Ceramiche Caesar S.p.A. v CaesarStone Sdot-Yam

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CERAMICHE CAESAR S.p.A to registration of trade mark application 1058321(19) – CAESARSTONE - in the name of CaesarStone Sdot-Yam Ltd

Delegate: Debrett Lyons

Representation: Opponent: Chris Burgess of Counsel instructed by Spruson & Ferguson, Patent & Trade Mark Attorneys
Applicant: Rebekah Gay of Herbert Smith Freehills

Decision:
2015 ATMO 12
s52 proceedings: ss42(b), 44, 59 and 60 pressed – s44(3) argued – s44 established; opposition successful; trade mark refused registration.

Background

On 2 June 2005 (“the Priority Date”), an Israeli company, CaesarStone Sdot-Yam Ltd (“the Applicant”), filed an application under the Trade Marks Act 1995 (“the Act”) to register CAESARSTONE as a trade mark (“the Trade Mark”).
The Trade Mark was examined and accepted for possible registration in respect of the following goods (“the 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
Acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks on 3 May 2007 and on 31 October 2007, after obtaining an extension of time to do so, an Italian company, Ceramiche Caesar SpA (“the Opponent”), filed a Notice of Opposition to registration of the Trade Mark.
The parties filed evidence as described below, several years after which a hearing was convened. Acting as a delegate of the Registrar of Trade Marks, I took that hearing in Sydney on 17 October 2014. The Opponent was represented by Chris Burgess of Counsel, instructed by Spruson & Ferguson, Patent & Trade Mark Attorneys, and the Applicant was represented by Rebekah Gay of Herbert Smith Freehills.
In accordance with directions I gave in the weeks leading up to the hearing the parties lodged written outline submissions from which it was clear that the Opponent intended to rely for its opposition on sections 42(b), 44, 58A, 59 and 60 of the Act. At the commencement of the hearing I was advised by the Opponent that section 58A would not be pressed and so aural submissions were limited to the remaining four grounds.
The Opponent bears the onus of establishing one or more of those grounds of opposition on the balance of probabilities.[1] Any other ground listed in the Notice of Opposition I treat as having not been established but can be argued should my decision be appealed. The date at which the grounds of opposition must be established is the Priority Date of the application.[2]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663.
[2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.
The Evidence
The evidence filed in this Opposition comprises:
Evidence in Support: declaration made by Luigi Annovi, Vice-President of the Opponent, (undated but filed on 19 February 2009), with Exhibits AT-1 to AT-10 (“the Annovi Declaration”); and
Evidence in Answer: declaration made by Andrew Dixon, General Manager, Marketing and Strategic Development of Caesarstone Australia Pty Ltd made 31 May 2012, with Exhibits AD-1 to AD-17 (“the Dixon Declaration”).
Preliminary findings
The undisputed factual matters of relevance are as follows:
The Applicant was founded in Israel in 1987. It sells finished stone products by reference to the Trade Mark.
Those products are composed of reconstituted quartz stone[3]. The products are intended for use in bathrooms, as bench and kitchen countertops and splash backs, or as wall cladding and flooring.
[3] Described on the Applicant’s website as being “created from 93% natural quartz aggregates, organic pigments and enhanced polymer resins”.
The Applicant first used the Trade Mark in Australia in 1998.
From 2001, the Applicant distributed its products through two licensees, Carsilstone and Tessera. It now has an Australian subsidiary, Caesarstone Australia Pty Ltd, incorporated in September 2006.
The Applicant owns registration 861751 for the Trade Mark having a priority date of 28 December 2000 and registered in class 20 for “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”.
The Applicant has also sought registration for CAESARSTONE (stylized as shown hereunder) in classes 19, 20, 35 and 37 under application 1211153.[4] That application has also been opposed by the Opponent.
[4] 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
The Opponent makes tiles. It owns trade mark registration 1031251 dated 23 November 2004 for the trade mark appearing below (“the CAESAR Device”) for class 19 goods being “Ceramic tiles for indoor and outdoor use” (“the Opponent’s goods”):
The Opponent’s goods were first sold in Australia in 1988 and continue to be sold here although there is no evidence of any marketing activities by the Opponent in Australia.
Outline of the dispute
With the exception of section 59 which provides a basis for opposition in the case of an application filed without an intention to use the trade mark, the grounds pressed by the Opponent rely in common on confusion or deception in some form or another.
It is against that background that the Opponent concedes that:
there is no dispute the parties are able to exist concurrently in the Australian market where the applicant’s use of the CAESARSTONE trade mark is confined to the class 20 (bench or table top surface) goods that are specified in its existing CAESARSTONE registration. Use by the opponent of the CAESAR Device trade mark in connection with tiles on the one hand, and use by the applicant of the CAESARSTONE trade mark in connection with bench and table top surfaces on the other hand, appears to have been the status quo in the Australia market since at least 2002.
However, the Opponent goes on to state that:
The dispute in this opposition concerns the applicant’s attempt to extend, via the opposed mark, the scope of its registered trade mark protection from class 20 bench/table top goods (etc) into the opponent’s area of reputation and registered trade mark protection (i.e., flooring and wall cladding, which is what the opponent’s class 19 ceramic tiles are used for). It is this proposed enlargement of the applicant’s trade mark usage that gives rise to a likelihood of deception and confusion.
For its part, the Applicant submits that the claimed sales levels of the Opponent’s goods in Australia since 1988 are (i) troublesome on the evidence; (ii) sizably less than sales of Goods bearing the Trade Mark in the same period of time; and (iv) were not supported by any evidence of promotional activity.
The Applicant argues that there is no evidence of actual confusion and, on the evidence, no likelihood of confusion or deception, that the opposition is not established on any of the grounds pressed and were I to find that section 44(1) was prima facie sustainable, the Applicant is nonetheless entitled to registration under the provision of section 44(3) by reason of honest concurrent use of the Trade Mark or other special circumstances.
Section 44
Section 44(1) of the Act states:
44Identical 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).
