Ceramiche Caesar S.p.A. v Caesarstone Sdot-Yam Ltd - [2015] ATMO 83

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…

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 83
Decision Date: 9 September 2015

CaseChat Overview and Summary

This matter concerned an opposition by Ceramiche Caesar S.p.A. (the Opponent) to an application by Caesarstone Sdot-Yam Ltd (the Applicant) for registration of a trade mark. The dispute centred on whether the Opponent's goods (ceramic tiles) were closely related to the Applicant's services, specifically the retail and wholesale of tiles, and the installation, maintenance, and repair of tiles.

The court was required to determine if the Opponent's ceramic tiles were "closely related" to the Applicant's services for the purposes of trade mark registration. This involved assessing the likelihood of consumers assuming that the Applicant's services originated from the same source as the Opponent's goods, given the respective trade marks. The court also considered the issue of deceptive similarity between the trade marks.

The court reasoned that the retail and display of tiles, including through showrooms, indicated an intertwining of manufacture and sale. While acknowledging that specialist tilers might be involved in installation and maintenance, the court found these services to be ancillary to the goods themselves, with one likely ceasing to exist without the other. Applying the principle that services ancillary to goods are closely related, the court found the Opponent's goods and the Applicant's services to be closely linked. The court also found the trade marks to be deceptively similar, applying the test that the marks should not be compared side-by-side but rather by the impression they produce on potential customers, who are not expected to exercise exceptional caution.

The court found that the Opponent's ceramic tiles were closely related to the Applicant's services. The court also found the trade marks to be deceptively similar. Consequently, the opposition was upheld.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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. 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.