Ceramiche Caesar S.p.A. v Caesarstone Sdot-Yam Ltd

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.