Opposition by Ceramiche Caesar SpA to registration of trade mark application number 2112516 (classes 35 and 37) -

[2025] ATMO 171

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Ceramiche Caesar SpA to registration of trade mark application number 2112516 (classes 35 and 37) - CAESARSTONE - in the name of Caesarstone Ltd

Delegate:

Adrian Richards

Representation:

Opponent: Jesmini Ambikapthy of Counsel instructed by Spruson & Ferguson

Applicant: David Larish of Counsel instructed by King + Wood Mallesons

Decision:

2025 ATMO 171

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under section 44, 59 and 60 considered – whether goods closely related to services – where services are to be performed in relation to goods that differ from allegedly closely related goods – ground of opposition under s 58A not enlivened – no ground of opposition established – trade mark to proceed to registration

Background

1. These are proceedings are under the Trade Marks Act 1995 (Cth),[1] and concern an opposition to registration of the following trade mark:

   [1] In these reasons, each reference to a section of an act is a reference to a section of the Trade Marks Act 1995 (Cth).

Representation:  CAESARSTONE (‘Trade Mark’)

Application number:     2112516

Priority date:  18 August 2020 (‘Relevant Date’)

Specification of services:                   Class 35: Wholesale and retail services; wholesale and retail stores and wholesale and retail showrooms featuring 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; provision of commercial information relating to the aforesaid goods; offering consulting, support, marketing, sale, promotional and technical assistance in the establishment and operation of distributorship, dealership, franchising, wholesale and retail stores and show rooms that feature the above mentioned goods

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

(‘Applicant’s Services’)

1. The person seeking registration of the Trade Mark is Caesarstone Limited (‘Applicant’), and the opponent is Ceramiche Caesar S.p.A (‘Opponent’).

2. Each party started trading in the late 1980s some distance apart, but at nearly the same time. The Applicant, in Israel, commenced selling composite stone slabs under the banner CAESARSTONE (‘Trade Mark’), at around the same time the Opponent, in Italy, began trading ceramic tiles under the name CAESAR. The Opponent started shipping its tiles into Australia as early as 1988, and the Applicant’s slabs began to be imported into Australia around a decade later - in 1998.

3. The first filing with this office by either party was by the Opponent, for the following mark (which remains registered to date):

   Representation:  

   (‘Opponent’s Mark’)

   Registration number:             1031251

   Priority date:  23 November 2004

   Specification of goods:           Class 19: ceramic tiles for indoor and outdoor use (‘Opponent’s Goods’)

4. In June 2004 the Applicant filed for the plain word CAESARSTONE (‘First CS Word’) claiming goods in class 19 that included floors, walls and ceilings but ‘none of the foregoing being in the nature of tiles’[2] (this exclusion was an attempt to draw a distinction from the Opponent’s Goods at examination, ultimately unsuccessful on appeal).[3] Then in November 2007 the Applicant filed two more trade mark applications. One was for the plain word CAESARSTONE (‘Second CS Word’), claiming services in classes 35 and 37 which proceeded to registration unopposed.[4] The other was for the following composite mark in classes 19, 20, 35 and 37:

[5]

(‘CS Composite’)

[2] Trade mark application number 1058321 (‘First CS Word’).

[3] See Ceramiche Caesar SpA v Caesarstone Ltd [2020] FCAFC 124, [16] (‘Full Court Judgment’).

[4] Trade mark application number 1211152 (‘Second CS Word’).

[5] Trade mark application number 1211153 (‘CS Composite’).

1. The Opponent opposed registration of the First CS Word and CS Composite at the office level.[6] The Applicant appealed both ATMO Decisions to the Federal Court, and the Opponent commenced a third proceeding, seeking to cancel the Second CS Word. All three of those proceedings were heard together (‘Trial Proceedings’). There followed three judgments at this level: the first being procedural,[7] the second deciding not to cancel the Second CS Word and the oppositions (which would have overturned the ATMO Decisions),[8] and the third determining the final orders with a focus on amendments to the specifications of the three subject marks.[9] The Opponent appealed to the Full Court, with the resulting judgment affirming the ATMO Decisions and cancelling the Second CS Word.[10]

   [6] Ceramiche Caesar SpA v CaesarStone Sdot-Yam Ltd [2015] ATMO 12 (Hearing Officer Lyons); CeramicheCaesar SpA v CaesarStone Sdot-Yam Ltd [2015] ATMO 83 (Hearing Officer H Wilson) (‘ATMO Decisions’).

   [7] CaesarStone Sdot-Yam Ltd v Ceramiche Caesar SpA [2017] FCA 326 (Robertson J).

   [8] Caesarstone Ltd v Ceramiche Caesar SpA (No 2) [2018] FCA 1096 (Robertson J) (‘Primary Judgment’).

   [9] Caesarstone Ltd v Ceramiche Caesar SpA (No 3) [2019] FCA 7 (Robertson J).

   [10] Full Court Judgment (n 3).

2. Parallel to those court proceedings, the Applicant filed three more trade mark applications for the word CAESARSTONE with this office in 2016,[11] 2019[12] and 2020. The Applicant allowed its 2016 and 2019 applications to lapse, while its 2020 filing is the subject of the present proceedings.

   [11] Trade mark application number 1817520.

   [12] Trade mark application number 2000467.

