Ceramiche Caesar S.p.A. v Caesarstone Sdot-Yam Ltd
[2015] ATMO 83
•9 September 2015
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 1211153 (19; 20; 35; 37) - CAESARSTONE - filed in the name of Caesarstone Sdot-Yam Ltd.
| Delegate: | Heath Wilson |
| Representation: | Opponent: Chris Burgess of Counsel instructed by Khajaque Kortian of Spruson and Ferguson. Applicant: Neil Murray of Counsel instructed by Rebekah Gay of Herbert Smith Freehills. |
| Decision: | 2015 ATMO 83 Opposition under section 52 of the Trade Marks Act 1995 – Grounds pursued under sections 44, 59, 60 and 42(b) – section 44 ground established – trade mark refused registration. |
Background
On 19 November 2007, CaesarStone Sdot-Yam Ltd, an Israeli Company of Kibbutz Sdot Yam (‘the Applicant’) applied to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’). The current details of the trade mark application are extracted below:
Trade Mark No. 1211153
Convention Priority Date: 26 August 2007
Trade Mark:
(‘the Trade Mark’)
Endorsement: 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.
Specification of Goods & Services:
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
The trade mark application was examined under section 31 of the Act and a ground for rejection was raised under section 44 identifying the Trade Mark as being deceptively similar to the following earlier trade mark registration no. 1031251 owned by Ceramiche Caesar S.p.A:
Class 19: Ceramic tiles for indoor and outdoor use.
After a number of examination reports, the Applicant 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. The examiner was satisfied that the ground of rejection was no longer applicable and the Trade Mark was accepted for possible registration. The acceptance was advertised in the Australian Official Journal of Trade Marks on 10 May 2012.
On 10 August 2012, Ceramiche Caesar S.p.A. (‘the Opponent’), the owner of the registration no. 1031251, filed a notice of opposition to the registration of the Trade Mark nominating most of the grounds of opposition available under the Act.
Evidence was filed comprising:
Evidence in Support
Declaration of Adolfo Tancredi (Managing Director of the Opponent) made 14 February 2014 with Annexures 1 to 10.
Evidence in Answer
Declaration of Andrew Dixon (General Manager, Marketing and Strategic Development of Caesarstone Australia Pty Ltd) made 19 June 2014 with Annexures AD-1 to AD-25 (‘Dixon 1’).
- Declaration of Nigel Ferguson made 13 June 2014.
- Declaration of Caterina Chiefari made 17 June 2014.
- Declaration of Kerry Shelby Brown made 14 June 2014.
- Declaration of Simon Gough made 17 June 2014.
- Declaration of Irene Spence made 18 June 2014.
- Declaration of Paula Bowen made 18 June 2014.
Evidence in Reply
Declaration of Brecht Robert Olga Valcke (paralegal with Spruson & Ferguson) made 27 October 2014 with exhibits 1 to 6.
Declaration of Gianfranco Circati made 21 October 2014.
Declaration of Massimo Sedano made 29 September 2014
Declaration of Agostino Ceravolo made 1 October 2014.
At the time this opposition proceeding was on foot, the same parties were involved in a related proceeding where the Opponent had opposed registration of the Applicant’s plain word trade mark CAESARSTONE for goods in class 19.[1] On 4 February 2015, Hearing Officer Lyons issued his decision in that matter[2] (‘Caesarstone 1’). He found that section 44(1) had been established and that it was not appropriate to apply the exceptions under sections 44(3)(a) for honest concurrent use or 44(3)(b) for other circumstances. As such, his decision was to refuse to register trade mark application no. 1058321. That decision is currently under appeal. I have been informed by the Applicant that the appeal will not progress until this opposition had been decided. Should I refuse to register the Trade Mark, my decision will be appealed and joined to the current appeal.
[1] Trade mark application no. 1058321.
[2] Ceramiche Caesar S.p.A. v CaesarStone Sdot-Yam [2015] ATMO 12.