The registration upon which the Opponent relies is 1031251 for the CAESAR Device. It has as an earlier priority date than that of the Trade Mark and is owned by a person other than the Applicant. It remains for the Opponent to show that the goods of 1031251 are “similar goods”[5] to the Goods and that the trade marks in question are “deceptively similar” (there being no submission that they are substantially identical).
[5] As defined in s 14(1) of the Act, namely the same goods or goods “of the same description”.
Much of the hearing was taken up with debate as to whether or not the Opponent’s goods were similar to the Goods of the Trade Mark, having particular regard to the exclusion in the Goods specification - “none of the foregoing being in the nature of tiles”. In redacted form, the Opponent made the following written submissions:
The goods specified in class 19 for the opposed mark include “Panels for floors, floor coverings, wall cladding … non-metallic covers for use with floors and parts thereof; profiles and floor skirting boards ...”.
These are “similar goods” within the meaning of s 44(1). For example, tiles are a kind of floor panel or floor covering.
The list of class 19 goods in the opposed mark concludes, “none of the foregoing being in the nature of tiles”. It is apparent from the file history of the opposed application that the class 19 goods were amended by the applicant during examination to insert these words, and delete the word “Tiles”, in an attempt to overcome the Examiner’s citation of the opponent’s prior registered CAESAR Device trade mark under s 44(1). The opposed application, as originally filed, had sought registration for “Tiles, panels for floors, floor coverings, wall cladding, flooring, and ceilings; non-metallic covers for use with floors and parts thereof; profiles and floor skirting boards”.
The deletion and express exclusion of “Tiles” from the opposed mark does not answer the s 44 ground. The s 44 objection is still made out, because other (non-tile) kinds of floor panels, floor coverings and wall claddings are goods of the same description as tiles: TMA, s 14(1).
Consider, for example, vinyl floor sheets, which are encompassed within the scope of the “floor coverings” of the opposed mark’s class 19 specification. Vinyl floor sheets serve the same purpose as ceramic tile flooring (i.e., they provide a floor covering). They are sold through the same or substantially overlapping trade channels … and vinyl floor sheets are purchased by the same or a substantially overlapping class of consumer to ceramic tiles, being consumers purchasing floor coverings. For at least these reasons, vinyl floor sheets are goods of the same description as ceramic tiles, even though vinyl floor sheets are not goods “in the nature of tiles”. These same observations apply to other types of non-tile flooring, such as carpet, wood, laminate, cork, etc.
The correctness of the above reasoning is demonstrated by the holding in Semigres Trade Mark [1979] RPC 330. In that case, the applicant tried to overcome prior conflicting marks that were registered in respect of “Floor coverings” by proposing a restriction of its specification to “ceramic tiles”. The Delegate found the restriction to be unhelpful, because he considered the “Floor coverings” of the prior conflicting marks to include (by way of example) vinyl tiles. The Delegate found that vinyl tiles were goods of the same description as ceramic tiles because they were “equally suitable as alternatives one for the other on, for example, a kitchen floor”: at 339. The trade channels were also overlapping, as here. These same considerations apply with equal force to “non-tile” kinds of floor panels and coverings, such as vinyl sheeting, laminate flooring, etc.
No doubt, the properties and installation methods for ceramic tiles on the one hand, and non-tile floor panels and coverings on the other, are in some respects different. For example, a stone mason would never be involved in the installation of a vinyl sheet. But the goods remain relevantly “similar” for s 44(1) purposes.
Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 281 ALR 544 at [34] illustrates the approach to be taken here. In that case, the respective goods under consideration were solar hot water systems and solar photovoltaic (electricity generating) systems. Significant differences existed between how these goods were sold and installed, together with their principles of operation. E.g. a plumber was required to install one system, and an electrician the other (at [29]). Despite these differences, Perram J found the goods were nevertheless of the same description. His Honour said:
I do not disregard the different ways these products are sold or the different ways in which they are installed and these differences must be frankly acknowledged. Ultimately, however, the class of consumers to whom these products are sold sufficiently overlap to mean that they are goods of the same description. The situation is not so very distinct from the beer and wine at issue in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386 (special leave to appeal on this issue refused in the High Court, see E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144): not the same product certainly; not interchangeable at the lips of every drinker; but substitutable nevertheless for some drinkers of a certain outlook and both properly and usefully described as alcoholic beverages ...
The similarity in goods in Gallo would not have been avoided by drafting the classification to read e.g. “alcoholic beverages, none of the foregoing being in the nature of beer”.
Just as beer and wine are both usefully described as alcoholic beverages, ceramic tiles and non-tile floor panels or coverings are usefully described as “Panels for floors” and “floor coverings”. This engages the bar to registration under s 44(1) if the opposed mark is substantially identical with, or deceptively similar to, the prior registered mark.
At the hearing and by agreement various dictionary definitions were handed up and, by reference to the evidence, Ms Gay sought to persuade me that what the Applicant sold was not in the nature of tiles and would not be ordinarily described as tiles.
Of the dictionary definitions, the Macquarie Dictionary defines a “tile”, firstly, as “a thin slab or shaped piece of baked clay, sometimes glazed and ornamented, used for covering roofs, lining walls, paving floors, …”. The second definition given there is “any of various similar slabs or pieces, as of stone, metal, lino, cork, slate, etc.” That same dictionary defines a “slab” as “a broad, flat, somewhat thick piece of stone, wood, or other solid material.” The Australian Oxford Dictionary defines a “tile” in very similar terms.
I note that in paragraph 7 of the Annovi Declaration it is said that the Opponent “manufactures porcelain stoneware tiles ...” The Australian Oxford Dictionary defines “stoneware” as “ceramic ware which is impermeable and partly vitrified but opaque.”
I do not consider that in this case anything critical turns on the nature of the material from which the goods are made. Nor do I find that the dimensions of the slabs of material is necessarily determinative of how the goods should be described for although it is fair to say that the Applicant’s “panels” are frequently of some size, the Opponent’s evidence shows that its largest “tiles” are 60cm x 60cms.
It seems to me to be largely a question of semantics as to whether a “panel” or “cover” for floors, skirting boards, or for ceilings is a “tile” or not and I do not think that ambiguity is resolved by the addition of words like “none of the foregoing being in the nature of tiles”.
