche Caesar’s Australian customers had displayed signage and promotional furniture, fixtures and panel boards featuring the CÆSAR Device mark; the CÆSAR Device mark and the word CAESAR without special script had been used by Ceramiche Caesar on its website, which was accessible to Australians; Ceramiche Caesar operated two further websites at the addresses (online since 2012) and (online between 2009 and 2015) which had featured the CÆSAR Device mark and the word CAESAR; and Ceramiche Caesar’s internal marketing team had since 2009 issued monthly newsletters and, since 2014, alerts to customers and distributors around the world, including in Australia, about Ceramiche Caesar’s business, including upcoming or complete projects, to subscribers. There were presently approximately 30,000 subscribers to this newsletter.
Mr Tancredi deposed that Ceramiche Caesar had exhibited its tile products by reference to the CÆSAR Device mark at various conventions and trade shows at trade fairs around the world. For example, Ceramiche Caesar had exhibited a trade booth featuring the CÆSAR Device mark at each trade fare CERSAIE in Bologna, Italy annually since 1988. Mr Tancredi deposed that he regarded the CERSAIE trade fair to be the most important ceramics exhibition in the world as it was the largest attended trade show of attendees and exhibitors relating to ceramics. He had been attending the trade fair since 1988 and had observed Australian delegates there. He met with a delegation of Australian architects there at the 2015 CERSAI trade fair. Similarly, Ceramiche Caesar had maintained trade booths at other trade fairs such as the International Council of Shopping Centers.
Mr Tancredi deposed that Ceramiche Caesar’s tiles had since 1988 been used in many significant building projects around the world, including in Australia. Those projects included: shopping centres; stores and boutiques; lounges and restaurants; hotels and spas; airports and stations; public areas and places of worship; and offices.
In his second affidavit, Mr Tancredi stated, and I accept, that while Ceramiche Caesar first began distributing CÆSAR Device mark branded tile products in 1988, the CÆSAR Device mark was created by the company one year earlier, in 1987. Mr Tancredi referred to a template letter used by Ceramiche Caesar in 1987 which used, as part of the letterhead, the CÆSAR Device mark. In cross-examination, it was put to Mr Tancredi that the whole device there was Ceramiche Caesar. Mr Tancredi first replied that he saw two devices, Ceramiche and Caesar and then said he saw three different devices, Ceramiche, Caesar and then “Capitale Sociale”.
Also in his second affidavit Mr Tancredi provided greater, confidential, detail of Ceramiche Caesar’s Australian customers since 1988, being predominantly wholesalers, retailers and importers of tiles, together with property developers, contractors and architects. The confidential detail was as to the names and addresses of each Australian customer of Ceramiche Caesar in each year.
Mr Tancredi also gave confidential evidence as to the quantity of “CAESAR tiles” that Ceramiche Caesar sold in Australia between 1998 and 2015. The figure for quantity was given in square metres and in each year exceeded 10,000 square metres. In many years the quantity was a substantial multiple of that figure. Mr Tancredi also provided figures showing the revenue, in euro, from “CAESAR tile” sales in Australia from 1988 to 2015. In each year the figure was substantial, being well in excess of €200,000 since 1994 and regularly exceeding that figure by multiples.
Mr Tancredi deposed that some of Ceramiche Caesar’s customers had the equipment and skills necessary to cut and shape Ceramiche Caesar’s tiles into custom sizes for the end consumer and, he deposed, he was aware that they did this from time to time. He also deposed that, from time to time, Ceramiche Caesar also cut and fitted tiles to custom sizes for its customers upon request, in some instances.
Mr Tancredi deposed, and I accept, that Ceramiche Caesar intended to continue to use the CÆSAR Device mark in Australia both with and without the word “Ceramiche” and what he referred to as “taglines” in future. An example of a tagline was: “Materia Fino in Fondo”, meaning “Porcelain from top to bottom” in English. He also observed that Ceramiche Caesar used the CÆSAR Device mark and the trade mark CAESAR (in plain text) in Australia before 2001 without the word “Ceramiche” and/or an accompanying tagline.
Mr Tancredi deposed that he strongly disagreed with the contention that Ceramiche Caesar would not suffer any inconvenience if the Caesarstone Goods Word mark, the CAESARSTONE Device mark and the Caesarstone Services Word mark were registered in Australia. He deposed that he and his colleagues at Ceramiche Caesar were concerned that registration of the Caesarstone Goods Word mark and the CAESARSTONE Device mark would give Caesarstone the right to use its CAESARSTONE trade marks for floor and wall panels and covers that were similar with, or would be marketed as alternatives to, Ceramiche Caesar’s ceramic tiles. They were also concerned that registration of the CAESARSTONE Device mark and Caesarstone Services Word mark would give Caesarstone the right to use the CAESARSTONE Device mark to provide wholesale, retail, installation, maintenance and repair services for tiles, floor and wall panels and like goods. He deposed that he and his colleagues believed that if Caesarstone obtained and exercised such rights, members of the Australian public, including architects, property developers, contractors and end consumers were likely to be confused, having regard to Ceramiche Caesar’s use of its CÆSAR Device mark and the trade mark CAESAR (unstylised) in the Australian marketplace since 1988. Confusion between the two companies, he deposed, would harm Ceramiche Caesar’s business and inconvenience Ceramiche Caesar’s customers.