After the issuance of Caesarstone 1, the Applicant sought to introduce further evidence for this opposition. On 29 May 2015, the Applicant applied for permission to file the:
Statutory Declaration of Andrew Dixon dated 28 May 2015 with Annexure AD-1 (‘Dixon 2’).
As a delegate of the Registrar of Trade Marks, I heard the opposition on Friday 19 June 2015 in Sydney. Chris Burgess of Counsel represented the Opponent instructed by Spruson & Ferguson. Neil Murray of Counsel appeared on the Applicant’s behalf instructed by Herbert Smith Freehills.
At the hearing, the Opponent sought to file further evidence in the event I allowed Dixon 2 into proceedings. The Opponent’s further evidence comprised:
Declaration of Khajaque Kortian (Opponent’s legal representative) made 19 June 2015 with exhibits KK-1 to KK-3.
As this opposition commenced before 15 April 2013, the parties are entitled to seek permission to serve further evidence pursuant to regulation 5.15 of the Trade Marks Regulations 1995 (‘the Regulations’) which relevantly provided:
5.15Extension of period to serve evidence and service of further evidence
(1)A party to the opposition proceedings may apply to the Registrar:
(a)…
(b)for permission to serve a copy of further evidence on the other party.
(2)The Registrar may grant an application on reasonable terms specified by the Registrar.
(3)The Registrar must not grant an application unless the Registrar:
(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
(b)has given the parties a reasonable opportunity to make representations concerning the application; and
(c)is reasonably satisfied that:
(i)…
(ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;
is appropriate.
(4)For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
(5)If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.
In support of the request for further evidence the Applicant provided the declaration of Rebekah Gay (the Applicant’s legal representative) dated 29 May 2015. The declaration contained submissions as to why the grant of permission to serve further evidence was appropriate at this stage. Ms Gay argued that parts of the Opponent’s Valcke declaration were not evidence in reply but raised new issues for the first time. As a result, the Applicant has not had the opportunity to reply to it. Ms Gay also declared that Caesarstone 1 which was issued on 4 February 2015 (after the period allowed for the parties to file evidence for this opposition had ended) identified particular shortcomings in the Applicant’s evidence. Ms Gay argued that it is in the public interest and the interests of natural justice that the application to serve further evidence in the opposition be granted.
The evidence in reply was provided by the Opponent in October 2014 and Caesarstone 1 was issued on 4 February 2015. The application for further evidence was made on 29 May 2015, some seven months after the filing of the evidence in reply. The Applicant therefore had ample time to consider the evidence in reply.
In any event, I am not convinced that the further evidence will have an important effect on the outcome[3] of the matter. The first part of Dixon 2 explains how the Applicant sells and manufactures its slabs, the size and weight of them and how Mr Dixon believes their products are not tiles or in the nature of tiles, but have nonetheless been used for flooring applications. Some of Dixon 2 is in the nature of submissions or provides minor clarification on the contents of Dixon 1.
[3] See Ladd v Marshall (1954) 1 WLR 1489.
In Dixon 2, the evidence regarding the Applicant’s awareness of the Opponent has limited value and may only have relevance to the honest concurrent use exception under section 44(4)(a) of the Act. It simply affirms Mr Dixon’s previous statements and provides further explanation. Once again, I am not satisfied that it will have an important effect on the overall outcome of this opposition.
Accordingly, I find that it is not appropriate in the circumstances to grant the application for further evidence from the Applicant. It follows from this finding that it is similarly not appropriate to grant the Opponent’s application to serve further evidence being the statutory declaration of Khajaque Kortian dated 19 June 2015.
The evidence in this proceeding is that set out in paragraph 5 of these reasons. It is with reference to that evidence that I consider the grounds of opposition pursued by the Opponent.
Grounds and Onus
The main ground of opposition pressed was that under section 44 of the Act, but the Opponent also pressed the grounds under sections 59, 60 and 42(b). Other grounds set out in the notice of opposition were abandoned.
The Opponent stated it was principally opposing the extension of the Applicant’s specification into flooring and wall cladding (and services related to those goods) which it states is the main application of its Ceramic tiles for indoor and outdoor use.
