Ceramiche Caesar S.p.A. v CaesarStone Sdot-Yam - [2015] ATMO 12

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2015] ATMO 12
Decision Date: 4 February 2015

CaseChat Overview and Summary

Ceramiche Caesar S.p.A. (the Applicant) sought to register the trade mark CAESARSTONE in Australia. Caesarstone Sdot-Yam (the Opponent) opposed this application. The dispute concerned the potential for confusion between the Applicant's proposed trade mark and the Opponent's existing trade mark, the CAESAR Device, in relation to stone products. The matter was heard by Debrett Lyons, a Hearing Officer for Trade Marks.

The primary legal issue before the Hearing Officer was whether the Applicant's proposed registration of the CAESARSTONE trade mark would be likely to deceive or cause confusion, as contemplated by section 44 of the *Trade Marks Act 1995* (Cth). This involved assessing the similarity of the trade marks, the similarity of the goods in respect of which the trade marks were used or registered, and the extent to which the Opponent's trade mark was known in Australia.

The Hearing Officer found that the Opponent had established its section 44 ground of opposition. While the parties conceded that their respective uses of the CAESARSTONE trade mark (for bench and table top surfaces) and the CAESAR Device trade mark (for ceramic tiles) had co-existed in the Australian market since at least 2002 without significant issue, the Applicant's proposed registration extended to a broader range of goods in class 19, including flooring and wall cladding. The Hearing Officer determined that the similarity between the trade marks and the expanded scope of goods in the application created a real likelihood of confusion or deception.

Consequently, the Hearing Officer decided to refuse the registration of the CAESARSTONE trade mark. Costs were awarded against the Applicant.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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”); andEvidence 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.

Decision

Reasons for decision

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 LyonsHearing OfficerTrade Marks Hearings4 February 2015

Ratio Decidendi

Legal Principle Established

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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.