Mr Tancredi deposed that Ceramiche Caesar was also concerned that Caesarstone’s registration and use of the disputed trade marks for floor and wall panels and covers that were similar with (or marketed as alternatives to) Ceramiche Caesar’s ceramic tiles would dilute the distinctiveness of its CÆSAR Device mark and CAESAR branding in the Australian market. Since 1988, he deposed, Ceramiche Caesar had invested substantial time and effort promoting its CÆSAR Device mark internationally and generating goodwill. It had grown to become one of the leading stoneware tile manufacturers in the world. Ceramiche Caesar did not wish to see its investment in its CÆSAR Device mark and CAESAR branding compromised by a company that was not presently a competitor entering its marketspace using a confusingly similar trade mark.
In his oral evidence, Mr Tancredi said that if Caesarstone was confined to the countertop business, it was not a competitor of Ceramiche Caesar because Ceramiche Caesar sold and promoted its material for floor and wall coverings. He said that a splashback could also be part of a wall application, although Ceramiche Caesar had never specifically promoted its tiles for use as splashbacks.
A further concern of Ceramiche Caesar, Mr Tancredi deposed, was that it would suffer inconvenience in the form of a restriction on its freedom to modernise or adapt its existing CAESAR branding, if the Caesarstone Goods Word mark, the CAESARSTONE Device mark and the Caesarstone Services Word mark were on the Australian Trade Marks Register. More particularly, if the Caesarstone Goods Word mark were permitted to proceed to registration, Ceramiche Caesar may have difficulty registering further trade mark applications for its products for new or adapted logos that incorporated the word CAESAR.
One of the issues Mr Tancredi addressed in his third affidavit was the quantities of Ceramiche Caesar’s catalogues and brochures that were distributed in Australia from 2001 onwards. I find that in 2001 there were 27 catalogues, in 2002 - 138, in 2003 - 201, in 2004 - 125, in 2005 - 95, in 2006 - 74, in 2007 - 52, in 2008 - 59, in 2009 - 18, in 2010 - 20, in 2011 - 29, in 2012 - 32 and in 2013 - 62.
In cross-examination, Mr Tancredi accepted that in relation to the annexures he had listed in his first affidavit, more often than not, where the CÆSAR Device mark was there, it was used in combination with the word Ceramiche or in combination with a tag line.
Ceramiche Caesar’s merchandising manual for 2002 was tendered. It showed that the word Ceramiche appeared above each use of the CÆSAR Device mark.
Mr Lino Bianco, product manager of the “Caesar tiles” business of Ceramiche Caesar, affirmed an affidavit dated 4 August 2016. His evidence was that he had been the product manager since 1989 and had inspected and handled Ceramiche Caesar’s finished tile products regularly and extensively throughout the period from 1989 to the present. He said that as a result of his inspections and his observations of the manufacturing process since 1989, he was aware that Ceramiche Caesar, using stamps, impressed words onto the underside of all tiles in the “CAESAR product line”.
Mr Bianco deposed that between 1989 and 2000, to his personal observation of the manufacturing process, “two forms of the CAESAR brand” were impressed onto the underside of Ceramiche Caesar’s tiles. He also observed both forms of brands visible on the underside of the tiles that he inspected and handled from 1989 to 2000. These were, as to the first form:
and, as to the second form:
Mr Bianco’s recollection was that the majority of the tiles that Ceramiche Caesar made between 1989 and 2000, including the tiles that it made for, and exported to, its Australian customers in each year during that period, were impressed with the first form of wording. There was, however, no policy or practice between 1989 and 2000 whereby the form of wording imprinted on Ceramiche Caesar’s tiles varied depending on the country in which the tiles were to be sold or distributed, or the particular product within Ceramiche Caesar’s product line. Ceramiche Caesar had been unable to locate any records showing the actual marks used during that period.
In cross-examination, Mr Bianco made clear that there were two types of stamps but many hundreds of stamps. He could not recall whether the stamp with “Ceramiche Caesar” on it was used more or less than the stamp with “Caesar” on it prior to 2000 or 2001.
Mr Mark Ryan had been a director of Ceramic Distributors Pty Ltd, trading as Imported Ceramics in Western Australia, for about 30 years. He affirmed an affidavit dated 6 January 2017.
He deposed that Imported Ceramics was one of the largest ceramic tile importers by volume in Western Australia. It had one of the largest ranges of imported ceramic tiles showcased in its showrooms in Western Australia. Imported Ceramics also had two warehouses in Western Australia, totalling around 20,000 square metres.
Imported Ceramics had promoted and sold tiles manufactured by Ceramiche Caesar since the 1990s. Since 2004, Imported Ceramics had been the exclusive distributor in Western Australia of certain product lines of Ceramiche Caesar’s tiles. Imported Ceramics promoted those product lines as a range that was exclusive to it.
Mr Ryan first became aware of Ceramiche Caesar and the sale of its tile products in the Australian market in around 1997. At that time, he was working in distribution in Imported Ceramics’ warehouse. In distribution, it was his job to coordinate the delivery of tiles received from manufactures such as Ceramiche Caesar to the location of Imported Ceramics’ customers.
Imported Ceramics had two business aspects, a retail aspect and a commercial aspect. The retail was directed to domestic and residential customers and the commercial was directed to commercial projects such as shopping centres, car parks and high rise developments. Since before 2000, Imported Ceramics had promoted and sold tiles manufactured by Ceramiche Caesar for both aspects. An example of a significant commercial project in which Imported Ceramics supplied Ceramiche Caesar’s tiles was the construction of the Rockingham Shopping Centre in Western Australia. This project was completed in around 1997 or 1998.