The rights of the parties are to be determined as at the date of application[4] which is generally the filing date.[5] However, the relevant date for this opposition is the convention priority date being 26 August 2007. The Opponent bears the onus of establishing a ground[6] and the standard of proof is the balance of probabilities.[7]
Discussion
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[5] See sections 6, 12 and 72 of the Act.
[6] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [32].
[7] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].
Section 44
Section 44 of the Act relevantly provides:
(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.
In support of this ground, the Opponent is relying on its trade mark registration no. 1031251:
(‘the Opponent’s trade mark’)
The Opponent’s trade mark has an earlier priority date than the Trade Mark and is registered for goods in class 19 being Ceramic tiles for indoor and outdoor use.
Similar Goods
In determining whether the Opponent’s goods are similar to the Applicant’s goods and/or closely related to its services, I set out the definition in section 14 of the Act:
14Definition 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.
The expression "goods of the same description" is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold.[8] The Assistant Comptroller in Re an Application by John Crowther & Sons (Milnsbridge) Ltd[9] summarised the main considerations for the goods of the same description:
In the case of Jellinek's Application (1946) 1A IPR 393; 63 RPC 59, Romer J. classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself.
[8] See Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725.
[9] Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 at 372.
After considering the lengthy submissions of both Mr Burgess and Mr Murray on the nature of slabs and the differences between them and tiles, I am of the same view as Delegate Lyons in Caesarstone 1. He found:[10]
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”.
[10] Caesarstone 1 at [28-29].
In the present matter some of the Applicant’s goods in class 19 have 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…” are unqualified. Regardless, the qualification “not in the nature of tiles” does not change the application of these goods as they remain 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.
Finally, while I note the Applicant’s use in the evidence, the actual nature of the use conducted by the Applicant is irrelevant at this 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” [11] (emphasis added).
[11] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 at [50].
I find that the goods in class 19 of the Applicant’s specification are similar (being goods of the same description) as the goods in class 19 of the Opponent’s specification. For completeness, I do not find that the Applicant’s class 20 goods are similar to the goods in class 19 of the Opponent’s specification.
Closely Related Goods
The expression “closely related” in the relationship between goods and services is not defined in the trade marks legislation, but as Lockhart J said in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co:[12]
Although service marks are in their infancy in Australia they may give rise to problems of confusion between service marks themselves, and between goods marks on the one hand and service marks on the other, of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone. It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other, because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programmes) on the other.
[12] Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 145; (1983) 1 IPR 265 at 276.
With regard to the services in the Applicant’s specification, Mr Burgess argued that specific services in class 35 and 37 were closely related to the Opponent’s ceramic tiles for indoor and outdoor use. Specifically, the wholesale and retail of flooring and walling goods, along with the installation, maintenance and repair of these particular goods.
Mr Murray argued that there is not a strong rationale for customers to expect that tiles and the retail or wholesale of tiles would typically originate from the same source. He also referred to relevant passages in the Trade Marks Office Manual of Practice and Procedure.[13] However, I note that the examples provided in the Manual are a guide and not intended to be exhaustive. I was further reminded by Mr Burgess of the comments of French J in Registrar of Trade Marks v Woolworths:[14]
The range of relationships between goods and services which may support the designation "closely related" will be limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting trade marks which attach to them. The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. [Emphasis added]
[13] At Part 26, paragraph 4.3.1
[14] Registrar of Trade Marks v Woolworths [1999] FCA 1020 at [38].
The evidence of both parties establishes that tiles are not only marketed to the consumer through third parties but also directly to the relevant consumer via showrooms.[15] This indicates that the retail and display of the goods and their manufacture are intertwined.
[15] Dixon 1 at [12] and the Tancredi declaration at [10].
With regard to the services of installation, maintenance and repair[16] of tiles, it may be the case that a specialist tiler or builder is needed to install or maintain the product. That is one factor that may differentiate the Applicant’s services from the Opponent’s goods. However, I find that the provision of those services are ancillary to the goods themselves and it is likely that one would cease to exist without the other. In many instances, the product will also need to be altered to suit the customer’s requirements.[17] I therefore find that those goods and services are also closely linked.