So, for example, Annexure AD-6 to the Dixon Declaration is an email from a sales representative of the Applicant, Ms Hannah, to Mr Dixon dated August 2009 in which Ms Hannah recalls an occasion in 2003 when she sold a product she called “CaesarStone tiles”. Ms Gay, in her written submissions relating to section 44(3)(a) – honest concurrent use, submits that:
It is plain from Ms Hannah’s evidence that she is referring to the promotion and sale of large pieces of quartz surfaces for use in flooring. These pieces could readily be referred to as "panels for floors” or “floor coverings”.
and chose to describe the debate over the use of the word “tile” as “an exercise in semantics.”
The application for registration as originally framed not only nominated “tiles” as included goods but listed “tiles” before all else that came later. Annexure AD-7 to the Dixon Declaration details the Applicant’s registrations for the Trade Mark around the world and I note that the word “tiles” is frequently included along with other more generic expressions of the kind we have seen.
I have paid regard to paragraph 10 of the Dixon Declaration wherein it is explained that the Applicant’s products “require expert installation by stone masons” and I draw the conclusion based on my own personal experience that would not be the case when it came to installation of the Opponent’s goods.
I have looked through the invoiced sales by the Applicant to Australian customers and I see a good number of businesses which use the words “Tiles”, “Tiling”, or “Ceramics” as the central feature of their company or trading names. I can make the entirely reasonable assumption that those businesses sell tiles in addition to the Applicant’s Goods. I think it would also be fair to assume that they also arrange for the installation of the Applicant’s Goods even if that involves the engagement of a contracting stone mason acting under the instruction and banner of the company. It seems then common for the parties’ products to pass through the same hands before reaching the consumer.
Finally, having further regard to the Dixon Declaration, I note that the Applicant’s Australian subsidiary’s website includes the passage:
Caesarstone stone surfaces are ideal for bathroom including vanity bench tops, bath & shower surrounds and wall linings as a luxury alternative to tiles, marble & granite.
On consideration of all of the evidence I find that the Goods are at least of the same description as the Opponent’s goods and so it remains for me to assess whether the trade marks shown hereunder are deceptively similar or not:[6]
[6] Taking into account that a purely side-by-side comparison of the trade marks as just shown is not the appropriate test (see Australian Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641 referred to in para. 37).
CAESARSTONE
The expression “deceptively similar” is defined by section 10 of the Act. In The Coca-Cola Company v All-Fect Distributors Ltd, (1999) 96 FCR 107; 47 IPR 481, section 10 was considered by the Full Federal Court. In a joint judgment, Black CJ, Sundberg and Finkelstein JJ said the following at [39]:
Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

Additionally, in Australian Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641 Someone J said:
...the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark … for which the protection … is sought. The impression or recollection which is carried away or retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard…
The Opponent submits that:
Against this background, the opposed CAESARSTONE trade mark is deceptively similar to the prior registered CAESAR Device trade mark, for at least the following reasons.
·    First, the memorable and distinctive feature of the prior registered CAESAR Device trade mark is the word “CAESAR”.   In other words, the word CAESAR is the essential feature of the opponent’s prior registered mark.
The manner in which the word “CAESAR” is represented in the prior mark (the “A” and “E” are a ligature) is of secondary (and significantly lesser) trade mark significance. The position is analogous to Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, where the prior mark was the word June presented in special script, and it was the word June (not the script in which it was presented) that was the essential feature that presented the likelihood of confusion: cf Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1 at [79] to [97].
·    Secondly, the opposed CAESARSTONE trade mark incorporates the same essential feature (the word CAESAR) as its most distinctive and memorable element. This gives rise to a real likelihood of confusion or deception.
o   The word CAESAR is the most distinctive and memorable feature of the opposed mark, because:
o   the word CAESAR is the prefix;
o   the word CAESAR is not descriptive of the goods covered by the opposed mark. It brings to mind the Roman Caesars; and
o   the word STONE is descriptive of a characteristic of the goods (i.e., that they are made from stone). This causes the word STONE to have substantially less capacity to distinguish the trade origin.
·    Thirdly, the idea of the respective marks under comparison is the same. Both marks call to mind the Roman Caesars and the connotations that are attached to them, such as supremacy, power and authority.   Conceptually, there is no point of distinction.
·    Fourthly, such differences as there are between the respective marks are comparatively minor. They do not avoid the likelihood of confusion, alone or in combination:
The absence of any presentation of the word CAESAR in the opposed mark in the special script of the prior CAESAR Device trade mark is unlikely to be noted by many persons as a matter of general recollection, a fortiori persons of imperfect recollection;
As submitted already, the word STONE is descriptive and has limited capacity to distinguish the trade origin where the goods in question are floor panels, coverings and wall claddings that are made from STONE.
·    Fifthly, the words CAESAR and/or CAESARSTONE are the names that will be used by consumers to source, order and purchase the goods sold under the respective marks. There is a real and tangible risk or danger that when a consumer asks a building equipment supplier, architect, interior designer or stone mason for flooring or wall cladding consisting of “Caesar”, “Caesar tiles” or “Caesar stone” (etc), either or both persons may mistakenly confuse the floor panels, floor covers and wall cladding provided under the applicant’s CAESARSTONE trade mark for the ceramic tiles provided by the opponent under its prior registered CAESAR Device trade mark: cf e.g. Vivo International Corp Pty Ltd v Tivo Inc (2012) 294 ALR 661 at [157]-[159].
·    Sixthly, consumers are accustomed to related brands and sub-divisions within brands. There is a real likelihood that some people seeing the opposed mark will wonder, or be left in doubt, about whether the applicant’s CAESARSTONE trade mark represents a division, or a sub-brand of, the same trade source that is signified by the opponent’s CAESAR Device trade mark.
For example, some people might well reasonably think CAESARSTONE is a sub-brand of the same business that trades under the CAESAR Device trade mark e.g. a sub-brand that offers the consumer a particular kind of CAESAR branded stone.   Cf e.g. Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227 at 230, where the Court held that “someone who knew of a “Polo” product, upon seeing a similar product selling under the name “Polo Club”, would be quite likely to think it was a particular version of the product which could be described as the Club version”.