Imported Ceramics registered the domain name in around 2003. Since then, it had published a website on that domain name to promote its tile products. Those products included ceramic products manufactured by Ceramiche Caesar. Mr Ryan annexed to his affidavit a bundle of screenshots from Imported Ceramics’ website. In that material Ceramiche Caesar was referred to as “Caesar” and its various tile products by reference to “Caesar”. For example, one tile product was referred to as “Caesar Feel”.
He said that since before 2000, Imported Ceramics in each year had received from Ceramiche Caesar promotional material in the form of merchandise, display stands, annual general catalogues, product specific catalogues and folders containing tile chips, product ranges and colours. It had distributed the product specific catalogues together with the folders to architects and designers. The annual general catalogues had been kept in Imported Ceramics’ showrooms and, since 2000, in its architectural library as reference material for the full range of Ceramiche Caesar’s tiles. The annual general catalogues had been made available for inspection by customers visiting the showroom in each year since before 2000.
Mr Ryan deposed that since before 2000, he had in each year observed the CÆSAR Device mark displayed on Ceramiche Caesar’s tiles and in the Ceramiche Caesar promotional materials that he had referred to. “Sometimes”, Mr Ryan deposed, the word “CERAMICHE” had been displayed adjacent to (immediately above) the trade mark. Nevertheless he had always recognised and understood the brand of Ceramiche Caesar’s tiles to be “Caesar”, not “Ceramiche Caesar”. In cross-examination, Mr Ryan could not recall having seen the CÆSAR Device mark without the word Ceramiche above the word CÆSAR. He added that generally what he always looked at or what he identified was the Caesar word. He agreed that about 99% of the time, in terms of promotional materials, the word “Ceramiche” had sat above the word “Caesar”. Mr Ryan accepted that the word “sometimes” which he had used in relation to the word “Ceramiche” would be more accurately expressed as “quite commonly”. He said that the word that was most pronounced was “Caesar”.
Mr Ryan deposed that, in each year since 1997, during his discussions with the clients of Imported Ceramics, he had always referred to Ceramiche Caesar’s tiles by the brand name “Caesar”, not “Ceramiche Caesar”. To his observation, the other staff at Imported Ceramics had done the same.
Mr Ryan deposed that the architectural library was established in 2000 when Imported Ceramics moved premises. Since then, the architectural library had been used as a promotional resource by Imported Ceramics. It was kept up to date with current copies of the Ceramiche Caesar annual general catalogues and sample tiles. The library was promoted to, and attracted, architects and interior designers of both commercial and domestic industries. Architects and designers could browse the open library but would typically be accompanied by one of Imported Ceramics’ sales representatives. Mr Ryan annexed to his affidavit copies of extracted pages of Ceramiche Caesar’s annual general catalogues for the years 2000 and 2001. The catalogues were kept in Imported Ceramics’ architectural library during the years when they were current.
Mr Ryan deposed that in each of the years 2000, 2001, 2002, 2003 and 2004 he attended the CERSAIE International Exhibition of Ceramic Tile and Bathroom Furnishings, which was held in Italy. CERSAIE was the most important international exhibition of Italian ceramic tile products. He observed that Ceramiche Caesar promoted its tile products at a trade stand at each of the CERSAIE exhibitions that he attended. At each of the above CERSAIE exhibitions, Mr Ryan observed that approximately 50 to 100 delegates from the leading tile distributors in Australia were also in attendance. The CÆSAR Device mark was displayed at the trade stand at the exhibitions he attended.
Mr Ryan deposed that one of the reasons he decided that Imported Ceramics should become an exclusive distributor of particular Ceramiche Caesar product ranges was because of his awareness and assessment in preceding years that Ceramiche Caesar had a full range of tiles of very good quality material that could be used in both commercial and domestic projects. Prior to 2001, the quality of Ceramiche Caesar’s tiles was well known by him and the tiling industry. He had regarded Ceramiche Caesar to be one of the leading tile manufacturers out of Italy since prior to 2000.
In cross-examination, Mr Ryan said that in promoting Ceramiche Caesar tile products to customers he would say “this is a tile from Caesar. It’s of Italian origin and it’s a very good quality, high-end type of material.” He said he had always called the company “Caesar”, shortening the name of Ceramiche Caesar.
Mr Ryan said he believed that the typical Australian would understand the word Caesar to also be a name for Julius Caesar or the emperors known as Caesar from ancient Italy. He also agreed that he believed that the name Caesar on its own, connoted the idea of strength and quality and fine, ancient things because of its association with Julius Caesar and Roman Caesars. He agreed that the name Caesar on its own was a particularly good name to use for the tiling products from Italy, given the connotations the name had of strength, quality and fine things. He agreed that Caesar was an attractive name but could not be 100% sure that a tiling manufacturer would be drawn to use such a name as Caesar as a brand for its business or its tiles because of the connotations of strength, quality and fine, ancient things. Mr Ryan agreed that it was unsurprising that a tiling company which was a tiling manufacturing company based in Italy would have a name such as Caesar in it.
In re-examination Mr Ryan said there was no tile company other than Ceramiche Caesar that manufactured tiles for distribution in Australia that had the name Caesar as a brand or company name.
On the subject of splashbacks, Mr Ryan agreed that a tiled splashback was a form of wall cladding. Where the tiled splashback was put on a gyprock wall, Mr Ryan agreed that he would still call that tiled splashback a wall cladding. He agreed that a gyprock sheet could be considered a wall if it was just sitting on a wooden frame, for example. If a gyprock sheet was covering the wall, Mr Ryan regarded that as a wall. He agreed that, in a kitchen, a splashback could be simply a wall cladding in a kitchen, even where the abutting benchtop had no sink or stove. In a bathroom, Mr Ryan accepted one could have a splashback to guard against splashing from a vanity or a sink. He would not typically describe as a tile a reconstituted quartz slab being used as a splashback.