[16] See NEC Corporation v Punch Video (S) Pte Limited [2005] FCA 1126 where the installation, maintenance and repair of communications and electronic equipment were services found to be closely related to automobile audio-visual entertainment equipment.
[17] With reference to the principles set out in Re Aussat Pty Ltd (1993) 27 IPR 309 (at 311).
I find that the Opponent’s ceramic tiles are closely related to the Applicant’s services involving the retail & wholesale, installation, maintenance and repair of those goods.
Deceptively Similar
The Opponent did not argue that the two trade marks were substantially identical. For completeness I find that, based on a side-by side comparison, they are not. However, Mr Burgess argued strongly that they were deceptively similar. Concerning deceptive similarity, Dixon and McTiernan JJ stated in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[18] that:
[T]he marks ought not … 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 or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … 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.
[18] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 at 658.
The overall impression or recollection carried away and retained by the consumer of the Opponent’s and Applicant’s trade marks are the words. I do not find that the device element in the Trade Mark makes any appreciable difference to the overall comparison between the Trade Mark and the Opponent’s trade mark. An earlier version of the Trade Mark was presented in evidence and showed that the device element is in fact a representation of the scroll at the top of Roman Ionic column. However, without the column itself, the device element in the Trade Mark presents simply as stylized crescents and nothing more. As such, it is not a memorable part of the Trade Mark.
The particular fonts the trade marks are presented in are not so stylized as to be recalled by the consumer.[19] Rather, the memorable and essential feature[20] in both trade marks remains the word ‘CAESAR’. This is so because it is the first word and initial element (the only element in the Opponent’s trade mark) and in terms of pronunciation the prefix is the most important in the comparison between trade marks.[21]
[19] See Morny Ltd’s Trade Marks (1951) 68 RPC 55; (1951) 68 RPC 131 per Jenkins LJ at 149-150.
[20] See de Cordova v Vick Chemical Co (1951) 68 RPC 106; 1B IPR 498.
[21] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279.
Conversely, the remaining word ‘stone’ in the suffix of the Trade Mark lacks originality for these goods. Even if the Trade Mark is proposed to be used on flooring material other than that made of ‘stone’ (and it is not so limited), I find that this would not imbue that word with distinctiveness such that customers’ attention would be drawn from the word ‘Caesar’. In other words, consumers of these particular products and those familiar with one of the trade marks are not likely, for example, to perceive the word ‘stone’ in the Trade Mark as memorable if the floor coverings are not actually made of stone.
The Trade Mark is deceptively similar to the Opponent’s trade mark. That being so, I will now consider whether the exceptions provided for under section 44(3) of the Act are applicable. The Applicant bears the onus of satisfying me that the application of this provision is appropriate.
Section 44(3)(a): Honest Concurrent Use
Some of the inclusive factors considered in the application of honest concurrent use may be:
the honesty of the concurrent use;
the extent of the use in terms of time, geographic area and volume of sales;
the degree of confusion likely to ensue between the marks in question;
whether any instances of confusion have been proved; and
the relevant inconvenience that would ensue to the parties if registration were to be permitted. [22]
[22] See McCormick & Company Inc v McCormick [2000] FCA 1335 at [30].
Honest concurrent use is determined as at the priority date of the application[23], in this case, 26 August 2007. Use of the Trade Mark after that date is therefore irrelevant for the purposes of this section.
[23] Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 at [163].
The Opponent argues that there has been no use of the Trade Mark (as applied for) before the priority date. The Applicant is instead relying on use of the plain word mark ‘CAESARSTONE’ and an earlier composite trade mark, seen below:
The different stylized device in the above trade mark is an addition or alteration that substantially affects the identity of the Trade Mark. I am therefore not satisfied that use of the above composite trade mark amounts to use of the Trade Mark. If, however, I am wrong in that finding, I have considered both its use and use of the word mark ‘CAESARSTONE’ in the Applicant’s evidence.
