Caesarstone Ltd v Ceramiche Caesar SpA (No 2)

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

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