Mr Ryan became aware that Caesarstone slabs could be used as a splashback when he saw it in some display homes maybe in the mid or late 2000s.
Mr Gian Malavasi, tile agent or representative, affirmed an affidavit dated 25 January 2017. He was a director of Essegi Tiles Pty Ltd (Essegi), a company that he owned and founded. He had held this position for around 10 years. Essegi acted as an agent in Australia for foreign tile manufacturers. Between 1996 and 2001, Mr Malavasi was the Australian and New Zealand agent for Ceramiche Caesar. During that period, he was engaged directly by Ceramiche Caesar to promote its tile products to the Australian and New Zealand market. He deposed that he assisted in establishing distributorship relationships between Ceramiche Caesar and Australian tile wholesalers across Australia. In the period between 1996 and 2001, Ceramiche Caesar had distributors in New South Wales, Victoria, Queensland, Western Australia and South Australia. It also had distributors in Auckland, New Zealand.
Mr Malavasi deposed that, as Ceramiche Caesar’s agent in Australia from 1996 to 2001, he met at least once every two to three months with each of the distributors of Ceramiche Caesar’s tile products to promote those products in Australia. During that period, he also met with Australian architects and designers who were referred to him by the distributors to promote Ceramiche Caesar’s tile products. At those meetings, he presented a range of Ceramiche Caesar’s tile products, answered technical questions, and described the uses, applications, finishes and technical advantages of the tile products with respect to the residential and commercial industries. He also assisted with the placement of orders to purchase Ceramiche Caesar’s tile products.
Mr Malavasi deposed that he brought with him to those meetings his personal copy of Ceramiche Caesar’s annual general catalogue (entitled ‘Catalogo Generale’), one or two spare copies of the annual general catalogue, and about 10 to 15 copies of different product specific catalogues and other promotional material such as pens and notebooks. He provided copies of the annual general catalogue and product specific catalogues to the distributors, architects and designers that he met with.
He also took with him to those meetings samples of Ceramiche Caesar’s tile products for visual inspection. If he did not have a sample of the specific tile of interest to the distributor, architect or designer, he arranged for Ceramiche Caesar to deliver a sample to himself or to one of its Australian distributors directly. Once received, either he or the distributor would deliver or distribute the sample to the architect or designer.
Mr Malavasi deposed that the CÆSAR Device mark was stamped on the underside of each Ceramiche Caesar tile that he dealt with while he was Ceramiche Caesar’s Australian distributor. He could not recall whether the word “Ceramiche” was also stamped onto the underside of Ceramiche Caesar’s tiles. It was his own practice, when promoting Ceramiche Caesar’s tile products to its Australian distributors, architects and designers, to refer to its tiles as “Caesar” brand tiles. He referred to Ceramiche Caesar’s business as either “Caesar” or “Ceramiche Caesar”.
Mr Malavasi deposed that products were supplied to Ceramiche Caesar’s Australian distributors by shipment from Italy. It was his usual practice to request that Ceramiche Caesar include in shipment containers to distributors in Australia: copies of annual general catalogues and product specific catalogues; samples of new products; promotional items for display in the distributor’s showroom, such as wooden panel boards displaying tile sample; and promotional items for use by the distributor, such as notebooks and pens.
Mr Malavasi deposed that in or around 1998 or 1999, Ceramiche Caesar, in partnership with its Australian distributors, hosted promotional events in New South Wales, Western Australia, Queensland and Victoria. Formal invitations to each event were distributed by Ceramiche Caesar based on lists of names of architects, builders and designers provided by each distributor. The events, which he attended and assisted in organising, were held at various hotels and convention or exhibition centres across Australia and he recalled that there were around 150 attendees in each State. Promotional material prepared by Ceramiche Caesar was imported to Australia specifically for the event in each State. That promotional material included display stands, annual general catalogues and product specific catalogues. He recalled that the promotional material was stamped or marked with the CÆSAR Device mark (with or without the word Ceramiche displayed immediately above the word Caesar).
Mr Malavasi expressed the opinions, based on his discussions with Ceramiche Caesar’s Australian distributors, together with Australian architects and designers, that Ceramiche Caesar’s tile products were well regarded in both the residential and commercial industries in the period between 1996 and 2001. He deposed that they continued to be well regarded in both the residential and commercial industries to this day.
To the best of his recollection, Mr Malavasi deposed, around 80% of Ceramiche Caesar’s tile products were used in commercial applications such as shopping centres and various McDonald’s stores across Australia between 1996 and 2001. In his opinion, the selection of Ceramiche Caesar’s tile products for these commercial applications occurred because of Ceramiche Caesar’s reputation for producing tile products that were heavy duty, of high quality, had various suitable technical advantages (such as anti-slip finishes) and a large range of products and colours.
In each year of his role as agent for Ceramiche Caesar from 1996 to 2001, Mr Malavasi attended the CERSAIE International Exhibition of Ceramic Tile and Bathroom Furnishings, held in Italy. He observed that Ceramiche Caesar had a stall at CERSAIE in each of those years and distributed from that stall annual general catalogues and product specific catalogues. He observed that Australian industry members (for example, the representatives of Parrella Tiles, Better Tiles, De Fazio Ceramics) were present at each CERSAIE Exhibition that he attended and visited Ceramiche Caesar’s stall. He discussed Ceramiche Caesar’s tile products with these Australian industry members and provided details of relevant Australian distributors of Ceramiche Caesar’s tile products.