·    Seventhly, it is likely that at least some persons may abbreviate the opposed mark in spoken form to the word CAESAR. This is a further factor that enhances the likelihood of confusion.
·    Eighthly, the risk of confusion must be considered against the background of the full and fair notional use that can be made of the opposed mark. As submitted above, both tiles and non-tile floor panels, floor coverings and wall claddings are sold through the same or substantially overlapping trade channels, to the same or substantially overlapping classes of customer.
The above considerations establish there is a real danger and likelihood that some people will be deceived, or at the least wonder, or be left in doubt, about whether the goods provided under the opposed mark come from the same trade source as ceramic tiles provided by the applicant under the prior registered CAESAR Device trade mark.
On this basis, the bar under s 44(1) applies.
Mr Dixon’s opinion that the “The purchase process” will involve “… careful inspection of the products, as well as consideration [of] their qualities and source” does not answer the s 44 objection: Dixon at [19]. This line of argument is no answer, for two reasons. First, the high degree of similarity between the marks presents a real likelihood of confusion even where closer consideration and care is paid to the goods before purchase than e.g. fast moving consumer goods. Secondly, confusion need not be shown to be likely to lead to actual mistaken purchases before s 44 is engaged: cf Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 598. A probability of confusion, if it is real, is sufficient, even though the confusion may not persist up to the point of, and be a factor inducing, actual sales: see Storage King Pty Ltd and Storage King Services Pty Ltd v King Arthurs Storage [2014] ATMO 21 at [17] in the context of s 60; the same principle applies under s 44.
The Applicant submits that I must pay regard to the overall impression of the two trade marks and the fact that the Trade Mark might wholly incorporate the Opponent’s registered mark is not conclusive of a finding of deceptive similarity. Rather, that finding would depend on a number of factors including the extent to which the shared element has retained its identity as an essential feature of the Trade Mark and whether the additional element changes the idea of the Trade Mark.
I agree entirely with those broad propositions and it is against them that the Applicant goes on to submit:
The CAESARSTONE mark comprises the additional “STONE” element, which is joined together with the CAESAR element to form a single, invented and distinctive word. The invented word CAESARSTONE is both visually and aurally distinct from the word CAESAR. The STONE element:
o is almost half the length of the invented word CAESARSTONE;
o significantly reduces the visual and aural impact of the CAESAR element; and
o has an effect on the central idea that emerges from the composite mark, which is an emphasis on stone.
The Opponent’s analysis of the marks attempts to ignore all other elements of the Caesar Device. However, the particular font (a Roman font) and the ligature of the “A” and “E” (a feature of Latin) results in a visual emphasis on the allusion to the Roman Caesars. This visual emphasis is not present in the Opposed Mark. To the contrary, the combination with STONE results in a shift in the central idea of the mark: Mitsubishi Jidosha Kogyo Kabushiki Kaisha v Jason International Inc (2004) 64 IPR 146. Further, the overall visual impact of the marks is very different, given the overall presentation of the Caesar Device, including the ligature.
The Opponent suggests that a person “may confuse the floor panels, floor covers and wall cladding provided under the applicant’s CAESARSTONE trade mark for the ceramic tiles provided by the Opponent’s under its prior registered CAESAR Device”. However, given the idea conveyed by the STONE element of the mark, it is unlikely that a consumer would mistake the products sold under that mark with the ceramic (i.e. non-stone) products provided under the CAESAR Device. There is in fact a disconnect between the Opposed Mark and the goods the subject of the Opponent’s registration.
The Opponent also speculates that it is “likely” that some people might abbreviate the Opposed Mark. This is mere speculation. As a single word (rather than two separate words), the Opposed Mark does not invite abbreviation, and it is apparent from the Applicant’s evidence that, in practice, it has not in fact been abbreviated.
A mere possibility of confusion is not enough – there must be a real, tangible danger of it occurring: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR at 365. Further, all of the surrounding circumstances must be taken into consideration include the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold and the character of the probable purchaser of the goods: Jafferjee v Scarlett (193) 57 CLR 115; and see also Pianotist Co’s Application.
The goods the subject of the Opposed Marks are products that become permanent fixtures in a person’s home, and which consumers buy only on rare occasions. In many cases (such as in the case of the Applicant’s goods), the products represent a significant financial investment, costing several hundred dollars per meter. Consumers are therefore likely to give careful consideration to their selection. It is to be expected that they will almost always be chosen after careful inspection of the products (such as at showrooms or specialist retail outlets) and often in consultation with architects or interior designers (Dixon Declaration, [19]). They are often advertised in specialist interior design and architecture magazines (Dixon Declaration, [25])
The Opponent’s evidence also establishes that its ceramic tile products are sold through specialist tile outlets.
In these circumstances, the following passage from Giorgio Armani S.p.A v Taiwan Yamani Inc ( 1989) 17 IPR 92 is particularly apposite:
...the opponents case...must fail because, in relation to the goods in question here, I regard the visual impact of the marks, which is very different, to be of more importance than any aural similarity. The commercial reality today is that articles of clothing are simply not purchased over the counter on a verbal request but are carefully selected by a potential customer from a rack in a shop and very carefully inspected and compared with similar articles
Given the care with which consumers are likely to select goods falling within the scope of the specification of the Opposed Mark, the channels through which they are sold, and the process through which consumers are like to go before making a selection there is no real, tangible danger of confusion. This conclusion is supported by the absence of any evidence of actual confusion.
The Opponent rests on the usual authorities including the case of Registrar of Trade Marks v Woolworths (1999) 45 IPR 411, in which French J found that the assessment of the likelihood of deception and confusion rested on a number of factors including what he described as a real tangible danger of confusion, rather than a mere possibility of such. His Honour stated that this was “another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.”
Accordingly, my task is to determine what is memorable about the two trade marks and so decide, having regard to the similarity of impression created by the marks and to the other factors mentioned, whether there is a reasonable likelihood of deception or confusion among a substantial number of persons if the Applicant uses the Trade Mark normally and fairly in respect of the Goods.