For the reasons outlined previously, I find that use of the Trade Mark and of the plain word trade mark ‘CAESARSTONE’ would be highly likely to cause confusion. I agree with the following view expressed by Mr Ceravolo in his declaration:[24]
If I was to see the CaesarStone Trade Mark being used in connection with tiles or flooring, I would assume that the goods were a ‘stone’ based range of the Ceramiche Caesar good being sold under the Caesar Trade Mark, that is, ‘Caesar’ ‘Stone’ tiles or flooring.
[24] Ceravolo declaration at paragraph 12.
The nature and extent of use in Australia prior to 26 August 2007 is an important factor under s44(3)(a). The Applicant provides quartz slabs to stone masons who install the products for kitchen companies, cabinet makers, architects, interior designers, new home builders and bathroom suppliers. Although the Applicant submits that it does not supply directly to end customers, the evidence before me indicates the Applicant does market its goods directly to consumers.[25]
[25] Dixon 1 at paragraph 12, exhibit AD-4.
The overall sales of the Applicant’s products from 2002-2007 in Australia are substantial, but the figures are unhelpful in determining how the Applicant’s products were used and marketed. In particular, it is difficult to determine whether they were used as flooring or in relation to the wholesale and retail, or installation and maintenance of, flooring.
The Applicant submits that all sales were in respect of slabs that are suitable for flooring and wall cladding. The Applicant bears the onus of establishing honest concurrent use and it is not sufficient to state that the Trade Mark may have been concurrently used in relation to the conflicting goods and services.
Dixon 1 additionally provides that “the sales teams make clear to customers, that CAESARSTONE goods can be used and have been used for a broad range of applications, including flooring and wall cladding.”[26] This may be a reflection of current circumstances, but an example of the contents of a fabrication instruction manual from around 2002 does not mention the flooring application at all. It states:[27]
Common Caesarstone applications include: kitchen tops, counter tops, vanities, interior cladding, fireplace surrounds and furniture pieces.
[26] Dixon 1 at [15].
[27] Dixon 1, exhibit AD-10.
It is not until well after the priority date that the flooring application of the product is occasionally mentioned in instruction manuals and some (but not all) of the Applicant’s product brochures.
Exhibit AD-7 to Dixon 1 is an email indicating a sale in 2003 of tiles for an office space. It also indicates that there have been occasions where the Applicant’s products were sold for the purpose of flooring. However, it is evident that any such use is minimal and is in relation to tiles, an item specifically excluded from the Applicant’s specification.
When asked by consumers about using the Applicant’s product for flooring, the Applicant was “unable to warrant the application due to doubts regarding abrasion characteristics and involvement of third party installation.” [28] The Opponent’s Valcke declaration[29] also extracts the Frequently Asked Questions section of the Applicant’s Australian website (dated 21 October 2014) which confirms:
[28] Dixon 1, exhibit AD-7.
[29] At exhibit 4.
Can Caesarstone® be used as flooring?
No. Whilst some customers have opted to use Caesarstone® as flooring, this type of application is not covered by the Caesarstone® 10 Year Limited Warranty.
It is evident that the Applicant’s product may be used as flooring, but this was not the main way in which the product was marketed to the consumer before the priority date and doing so would mean that the product was not covered by the limited warranty.
No instances of actual confusion between the trade marks have been provided in the evidence. The lack of demonstrated confusion may be explained by the fact that the parties mainly operated in different industries, with the Applicant providing kitchen benchtops and splash backs and the Opponent manufacturing ceramic tiles for bathrooms. That is, the concurrent operation of both traders did not predominantly involve the conflicting goods and services.
After assessing the entirety of the Applicant’s evidence, I find that any concurrent use of the trade marks is minimal, and either dated after the priority date, or was not in relation to the conflicting goods and services. That, combined with the high likelihood of confusion in the marketplace, leads me to the conclusion that it is not appropriate to apply section 44(3)(a).