In cross-examination, Mr Malavasi was asked whether he used the name Caesar rather than Ceramiche Caesar because, for his customers who did not have Italian heritage or did not speak Italian, he was of the view that the word Ceramiche had little meaning to them and instead Caesar did have a meaning. His answer was:
Well, Ceramiche is – in English, is very similar so when you mention Ceramiche Caesar, automatically, they know it is a ceramic.
Mr Malavasi agreed that the name Caesar would be understood by the Australians he dealt with to refer to Julius Caesar or the Caesar emperors from ancient Italy. He did not agree that the name Caesar connoted to him concepts of strength, quality and fine quality things. He said the name had nothing really to do with the quality or the strength or the beauty of the product itself. He presumed that the name Caesar was a particularly apt or good name to use for tiling products from Italy but said he did not know why the company called itself Caesar. He said he dealt in the past with tile merchants and not with the public so he did not know what the public considered about the name Caesar.
In relation to splashbacks, Mr Malavasi said that normally a splashback was described as small areas in a kitchen or laundry. He considered a tiled splashback to be a form of wall cladding. He said that a tiled splashback could be applied on many surfaces. He agreed that a splashback was still a wall cladding if it was applied to a gyprock sheet. He agreed that the gyprock sheet itself was also a form of wall cladding. He agreed that, theoretically, where there was a tiled splashback on a gyprock base there was a wall cladding on a wall cladding. In re-examination he explained his use of the word “theoretically” as follows:
… We apply different type of – we – the builder or the tile-installer, the person that does installation – depends the surface they’re using, different type of adhesive, and they can actually install the tiles in that surface. The “theoretically” is particularly applying ceramic tile surface to another surface, but we cannot describe the second ceramic tile. Nothing more than ceramic tiles…
I understood Mr Malavasi to say that the second surface was not wall cladding.
Mr Malavasi agreed that in a kitchen there could be a splashback even where the abutting benchtop had no sink or stove. He said that most of the time the word splashback was not used to describe the surface of a bathroom, which was described as bathroom wall tiles and the general description of the surface was a wall.
Mr Malavasi said he was not very familiar with reconstituted material, but presumed it could be called a tile as well, if it was is in a tile form. In 2000, a tile form between wall cupboards and benchtops was 600mm. Most of the builders suggested to use a 600mm tile or two 300mm tiles to fit the gap as a splashback.
Mr Malavasi agreed that the use of the Caesar logo without the word “Ceramiche” on it was very rare in promotional material.
The evidence of Ms Jacqueline Chelebian was in writing only. She was not required for cross-examination. She was a solicitor in the employ of Spruson & Ferguson Lawyers, the legal representatives of Ceramiche Caesar. She swore three affidavits.
In her first affidavit, sworn on 4 May 2016, Ms Chelebian deposed that on 15 March 2016, she accessed the website published at the domain name. She annexed a screenshot of the content displayed on the “FAQ” section of the website on 15 March 2016. She also annexed a screenshot of the content displayed on the “Bathrooms” section of the website on 15 March 2016. As to the former, it contained the FAQ “Can Caesarstone® be used as flooring?” As to the latter, it stated:
Perfect for Wet Areas
Caesarstone surfaces are ideal for wet areas as they are non-porous, durable, resistant to stains, scratches, common household chemicals, mould and mildew.
Caesarstone surfaces are not only perfect for bathroom wall panels but also vanities, bath surrounds, inset shelving, shower recesses, floor panels* and window sills. Caesarstone’s surfaces offer endless design possibilities to create your dream bathroom.
*Floor panel applications are excluded from Caesarstone’s 10 Year Limited Warranty
During her visit to the website on 15 March 2016, she also downloaded a brochure from the website “10 Year Limited Warranty”. Ms Chelebian annexed a copy of that brochure. Clause 3(iii) of the warranty set out in the brochure read: “the Warranty does not cover any defect in, or damage to, the Product which results from it being used for flooring or in any outdoor application (including swimming pools) or any other application involving exposure of the Slab to ultraviolet radiation, chemicals, flames or excessive heat”.
In respect of Ceramiche Caesar’s opposition to the Caesarstone Goods Word mark, Ms Chelebian annexed a copy of the application dated 2 June 2005 that Caesarstone filed with IP Australia; a copy of the Examiner’s Report dated 4 August 2005 that was issued by IP Australia; and a copy of a letter from Chrysiliou Law, the attorneys for Caesarstone, to IP Australia dated 16 March 2007.
On 4 May 2016, Ms Chelebian deposed that she conducted a number of online searches for Australian based businesses promoting, offering for sale and selling flooring products. In the process of conducting those searches, she located four businesses operating in Australia, which she listed.
In her second affidavit, dated 26 August 2016, Ms Chelebian said that Ceramiche Caesar had appealed, to the Singapore Court of Appeal, the decision of the High Court of the Republic of Singapore that was annexed to the affidavit of Andrew James Dixon sworn on 7 June 2016. She also annexed a copy of a decision of the Federal Court of Canada, together with the decision of the Trade Marks Opposition Board (TMOB) of Canada that was the subject of the Federal Court of Canada’s decision. It was her understanding that the Federal Court of Canada upheld the TMOB’s decision to refuse to allow Caesarstone to register the CAESARSTONE Device mark in respect of services related to floor coverings and stairs, but allowed the appeal in respect of certain other services related to wall cladding and walls.