My finding is that the likelihood of confusion or deception is very high. I am in agreement with much of what the Opponent has said and am unpersuaded by the Applicant’s submissions. I find that it is almost inevitable that a substantial number of people will be confused or deceived by use of the Trade Mark. Accordingly, I find that the Opponent has made a case under section 44(1) of the Act and so, as the Applicant acknowledges and argues, it bears the onus of proof to show that section 44(3) applies on the facts.
Section 44(3)(a) states:
(3) If the Registrar in either case[7] 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.
[7] That is, either s.44(1) or (2) being satisfied.
In that respect the Applicant submits that:
Section 44(3)(a) – honest concurrent use
… the main factors to be considered in assessing honest concurrent use are:
§ the honesty of the concurrent use;
§ extent of the use in duration, area and volume;
§ the degree of confusion likely to ensue;
§ whether any instances of confusion have in fact been proved; and
§ the relative inconvenience which would be caused to the parties by the allowance or denial of registration.
Honest and concurrent use is to be judged as to (sic) the date of application for registration of the Opposed Application, namely 2 June 2005. However, post application use may be considered in the exercise of discretion under section 44(3).
The discretion given to the Registrar’s (sic) by s 44(3)(a) is unfettered and “… any relevant circumstances may and indeed ought, to be considered ”.
The Applicant has used the CAESARSTONE mark honestly
The circumstances which surround the adoption of a trade mark are of considerable importance when considering whether the use of that mark has been honest. In the present case, there can be no question that the Applicant adopted and has used the CAESARSTONE mark honestly.
The Applicant developed and adopted the CAESARSTONE trade mark in Israel in 1987 (Dixon Declaration, [5] & AD-2). This is the same year that the Opponent says it made the decision to adopt the CAESAR mark in Italy, and a year before the Opponent says it first used the CAESAR mark anywhere in the world (Annovi Declaration, [8] & AT-1). It predates the Opponent’s earliest trade mark filing, which was November 1993, by some six years (see Annovi Declaration, AT-3). Accordingly, the Applicant could not have known of the Opponent or its adoption of the CAESAR mark at the time that it adopted the CAESARSTONE trade mark.
Instead, as stated above, the Applicant independently developed and adopted the CAESARSTONE name to reflect the company’s origins near the ancient Roman city of Caesarea, in Israel (Dixon Declaration, [5]).
The Applicant first sold CAESARSTONE goods in Australia in 1998. Prior to that time, the Opponent’s total sales in Australia in the decade from 1988 to 1997 were limited to just over £2.5 million[8] or €2.5 million, and it did not have any registered trade mark rights in Australia. There is no evidence of the marketing or advertising of the Opponent’s products in Australia at all, let alone before 1998. Given the very low level of sales and lack of advertising in Australia, it is a reasonable conclusion that the Applicant was not aware of the sale of the Opponent’s products in Australia as at 1998.
[8] As explained later, this is a reference to Italian Lira, not Pounds Sterling.
By June 2005, when the Applicant filed the application for the Opposed Mark, the Applicant had been using the CAESARSTONE mark in Australia for 7 years and had enjoyed sales in the order of tens of millions of dollars. Its sales figures from 2002 to 2011 demonstrate that it has enjoyed strong year on year growth in sales. This has been achieved through the active promotion of its quartz surfaces for a range of applications. By June 2005, it was a natural step for the Applicant to file a trade mark application which extended its trade mark protection to cover the full range of applications for which its quartz surfaces are used. Given that in 2004, the Opponent’s sales were about 5% of the Applicant’s sales, and again in the absence of any evidence of advertising by the Opponent in Australia, it is reasonable to infer that the Applicant was not aware of the sale of the Opponent’s products in Australia as at June 2005.
Consistent with this, Mr Dixon gives evidence that he was not in fact aware of the Opponent or its products in the Australian marketplace before these opposition proceedings (Dixon Declaration, [35], [36]). The Opponent seeks to limit the import of Mr Dixon’s evidence on the basis that it is merely his own personal knowledge. However, Mr Dixon makes his declaration as the duly empowered representative of the Applicant (Dixon Declaration, [3]). He has worked in the industry since 2004 and regularly reviews tile magazines and other Australian industry literature. His role and responsibilities are such that he is, in effect, the eyes and ears of the Opponent in the Australian marketplace.
The Applicant has used the CAESARSTONE mark extensively across Australia
The Applicant first sold CAESARSTONE quartz surfaces in Australia in 1998, that is seven years before the priority date of the Opposed Application (2 June 2005). In that seven-year period, its use and sales had been extensive:
§ between 2002 and 2004 inclusive, the Applicant made sales with a value of approximately AU$55 million in Australia under the CAESARSTONE mark; and
§ in 2003 and 2004 inclusive, the Applicant spent approximately AU$2.5 million in Australia on advertising and marketing products under the CAESARSTONE mark.
§ Since the priority date, the Applicant has continued to make extensive use of, and sales under, its CAESARSTONE trade mark in Australia:
§ from 2005 to 2011, the Applicant’s sales in Australia of goods under the CAESARSTONE mark were approximately AU$460 million; and
§ from 2005 to 2011, the Applicant spent approximately AU$21.6 million in Australia on advertising and marketing products under the CAESARSTONE mark.
Before the priority date, the Applicant’s goods were being distributed across Australia, in New South Wales, Victoria, Queensland, Western Australia and South Australia (Dixon Declaration, [9]).
All of the Applicant’s goods, sold since 1998 in Australia are highly engineered quartz surfaces that are composed of quartz combined with polymers and pigments (Dixon Declaration, [4]). The same quartz surfaces are suitable for use in a range of applications, including as bench tops, wall cladding (including splash backs) and flooring. The versatility of the Applicant’s quartz surfaces is demonstrated, for example, in the photograph that is Annexure AD-2, in which the applicant’s quartz surfaces are used on a bench top, as a wall cladding and for the floor of a stand at the DesignEx show.