Other Circumstances
Mr Murray in the alternative argued that section 44(3)(b) is applicable because of the following factors:
· 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 Device and the CAESAR device are not identical or substantially identical;
· The absence of any evidenced confusion in 17 years of concurrent trading (including 9 years of concurrent trading as at the priority date of the Opposed Application);
· The Applicant’s significant reputation in Australia in CAESARSTONE and substantial sales;
· The fact that the Applicant supplies the same quartz surfaces regardless of the intended application; 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.
I note that the Applicant’s prior registration is in relation to various types of benchtops in class 20. These are the goods in which the Applicant traded before the priority date, not the goods in which it proposes to trade. The fact that the trade mark are not substantially identical, does not lessen the likelihood of confusion when the Trade Mark is used on the applied-for goods, nor does the Applicant’s alleged reputation for benchtops and the like.
The fact that the Applicant supplies quartz surfaces and slabs regardless of application is not relevant. Rather, the claimed specification and how the Applicant sells and markets its products are important and I have addressed those points earlier. Finally, there is insufficient evidence of the circumstances regarding the parties’ trade marks coexisting in foreign jurisdictions or the nature of those trade mark rights.
None of the above factors (alone or in combination) satisfy me that it is appropriate to apply section 44(3)(b). I find that the ground of opposition under sections 44(1) and (2) of the Act has been established.
Section 59
Section 59 of the Act provides:
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.
The Opponent asserts that the Applicant does not intend to use the Trade Mark in relation to the goods and services. The Opponent’s written submissions regarding the ground of opposition under section 59 are as follows:
The inference that arises from the applicant’s own evidence is that, in so far as it may intend to use the opposed trade mark in connection with flooring and walling goods and related services, such usage is intended in respect of goods that are in the nature of tiles.
…
There is no evidence, and no good reason for inferring, that the applicant has held any intention to use the opposed mark in connection with floor panels, coverings that are not in the nature of tiles, such as e.g. vinyl sheets or carpet. The contrary inference arises from its own evidence.
The act of filing a trade mark application is prima facie evidence of an intention to use it in relation to the claimed goods and services. While made in the context of the trade marks system where the onus to establish a mark ought to be registered was on the applicant for registration, Fullegar J in Aston v Harlee Manufacturing Co[30] said:
There is another element mentioned by Dixon J. in the Shell Co's Case (1949) 78 CLR at p 627, which is stated as essential to the proprietorship of an unused trade mark. That element is the intention of the applicant for registration to use it upon or in connexion with goods. As to this I need only say that I do not regard his Honour as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.
[30] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 (at 401).
The case law also states that a mere absence of use does not create an inference of a lack of intention to use a trade mark. As Dodds-Streeton J stressed in Suyen Corporation v Americana International Ltd[31]:
There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.
[31] Suyen Corporation v Americana International Limited [2010] FCA 638 at [207].
Neither the fact that the Applicant has used the Trade Mark in relation to tiles (which are excluded from the specification) nor the fact that certain products currently available should not be used for flooring preclude the possibility that the Applicant intends to use it on the claimed goods and services in the event the Trade Mark is registered. In fact, it is not uncommon for traders to delay use of a trade mark (in this case on particular goods/services) pending the outcome of an application for registration,[32] in order to avoid any lost expenditure on the marketing of the trade mark.
[32] See Paintmaster Products v Lewis Berger & Sons (1955) 25 AOJP 1915 at 1921.
I find that the ground of opposition under section 59 of the Act has not been established.
Section 60
Section 60 of the Act provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
To paraphrase the above section, the Opponent must establish the existence of a reputation in a trade mark in Australia prior to 26 August 2007. The Opponent then bears the onus of proving that use of the Trade Mark, on the basis of the established reputation in the Opponent’s trade mark, would likely deceive or confuse Australian consumers. The aforementioned reputation should be amongst a ‘significant or substantial’ number of consumers. The assessment of what is ‘significant or substantial’ must be properly and sensibly applied and may depend on the specialised nature of the relevant market.[33]
[33] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587 at 20.
Within Adolfo Tancredi’s declaration (‘the Tancredi declaration’), he attests to a reputation in the Opponent’s trade mark. He states the Opponent is an Italian company specializing in the manufacture of porcelain stoneware tiles for indoor and outdoor use. According to the Tancredi declaration, the Opponent’s CAESAR goods were first sold in Australia in 1988 and are now distributed to over 110 countries around the world.