Ms Chelebian deposed that Caesarstone filed Australian trade mark application No. 917822 for CAESAR MOSAIC in Class 20 on 26 June 2002 (Caesar Mosaic mark). She annexed a printout of the current particulars for that trade mark application, obtained from the Australian Trade Mark Office’s online database. The Caesar Mosaic mark application was opposed by Ceramiche Caesar on 26 September 2003. On 8 March 2006, Caesarstone withdrew the Caesar Mosaic mark application. She annexed documents relating to that application.
Ms Chelebian deposed that on 8 August 2016 she conducted searches of the domain name on the internet archive, WaybackMachine, situated at org/web/ (WaybackMachine). She annexed a screenshot of the “Product Information” webpage maintained by the WaybackMachine archive of the Caesarstone Website for 19 August 2006. She annexed two brochures downloaded from that archive of the Caesarstone Website of the “Product Information” webpage for 19 August 2006, referred to as Limited Warranty and 2005 Caesarstone brochure. She annexed a bundle of screenshots of the “FAQ” webpage maintained by the WaybackMachine archive of the Caesarstone Website for 24 November 2010, 21 July 2011, 21 March 2012, 16 January 2013, 26 January 2014 and 10 February 2015, respectively.
Ms Chelebian deposed that on 11 August 2016 she conducted an online search on Google using the search terms “caesarstone stonemason australia tiling”. She located a number of businesses operating in Australia, which she listed.
Ms Chelebian deposed that she accessed the Caesarstone website on 11 August 2016. She searched to locate all Caesarstone showrooms located in ‘Sydney South, NSW’, which she chose at random. The listed Caesarstone showrooms included Harvey Norman Renovations, 84 O’Riordan Street, Alexandria, NSW. She accessed the website of Harvey Norman situated at on the same date and annexed a bundle of screenshots of that website.
Ms Chelebian deposed that on 26 August 216 she conducted an online search on Google using the search terms “stonemason ceramic tile”. She located a number of businesses operating in Australia and annexed a bundle of printouts from their websites.
In her third affidavit, sworn on 23 January 2017, Ms Chelebian annexed documents relating to the Tile Today magazine, which stated on its website that it was circulated to importers, resellers and installers of ceramic tile located in all States and Territories. She annexed a copy of pamphlets entitled Media Kit 2016, Media Kit 2007 and Media Kit 2002 which set out the circulation data of Tile Today for those years. She also annexed a copy of a series of photographs taken of the Tile Today publications for the years 1997 to 2007. I accept Tile Today is a publication that has been circulated since 1993 to importers, resellers and installers of ceramic tiles across Australia.
Caesarstone’s evidence
I do not accept the submissions on behalf of Ceramiche Caesar that lack of honesty may be founded in the deletion of the word “tile” or by the addition of the words “not in the nature of tiles” in Caesarstone’s presentation of its case to the examiners or the delegates. In my opinion, although I have found it ineffectual because of the overlap of nomenclature, the proposed limitation does not suggest that Caesarstone has not been honest. I do not link any intention on the part of Caesarstone to sell goods to be called “tiles”, to the deletion of the word “tile” or the addition of the words “not in the nature of tiles” in Caesarstone’s Class 19 application. I find that Caesarstone was aware of Ceramiche Caesar’s market presence by reason of Ceramiche Caesar’s opposition to Caesarstone’s application for trade mark registration for the Caesar Mosaic mark, see [507]-[508] above, but I find that this does not establish that the concurrent use by Caesarstone has not been honest.
I therefore find that there has been honest concurrent use by Caesarstone of its trade marks, for the purposes of s 44(3)(a).
Turning to s 44(3)(b), I do not find that “because of other circumstances” it is proper to accept Caesarstone’s application. In so concluding, I take into account the matters relied on by Caesarstone in this respect, those matters being: its registration of its Caesarstone mark in Class 20 predated the priority date of the CÆSAR Device mark; there had been no evidence of actual confusion; Caesarstone had a significant reputation in its Caesarstone name in Australia; there would be considerable inconvenience to it; the trade mark was the name of the trade mark applicant, Caesarstone; and the Caesarstone Word mark had coexisted with the CÆSAR Device mark in many other countries. These matters largely repeated Caesarstone’s submissions in relation to honest concurrent use.
If, as I have found, there has been such honest concurrent use then the discretion is enlivened, that is, the application for the registration of Caesarstone’s trade mark may be accepted subject to conditions or limitations. With respect, I accept and apply the analysis by Kenny J in McCormick & Co Inc v McCormick at [30]-[33] as to the relevant discretionary considerations.
I now turn to those discretionary factors.
As to the extent of the use by Caesarstone, I find that it was extensive and I accept the evidence given by the stonemasons that from 2001 to June 2005: between 5% and 40% of sales of Caesarstone slabs were for splashbacks; between 2.5% and 10% of sales of Caesarstone slabs were for walls other than splashbacks; and between 1% and 2.5% of sales of Caesarstone slabs were for flooring. The dollar figures were considerable. I find there was significant use of the Caesarstone Word mark in respect of the goods and in respect of the wholesale services and maintenance services of those goods during the relevant periods.
As to the degree of confusion likely to ensue between the marks, I have found that Caesarstone’s trade marks are deceptively similar, this being the basis on which s 44(3) proceeds. I further find that the confusion would be likely to be substantial particularly once Caesarstone markets its goods, once fabricated and installed, as tiles.
As I have earlier found, no instances of confusion have been proved.