The Applicant’s evidence indicates that the most common applications are kitchen countertops, bathroom countertops and splashback surfaces. However, the same products are suitable for use in all applications and therefore have been promoted and sold for such use. Because the same products are suitable for all applications, the Applicant does not necessarily retain a record of the particular application for which a product is sold. Further, before September 2006, the Applicant’s products were sold through a third party distributor and records of the particular application for which a product was sold are not available from that distributor. Nevertheless, the evidence of the Applicant clearly establishes that both as at the priority date and since the priority date:
§ the Applicant has made extensive sales of its quartz surfaces in Australia;
§ the Applicant’s quartz surfaces are suitable for use in a range of applications, including wall cladding and flooring;
§ the Applicant has actively promoted the use of its quartz surfaces generally (spending millions of dollars a year), and for a range of applications including as wall cladding and flooring; and
§ the Applicant’s quartz surfaces have in fact been used for wall cladding (including splashbacks) and flooring.
The Opponent seeks to exclude some of the Applicant’s evidence because of the use by a sales representative of the word “tile” to describe the product as used for flooring applications. This is an exercise in semantics. It is plain from Ms Hannah’s evidence that she is referring to the promotion and sale of large pieces of quartz surfaces for use in flooring. These pieces could readily be referred to as "panels for floors” or “floor coverings”. They are depicted in the photograph that also forms part of Annexure AD-6. Ms Hannah’s choice of the word “tile” does not provide a basis for excluding her clear evidence as to the use of the Applicant’s quartz surfaces for flooring applications.
The Applicant’s November 2005 brochure, images from the Caesarstone website (Annexure AD-7) and Ms Hannah’s email (Annexure AD-6) are all “by way of example” of the ways in which “our sales team makes clear to customers, the CAESARSTONE goods can be used and have been used for a broad range of applications, including flooring and wall cladding” (Dixon Declaration, [13]-[17]).
There is no degree of confusion likely to ensue and no instances of actual confusion
Kitto J in Southern Cross [1959] 71 CLR 592 explained the meaning of confusion:
“A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.”
The coexistence of both parties in the Australian marketplace since 1998 without any evidence of actual confusion is strongly indicative of the ability of the respective marks to coexist and operate without any such confusion arising.
Relative inconvenience
Since 2002, the Applicant’s sales in Australia of products under the CAESARSTONE mark have been approximately $515 million. The sales have all been in respect of quartz surfaces that are suitable for use in a range of applications such as bathroom, bench and kitchen countertops, splash backs, wall claddings and flooring. While the Applicant is already the owner of trade mark registration no. 861751, that registration nonetheless does not reflect the full range of applications for which the Applicant’s products are now, and have for many years, been promoted and sold.
In Pharmaceutical Plant Co Pty Ltd v TP Health Ltd (2006) 70 IPR 198; [2006] ATMO 49 at 209, the Registrar's Delegate took account of 5 years of concurrent use stating that:
If I was to refuse to register the applicant's trade mark, its years of presence within the market would be unrecognised.
In K-Mart Corp v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149, it was found that denial of registration after 17 years of use would be a considerable inconvenience noting that:
… the opponent appears to have been able for 12 of those years to trade alongside the applicant with no apparent difficulty.
It would be a considerable inconvenience to the Applicant if its significant sales and presence in the Australian marketplace under the CAESARSTONE trade mark – being 7 years as at the priority date and 16 years to date – were to go without proper recognition.
At the same time, no inconvenience to the Opponent has been evidenced as it appears that it has been able to continue to trade alongside the Applicant for the last 16 years with no apparent difficulty. Indeed, to the contrary, the evidence indicates that since the Applicant’s entry into the Australian marketplace in 1998, the Opponent’s Australian sales (see Annexure AT-5) have been at a higher level than its sales levels before 1998. There is no other evidence to suggest that the Opponent would suffer any inconvenience as a result of the registration of the Opposed Application.
… the Opponent suggests some inconvenience arising from the Applicant “now seeking to expand its trade mark protection”. However, the Applicant’s attempt to expand its trade mark protection is simply an attempt by the Applicant to secure trade mark protection for its key brand and trading name for the full range of applications for which it has long advertised and sold its products.
Section 44(3)(b) - other circumstances
The combination of the following further circumstances also make it proper for the Registrar to allow registration of the Opposed Application under section 44(3)(b):
§ the registration of the Applicant’s CAESARSTONE trade mark in class 20 (under registration 861751) which precedes the priority date of the Opponent’s registration 1031251;
§ the fact that the CAESARSTONE mark and the CAESAR Device subject of the Opponent’s registration 1031251 are not identical or substantially identical;
§ the absence of any evidenced confusion in 16 years of concurrent trading (including 7 years of concurrent trading as at the Priority Date of the Opposed Application);
§ the Opponent’s significant reputation in Australia in CAESARSTONE and substantial sales; and
§ the coexistence of the parties in numerous other jurisdictions, both in the marketplace and on the Register, including in the United States of America and China.

In reply, the Opponent’s argument is that:
… the evidence does not establish there has been honest concurrent use, for at least the following reasons.
First, the applicant’s evidence does not demonstrate any material prior concurrent use in respect of the goods that are covered by the opposed application, being “panels for floors, floor covering, 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”.
Instead, the applicant’s concurrent use has predominantly been in respect of kitchen and bathroom bench top surfaces and splash backs i.e. the goods already covered by the applicant’s existing trade mark registration. See, for example:
The Australian print advertisements at Annexure AD-9, which promote bench top and splash back surfaces without any apparent reference to goods in the nature of floor panels or floor coverings: Dixon, Annexure AD-9.
The Australian distributor website site evidence at Annexure AD-14 p 1, which states e.g. “Welcome to CAESARSTONE®. SUPERIOR FOR LIFE. The Original Quartz Bench Top. Caesarstone® is the ultimate choice for kitchens, bathrooms and more in residential & commercial areas … ”.
The specification for the applicant’s prior registered Australian Trade Mark No. 861751 for CAESARSTONE, which covers “worktops, sink tops, work surfaces…” in class 20. When the applicant applied to register this mark in December 2000, it did not seek any registration in class 19 for goods in the nature of flooring, cladding or ceiling products: Annexure AD-16. The clear inference is that the applicant did not seek registration for any class 19 goods at that time, because it held no intention of using its mark in connection with such goods.
