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

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.