As to inconvenience that would ensue to the parties, I find that the inclusion of the words “none of the foregoing being in the nature of tiles” would lead, commercially, to difficulty in attempting an assessment of whether or not individual uses were in connection with a “tile” or in connection with a “floor panel” or “wall cladding” that was “not in the nature of a tile”. This is by reason of the overlap, in terms of meaning, usage and concept. I also find that the distinctiveness of Ceramiche Caesar’s CÆSAR Device mark for flooring and walling goods would be diluted in the Australian marketplace by Caesarstone using a deceptively similar trade mark for flooring and walling goods.
I also find that there would be considerable inconvenience to Caesarstone if no effect were to be given to the fact, which I find, that Caesarstone had significant sales and a significant presence in the Australian marketplace over many years.
As I have said, the discretion in s 44(3) is reached and falls for consideration, at least in relation to the applications where there has been honest concurrent use. Relevantly, the legislation appears to proceed on the basis that, subject to the question of “any conditions or limitations”, conflicting marks may coexist on the Register.
In relation to Class 19, the goods in relation to the first disputed mark, I indicate my view that all of the goods should be subject to the express condition or limitation that they be formed of composite stone. I have already criticised the expression “none of the foregoing being in the nature of tiles”. It would perhaps be tautological to have as a further condition or limitation that each of the goods not be “ceramic tiles”. Further, I am not presently persuaded that the specification should be drawn wider than my findings in relation to honest concurrent use which would mean that, potentially, specifications such as ceilings, non-metallic covers and profiles should be excised. As requested by the parties, I will hear them on the appropriate conditions or limitations.
In relation to the first disputed trade mark, I turn finally to the contention made by Ceramiche Caesar, based on s 59, that Caesarstone did not intend to use the trade mark. As noted above, despite the width of Ceramiche Caesar’s opening, in closing submissions the question was limited to whether or not there was an intent by Caesarstone to use or authorise the use of the trade mark in Australia in relation to goods that were not tiles.
The point, shortly put, was that it could not be said that Caesarstone held any intention to use the first disputed trade mark for floor panels that were “not in the nature of tiles” when the fabricated goods of interest were floor tiles. The short answer, in my opinion, is that the limitation in the trade mark registration “none of the foregoing being in the nature of tiles” in relation to the first disputed mark does not show that Caesarstone did not intend to use or authorise the use of the trade mark in Australia in relation to the goods specified in the application. The limitation does not subtract all content from the words which precede it. Although, as I have held, the limitation is unsatisfactory given the overlap in meaning and concept between wall panels and flooring and tiles, I do not find that Caesarstone did not intend to use, or authorise the use of, the trade mark for the goods to which it applied.
Second disputed mark, trade mark No. 1211153, the priority date by reference to which the claims were to be assessed being 26 August 2007.
This dispute concerned the word mark “caesarstone” in lower case, in special script and with a small circular device to the left of the word “caesarstone”.
I find that the device, the two swirls, is insignificant. The evidence was also to this effect. It does not suggest anything more than decoration. Any further significance did not survive the stylisation of the original Ionic columns. Otherwise I repeat my conclusions in relation to the first disputed trade mark.
I also repeat my conclusions as to deceptive similarity, in respect of the Caesarstone goods and in respect of the Caesarstone services: ss 44(1) and (2).
I turn to s 59, the contention by Ceramiche Caesar that Caesarstone did not intend to use the trade mark. Ceramiche Caesar’s submission was that the Class 19 goods of the second disputed mark included “flooring not in the nature of tiles”. As such, the Court should similarly find that Caesarstone held no intention to use its mark for all goods identified in the specification – Caesarstone’s intention, at least with respect to flooring, being to use its trade mark for flooring “in the nature of tiles”. In my opinion, the same short answer applies, that is, the limitation does not show that Caesarstone did not intend to use, or authorise the use of, the trade mark in Australia in relation to the goods specified in the application. The limitation does not subtract all content from the words which precede it.
Caesarstone did not argue honest concurrent use under s 44(3)(a) or prior continuous use under s 44(4) for this mark. As such, Ceramiche Caesar did not rely on s 58A. If I am wrong about Caesarstone’s argument, the same conclusions apply. I note Caesarstone’s submission was that “As to the Caesarstone Device Mark, should the Caesarstone Word Marks be registered without limitation, so to should the Caesarstone Device Mark as it currently trades under that mark.” What I have said at [754] above applies mutatis mutandis, noting that “slabs formed of composite stone” is language already included, although not universally applicable, in Class 19, Class 35 and Class 37.
Rectification action in which Ceramiche Caesar applied for the cancellation of the third disputed trade mark under s 88(1)
Caesarstone did not accept that Ceramiche Caesar was an aggrieved person for the purposes of s 88(1) because, it submitted, objectively speaking there could be no risk of confusion in the marketplace between the putative use of the marks complained of and Ceramiche Caesar’s use of its marks: the marks were not deceptively similar.
Ceramiche Caesar submitted that as the owner and user of the prior conflicting CÆSAR Device and Caesar word marks, it was a person aggrieved: Health World Ltd v Shin-Sun Australia Pty Ltd at [45].
Under consideration by the High Court in that case was the correctness or otherwise of a test stated by Lord Pearce in Daiquiri Rum Trade Mark [1969] RPC 600 at 615:
If an erroneous entry gives to his rival a statutory trade advantage which he was not intended to have, any trader whose business is, or will probably be, affected thereby is ‘aggrieved’ and entitled to ask that the error should be corrected.
At [43], the majority said that for Lord Pearce “it sufficed that a wrongly registered mark gave its proprietor an advantage to which the proprietor had no entitlement at the expense of rivals. All that mattered was that they were rivals in relation to the goods to which the mark applied. It did not matter whether or not they intended to use the mark on those goods.” At [45], the majority concluded that Lord Pearce correctly stated one test, among others, for ascertaining whether a person is “aggrieved”.