The force of this point is, to some extent, acknowledged by the applicant’s Mr Dixon. He states (at [13]),
…The most common applications [for the “Caesarstone products”] are kitchen countertops, bathroom countertops, and splashback surfaces. However, as our sales teams make clear to customers, the CAESARSTONE goods can be used and have been used for a broad range of applications, including flooring and wall cladding.
Mr Dixon does not give any evidence that would enable the Hearing Officer to properly assess the extent to which the applicant’s goods were promoted and sold for flooring, wall cladding and ceiling applications before the priority date.
For example, at [22], Mr Dixon states that tens of millions of dollars’ worth of “goods” bearing the CAESARSTONE trade mark have been sold in Australia since 2002. But he does not identify what proportion, if any, of these sales, or the related promotional expenditure, concern flooring, cladding or ceiling products.
In the result, Mr Dixon’s declaration begs the following questions: (1) Which (if any) “Caesarstone products” or “goods” were marked and sold in Australia for use in flooring, wall cladding and ceilings before priority? (2) In which years were such products marketed and sold in Australia? (3) What was the extent (if any) of the Australian sales for these products used in flooring, wall cladding and ceilings? (4) What was the expenditure (if any) in promoting such products for use in flooring, wall cladding and ceilings, in each pre-priority date year?
The closest the applicant’s evidence comes to addressing the above matters is an email from Ms Hannah (a sales rep) to Mr Dixon dated August 2009: Annexure AD-6. Ms Hannah comments in this email that she recalls one occasion in 2003 when she personally sold a tile product called “CaesarStone tiles” to “Gitani Stone for use in their office space”. Ms Hannah also refers to “other [tile] sales one of which was in Queensland that Paul Wendall was involved in” but says “I cannot recall the detail”. She identifies three premises in which the CaesarStone tiles were installed, and concludes: “we had market awareness and it was not uncommon in my role as a sales representative to be asked about CaesarStone flooring”.
This evidence is unsupported by any pre-priority date documents, such as sales records. In any event, it does not demonstrate concurrent use of any scope and scale sufficient to supports the application of s 44(3)(a).
Notably, the goods that Ms Hannah asserts were prior sold (CaesarStone “tiles”) are the goods that the opposed application excludes expressly from class 19. It is a nonsense to say that the trade mark applicant can rely on sales of the very goods it has purported to exclude expressly from its application to support a finding of honest concurrent use.
Note also that Ms Hannah was continuing to work for the applicant (through its Australian subsidiary) at the time she sent the August 2009 email. Her use of the past tense is significant: “We had market awareness…”. There is no evidence that any past market awareness of the “CaesarStone tiles” in 2003 was continuing as at the June 2005 priority date, or in 2009, or today.
Secondly, the applicant has not discharged its burden of demonstrating the honesty of any concurrent usage in respect of floor panels or coverings, ceilings and wall claddings:
Mr Dixon’s evidence is that he personally was not aware of the opponent’s presence in the Australian market. He says, “Apart from these opposition proceedings I have not been aware of the Opponent or its products in the Australian marketplace” at [35] (emphasis added).
Mr Dixon does not address whether the applicant was aware of the opponent’s prior conflicting CAESAR Device trade mark registration in Australia, or the opponent’s reputation in Australia and worldwide for its CAESAR branded ceramic tiles, at the time the applicant made any sales of its “CaesarStone Tiles”, or at the time it filed the opposed application.
It was a matter for the applicant, bearing the onus under s 44(3)(a), to put on such evidence as was necessary to prove the applicant has used the trade mark concurrently in Australia with honesty in the relevant sense.
Thirdly, there is a real and relatively high likelihood of confusion. …
Fourthly, the opponent will suffer greater inconvenience than the applicant if the opposed mark proceeds to registration:
As submitted below on s 60, the opponent is the relevant party who promoted and sold millions of dollars’ worth of tiles (a flooring and wall cladding product) before the priority date in Australia under and by reference to the CAESAR Device trade mark.
The applicant’s historical concurrent usage has been predominantly in bench top surfaces for kitchens and bathrooms and splash backs. It already enjoys registered trade mark protection for the CAESARSTONE trade mark in connection with such goods.
Despite the fact that the opponent has sold its tiles in Australia since 1988, the applicant now seeks to expand its trade mark protection from bench tops/splashbacks (etc) into the scope of the opponent’s registered trade mark protection and its reputation and market space in flooring and wall cladding products. This will cause significant inconvenience to the opponent.
The inconvenience suffered by the opponent will include the real likelihood of confusion in the market and the diminution and dilution of the scope of its rights in the prior registered CAESAR Device trade mark.
I am reminded foremost that concurrent registration of otherwise confusingly similar trade marks is one of the idiosyncrasies of the trade mark registration system which is tolerated, in some cases, even where the evidence shows that the public is likely to be confused or deceived by the similarity (or even the identity) of trade marks and the overlap in the goods or services for which they are used.
It is sometimes said that of the factors first laid out in the UK case of John Fitton & Co Ltd’s Application (1949) 66 RPC 110 and reiterated by the Australian courts in McCormick & Co Inc v McCormick (2000) 51 IPR 102 (set out above in the Applicant’s submissions in paragraph 45), it is the honesty of the use which takes primacy and is a prerequisite to registration and is accordingly a significant factor influencing my discretion whether or not to apply section 44(3)(a). In that respect, I have no doubt that the Applicant’s adoption of the Trade Mark was honest but the enquiry into honesty is not so limited. For reasons which emerge shortly, I also note here that the provision is premised, as it says, on “concurrent” use, and so whilst there have been older cases where an applicant has prevailed in the face of an earlier registered, but unused, mark,[9] the better view in my opinion is that it is only possible to apply this discretionary provision sensibly when the concurrency of uses is plain. Finally, it requires no further explanation that many of the cases have held that the higher the likelihood of confusion, the more difficult it will be for an applicant to obtain registration.
[9] Peddie’s Appn (1944) 61 RPC 31; E. Merck AG v Schering Ltd [1976] I.P.L.R. 49.
