Ceramiche Caesar S.p.A v Caesarstone Ltd

The case of Ceramiche Caesar S.p.A v Caesarstone Ltd involved a dispute over the registration of a trade mark. The primary issue was whether Caesarstone Ltd had made honest concurrent use of the trade mark for certain goods that were expressly excluded from the trade mark application. The appeal was heard by the Federal Court of Australia.

The central legal issues were whether the primary judge had erred in concluding that there had been honest concurrent use within the meaning of section 44(3)(a) of the Trade Marks Act 1995 (Cth), whether the primary judge had erred in finding that Caesarstone exercised control over the designated goods, and whether the application for the Caesarstone Goods Word Mark should be registered under section 44(3)(b) of the Act. The court was also required to determine the effect of a disclaimer in the trade mark application that excluded goods "in the nature of tiles".

The court found that the primary judge had erred in concluding that there had been honest concurrent use of the trade mark for goods that were expressly excluded from the trade mark application. The court held that a finding of honest concurrent use must be a finding of use in respect of goods that are in fact specified in the trade mark application. The court also found that the primary judge had erred in concluding that Caesarstone exercised control over the designated goods, whether by the exercise of quality control or on a wider basis. The court held that the "whole picture" did not substantiate control. Finally, the court held that, given its finding that the primary judge had erred in accepting Caesarstone's case based on honest concurrent use, the question arose as to whether Caesarstone's application for the Caesarstone Goods Word Mark should be permitted to proceed to registration "because of other circumstances". The court held that, given the primary judge's finding in relation to honest concurrent use, the decision not to find for Caesarstone on the basis of s 44(3)(b) was understandable.

The appeal was allowed, the orders made by the primary judge were set aside, Australian Trade Mark Registration No 1211152 was cancelled, and the respondent was ordered to pay the appellant's costs of the proceeding before the primary judge and of the appeal.