Gianfranco Circati is the director of a company that provides agency services in Australia and New Zealand for a range of porcelain tile manufacturers. He attests to being aware of the Opponent’s trade mark since 2006 and of the Trade Mark since 2008 in relation to kitchen and bathroom bench tops. Another declarant from the industry, Massimo Sedano, attests to the fact that his company has been offering the Opponent’s goods in Australia under its trade mark since 1992. He came across the Trade Mark around 12 years ago, also in relation to benchtop materials. Agostino Ceravolo, director of a company that operates a tiling business in Sydney, attests to purchasing floor coverings under the Opponent’s trade mark in 1990. He is also familiar with the Trade Mark but again in relation to slabs used to make kitchen benchtops.
All of the above declarants provide their opinion on the high likelihood of confusion should the Trade Mark be used on tiles or flooring. The above comments affirm my previous finding that the trade marks of the parties are deceptively similar. Such a finding is not determinative of the ground of opposition under section 60, although it necessarily affects the likelihood of confusion or deception should the Opponent establish that its trade mark enjoyed the requisite reputation as at the priority date.
As mentioned, the Opponent relies on the reputation in its trade mark CAESAR. The Tancredi declaration makes it clear that the Opponent has used its trade mark to a significant degree overseas, but I am not satisfied that this use translated to a reputation in Australia before the priority date.[34]
[34] See Conagra Inc. v McCain Foods (Australia) Pty Ltd (1992) 33 FCR 302; 23 IPR 193 (at 233-4).
There is some evidence of Australian sales figures of the Opponent’s CAESAR product but there are no advertising figures provided and the promotion in Australia appears to be modest. I am accordingly not satisfied that the requisite reputation in Australia can be inferred[35] and it has not been established as a matter of fact.[36] On the evidence provided, the Opponent’s trade mark does not enjoy a reputation that would result in the use of the Trade Mark deceiving or causing confusion amongst consumers.
[35] McCormick & Co Inc v McCormick (2000) 51 IPR 102 (at 127)
[36] ConAgra supra (at 77).
Section 60 of the Act has not been established.
Section 42(b)
Section 42(b) of the Act provides:
An application for the registration of a trade mark must be rejected if:
(b) its use would be contrary to law.
The Opponent argued that the use of the Trade Mark would be contrary to s 18 and/or ss29(g) and (h) of Schedule 2 to the Competition and Consumer Act 2010 (Cth).
This is predicated on a similar argument to that put in relation to the section 60 ground. As section 60 has not been established it follows that there are not a reasonably significant number of potential purchasers that are likely to be aware of the Opponent’s product and then misled (rather than deceived or confused), by the Applicant’s use of the Trade Mark.
In other words, as there was no reputation in the Opponent’s trade mark sufficient to support a finding that the use of the Trade Mark would deceive or confuse Australian consumers under section 60 of the Act, it follows that the reputation is likewise insufficient to support an argument for misleading and deceptive conduct, as it is a more onerous standard.[37] In addition, there is nothing in the evidence to satisfy me that there are false or misleading representations that would enliven subsections 29(g) or 29(h) of the Australian Consumer Law.
[37] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191 at 199 per Gibbs CJ
Under section 42(b) of the Act, I must be satisfied that the use of the Trade Mark “would”, not “could,” be contrary to law[38]. I am not so satisfied and the ground of opposition under section 42(b) has not been established.
[38] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 32.
Decision
At the time the current opposition was commenced section 55 of the Act relevantly provided:
55Decision
(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.
As the ground of opposition under section 44 has been established, I refuse to register trade mark application no. 1211153.
Costs
The Applicant has been unsuccessful in this matter. An award of costs normally follows the event and I therefore award costs against the Applicant according to the scale set out in Schedule 8 of the Regulations.
Heath Wilson
Hearing Officer
Trade Marks Hearings & Oppositions
9 September 2015
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