I have something to say generally of this dispute. Up to the Priority Date, I would agree with the Opponent that the evidence suggests that use of the Trade Mark was predominantly in connection with class 20 goods in the nature of bench and table top surfaces. The Opponent’s statement is that there is no dispute that the parties are able to co-exist in the Australian market where the Applicant’s use of the Trade Mark is contained by its registration 861751 for “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”. The Opponent states that the dispute arises by reason of the Applicant’s attempt to extend the scope of its Trade Mark protection from those class 20 goods to class 19 flooring and wall cladding in conflict with the Opponent’s class 19 ceramic tiles used for that same purpose.
It is a matter of public record that the Applicant’s fortune has grown enormously in line with increasing demand for its products. The evidence and also common observation points to the widening popularity of those products for diverse domestic and commercial applications. This is borne out by the Dixon Declaration which shows that in the period 2002 to 2004, the Applicant’s sales of goods in Australia under the Trade Mark were approximately AU$55 million, rising in the post-priority date period of 2005 to 2011 to approximately AU$460 million.
Nevertheless, putting aside what I would class as voguish modulations, the products made and sold by the Applicant are essentially the same now as they were when the Applicant first entered the Australian market; fundamentally, it is the application of those products which has broadened.
I would therefore think that, at one level, this opposition has been precipitated by the sometimes inflexible walls of the Nice Classification system of goods and services which has required that the Applicant’s products, newly described, now fall alongside the Opponent’s ceramic tiles in the same class. I am not in the position to say that nothing has changed, but I am inclined to think that the application for the Trade Mark in class 19 for the Goods has perhaps thrown in sharper relief the little that might have changed.
I have looked at the evidence that a “tile” can describe the Goods and I have found that the Goods are at least of the same description as the Opponent’s goods within the meaning of the Act. I can therefore understand the Opponent’s anxiety that the Applicant has now filed in class 19 for Goods of the same description as that which it sells under the CAESAR Device.
I have found the trade marks to be deceptively similar and I have stated that I regard the likelihood of confusion or deception as very high. Nevertheless, the Applicant has made abundant sales over an extended period and there is no evidence from the Opponent of actual confusion. I agree with the Applicant that the Opponent’s sales data is problematic. The problem is to be found in the fact that the Annovi Declaration tabulates sales data by reference to the symbol for the Italian Lira, however it is apparent that the supporting invoices annexed to the declaration are sometimes in Lira, other times in Euros. Allowing for the possible vagrancies of the Opponent’s invoicing practices, it has to be assumed that all invoices up until February 2002[10] -ie, the major part of the relevant sales period – were made out in Lira.
[10] The euro banknotes and coins were introduced in Italy on 1 January 2002, after a transitional period of three years when the euro was the official currency but only existed as 'book money'. The dual circulation period – when both the Italian lira and the euro had legal tender status – ended on 28 February 2002.
I am therefore confronted by the fact that Australian sales of the Opponent’s goods over a 16 year period before the Priority Date were relatively modest. Given what I have said about proof of concurrency of use, there is little on which I can base any finding that the trade marks have been used side by side on the parties’ relevant goods[11].
[11] I also query what proportion of the sales made by the Applicant are in respect of goods beyond the bathroom and kitchen benchtops for which they are best known.
There are other facts which sit uncomfortably with the Applicant’s claim to honest concurrent use. Although it would be wrong to regard the parties as long term protagonists they are nevertheless well known to each other (in spite of Mr Dixon’s surprisingly contrary claim[12]) and have been involved in proceedings before this Office concerning essentially the same trade marks since as early as 2003. At the hearing I asked both representatives if there was a relevant trade mark co-existence agreement between the parties and was told there was none. Section 62A has not been argued. In all the circumstances it is difficult for me to draw any findings about the standard of the Applicant’s behaviour and therefore about the honesty of its use of the Trade Mark.
[12] Mr Dixon’s involvement with the Applicant reaches back to 2004 when he worked for one of its then Australian distributors, Carsilstone, but he seems unaware of trade mark tensions between the parties from a time before 2004 and extending to the time of his declaration, a period during which he assumed the role as General Manager, Marketing and Strategic Development of Caesarstone Australia Pty Ltd, the Applicant’s exclusive Australian distributor.
Further, the Applicant’s filing for the quasi-identical stylized CAESARSTONE trade mark in classes 19, 20, 35 and 37 under application 1211153 has been opposed by the Opponent. Although it would be naïve of me to think (bearing in mind the Opponent’s statements in these proceedings about the scope of the dispute) that it has a serious concern with use in respect of all of those goods and services (footnoted earlier), I must nonetheless accept the Opponent’s action for what it is – a statement of objection to use of an almost identical trade mark for a wide specification based on legitimate grounds of opposition.
These matters point to an ongoing dispute between parties using very similar trade marks which has not been regulated by agreement and which only suggests to me that the concern the Opponent harbors is also indicative of the public confusion which use of the Trade Mark is likely to cause, bearing in mind that registration of the Trade Mark, if allowed, would permit its use in a fair and reasonable manner in respect of all the Goods and so would contemplate use on “tiles”. In that regard I am in disagreement with the trade mark Examiner who found that the exclusion of tiles and Goods in the nature of tiles was enough to permit acceptance and avoid confusion.
In my discretion I refuse to apply section 44(3)(a). I add that there is nothing to cause me to think that section 44(3)(b) might apply instead.
For these reasons the Opponent has established its section 44 ground of opposition.
Decision and Costs
At the relevant date subsection 55(1) of the Act provided:
(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
My decision is to refuse to register the Trade Mark.
I award costs against the Applicant calculated in the normal manner and in accordance with the Trade Mark Regulations 1995.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
4 February 2015

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
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
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

Class: 35
Class: 37

Endorsements: Convention priority claimed: 26 August 2007, Israel, No.203367 in respect of class 19, No. 203368 in respect of class 20, No.203369 in respect of class 35 and No. 203370 in respect of class 37.*

Delegate:	Debrett Lyons
Representation:	Opponent: Chris Burgess of Counsel instructed by Spruson & Ferguson, Patent & Trade Mark Attorneys Applicant: Rebekah Gay of Herbert Smith Freehills
Decision:	2015 ATMO 12 s52 proceedings: ss42(b), 44, 59 and 60 pressed – s44(3) argued – s44 established; opposition successful; trade mark refused registration.

[2015] ATMO 12

4 February 2015