For present purposes it is sufficient to reject Caesarstone’s submission on the terms on which it was put: since I have found that objectively speaking there is a risk of confusion in the marketplace between the putative use of the marks complained of and Ceramiche Caesar’s use of its marks and that the marks were deceptively similar, Ceramiche Caesar is entitled to bring an application under s 88 as an aggrieved person. I so hold. I would add that it would be a strange restriction to construe the expression “an aggrieved person” to permit an application only where that person was ultimately successful.
An application may be made only the grounds stated in s 88(2).
The three grounds of opposition were the same as for the first disputed trade mark, s 88(2)(a), with the priority date being 26 August 2007. The services here are certain services in Class 35 and Class 37.
Subject to what follows in [770]-[772] below, my earlier conclusions in relation to the grounds on which the registration of the Caesarstone Goods Word mark could have been opposed apply here to the Caesarstone Services Word mark.
Mr Dixon gave evidence in cross-examination that in 2005, 2006 and 2007 Caesarstone Australia or Carsilstone or Tessera providing retail quotes direct to the end consumer was “a very, very small minority of the trade in Caesarstone slabs at that time.” Similarly, Ms Lockart gave evidence that by 2004, the practice of Tessera selling slabs to the end user or selling fabricated and installed product direct to the end user had ceased and that practice was never resumed before either June 2005 or August 2007.
Mr Dixon also gave evidence that installing slabs was not a service that Caesarstone Australia was providing in 2007 and it was not something that Carsilstone would do. The fabricators would provide that service under their own name and branding, not the Caesarstone trade mark. That was that the position in 2005, 2006 and 2007. Mr Dixon also said that during that period there were maintenance services that Carsilstone undertook directly with the consumer, for example repairs to make right faults or damage to the benchtop. They did that wearing Caesarstone branded shirts and vehicles.
In these circumstances I find that as at the 26 August 2007 priority date, in terms of Class 35 there was continuous use by Caesarstone of the Caesarstone Services Word mark in relation to wholesale services but not in relation to retail services. In terms of Class 37, I find there was no continuous use by Caesarstone of the Caesarstone Services Word mark in relation to installation services, but there was such use in relation to maintenance and repair services.
A further ground for cancellation is under s 88(2)(c), being that: “because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion”. The time when the application for rectification was filed was 21 December 2015.
My earlier conclusions as to deceptive similarity apply. Contrary to the submissions on behalf of Caesarstone, I find that the Caesarstone Services Word mark is deceptively similar to the CÆSAR Device mark and that there is no basis in the evidence for a distinction as at 21 December 2015. I reach this conclusion, as before, despite there being no evidence of any actual confusion. Indeed, my conclusion is strengthened as I find that the usage of large formats, being referred to as tiles, increased between 2005 and 2015.
Subject to the matters I consider in the context of the s 89 issue, I would not exercise the discretion in s 88 against rectification by cancelling the registration, having found that the grounds in s 88(2)(a) and (c) are made out by Ceramiche Caesar. As to the existence of the discretion see Crazy Ron’s Communications at [129].
Section 89 provides, relevantly, that 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. The Court is to take into account any matter that is prescribed, the relevant regulation being r 8.2 of the Trade Marks Regulations 1995 (Cth), and any other matter that the Court considers relevant. I have set out r 8.2 at [40] above. The relevant parts of r 8.2 were: 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.
As to Caesarstone’s submissions as to the exercise of the discretion under s 89, the discretion is enlivened if the Court is satisfied, in this case, that the deceptive similarity has not arisen through any act or fault of Caesarstone. In my opinion, the emphasis here is not limited to fault but to conduct connected with the ground of deceptive similarity: compare Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27; 166 FCR 312 at [95] per Greenwood J. I therefore do not accept the undeveloped submission on behalf of Caesarstone that the grounds relied on by Ceramiche Caesar did not so arise. That is only one aspect of the discretion.
There are then two relevant aspects of the public interest if registration is not cancelled. The first is the issue of deceptive similarity, including no evidence of actual confusion, and the second is Caesarstone’s use of and reputation in the Caesarstone Services Word mark.
I accept Caesarstone’s submission that the public interest will be adversely affected if Caesarstone may no longer use the Caesarstone Services Word mark. I accept that Caesarstone is the name of the company and the primary brand of the business and that it enjoys a significant market share. I am not persuaded that there should be any disconformity so far as concerns the public interest between the outcome of the application for registration of the Caesarstone Goods Word mark and the issue of cancellation of the registration of the Caesarstone Services Word mark.
As to the other paragraphs of r 8.2, I find that any circumstances that gave rise to the application for rectification have not ceased to exist. I also find that the trade mark did not distinguish the relevant services before the circumstances giving rise to the application for rectification arose.
I also take into account the submission on behalf Caesarstone that it should be inferred that Ceramiche Caesar made a conscious decision at the time not to oppose the registration of the Caesarstone Services Word Mark. I draw that inference, in the absence of any explanation on the part of Ceramiche Caesar for its non-opposition, but in the circumstances of Ceramiche Caesar’s opposition to Caesarstone’s application for registration of the Caesarstone Goods Word mark and Caesarstone’s appeal in relation to that mark I do not regard Ceramiche Caesar’s non-opposition in respect of the Caesarstone Services Word mark to be significant.
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.
I certify that the preceding seven hundred and eighty-five (785) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson. Associate:
Dated: 31 July 2018
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