3. The Trade Mark was accepted for possible registration and advertised for opposition purposes on 2 June 2023. The Opponent filed a notice of intention to oppose registration of the Trade Mark on 2 August 2023, and a statement of grounds and particulars (‘SGP’) on 4 September 2023. The Applicant filed notice of its intention to defend the Trade Mark from opposition on 17 October 2023. Through 2024 the parties filed their evidence in accordance with the timetable set out in Part 5 of the Trade Marks Regulations 1995 (Cth). Both parties asked to be heard on the opposition, so this office scheduled a hearing for 20 March 2025.

4. The hearing proceeded by videoconference on the scheduled date before Hearing Officer Sheona Robertson, a delegate of the Registrar of Trade Marks. Appearing for the Applicant was David Larish of Counsel, instructed by King & Wood Mallesons. Appearing for the Opponent was Jesmini Ambikapathy of Counsel, instructed by Spruson & Ferguson Pty Ltd.

5. The matter was later allocated to me, a delegate of the Registrar of Trade Marks, to review the relevant material and decide. As such, I have reviewed the recording of the hearing, along with the evidence and written submissions of the parties.

Evidence

1. During these proceedings, the parties filed the following documentary evidence:

   Evidence in support

   Declaration of Adolfo Tancredi (‘Tancredi’), Chief Executive Officer of the Opponent, with annexures AT-1 to AT-63, of which AT-22, AT-32, AT-60, AT-61, AT-62 and AT-63 are marked as confidential.

   Declaration of Khajaque Kortian (‘Kortian 1’), Principal of Spruson & Ferguson Pty Ltd (being legal representatives of the Opponent), with annexures KK-1 to KK-3.

   Evidence in answer

   Declaration of David Cullen (‘Cullen’), Managing Director of Caesarstone Australia Pty Ltd, with annexures DC-1 to DC-45, of which DC-02, DC-02A, DC-17, DC-20, DC-22, DC-23, DC-42, DC-43 and DC-44

   Evidence in reply

   Declaration of Khajaque Kortian (‘Kortian 2’), with annexures KK-4 to KK-9.

Grounds and onus

1. The Opponent nominated ss 44, 58A, 59 and 60 in its SGP as the grounds on which it opposes registration of the Trade Mark. In reaching my decision on the overall opposition, for reasons set out further below, s 58A does not arise.

2. To prevent registration of the Trade Mark, the Opponent would need to establish at least one ground of opposition in relation to all of the Applicant’s Services. Unless specifically indicated further below, the Opponent bears the onus of establishing each element of each ground of opposition, to the ordinary civil standard of the balance of probabilities.[13]

Discussion

[13] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Section 44

1. Section 44(2) requires that I consider several questions of fact. And, for the Opponent to succeed on this ground, each of my answers must be positive. Those questions are:

   • Whether there was another trade mark filed with this office before the Relevant Date, and
   • Whether that earlier mark is:
   • owned by someone other than the Applicant,
   • substantially identical or deceptively similar to the Trade Mark, and
   • in relation to ‘similar services’ or ‘closely related goods’ to the Applicant’s Services

2. The Opponent has nominated the Opponent’s Mark as the earlier mark for this ground of opposition. The Opponent has, appropriately, not alleged that the Opponent’s Mark is substantially identical to the Trade Mark – it is plainly not. The Opponent submits that these marks are deceptively similar, and so too has the Applicant.

3. The marks bear a major point of similarity, namely the word CAESAR, which is a term that would serve as being inherently distinctive of both the Opponent’s Goods and the Applicant’s Services, since it does not in any way describe either. This renders that aspect of each mark more memorable. The points of difference between these marks are relatively minor. In the Trade Mark this is the inclusion of the word STONE, which would have limited capacity to distinguish goods, if they are made from stone. I note the goods referenced in the Applicant’s Services are not limited by material. The Opponent’s Mark carries some minor embellishments – it is executed in a fancy script including a conjoined Æ, and is bordered by two small diamond symbols. In isolation, then, these marks appear similar, though this is often a question on which reasonable minds may differ. But my task here is not to consider deceptive similarity in the abstract. The guidance from the courts is that there is at the end but ‘one practical judgment to be made.’[14] That judgment requires considering the nature and degree of the resemblance between the trade marks in comparison, and the nearness of the relationship between the services and goods in question.[15] So for now I note that the there is a significant degree of resemblance between the marks, albeit with points of difference. I now turn to consider the relationship between the Opponent’s Goods and the Applicant’s Services.

Concessions in earlier proceedings

[14] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [40] (French J).

[15] Ibid.

1. The Opponent says the Primary Judgment decided that the Applicant’s Services are closely related to the Opponent’s Goods, and the Applicant says it did not. The basis for this difference of opinion lies in two factors: the specific wording of the Applicant’s Services today as compared with the wording of the relevant specifications in the Trial Proceedings, and the way those earlier proceedings ran:

   In relation to s 44(2) (closely related goods): Caesarstone conceded in opening that the wholesale, retail, installation, maintenance and repair services in Classes 35 and 37 were “closely related” to the goods covered by the CÆSAR Device mark, because they included such services in respect of tiles. Ceramiche Caesar submitted the same analysis applied to the other flooring and walling goods that were the subject of the Class 35 and Class 37 services (as underlined at [453] and [455] above). Hence, there was no dispute that the requirement of closely related goods was satisfied. ^[16]

   [16] Primary Judgment (n 8) [530] (emphases added).

2. The services claimed in classes 35 and 37 in those earlier proceedings included claims to wholesale, retail, installation, maintenance and repair explicitly in relation to tiles. These types of claims are now absent from the Applicant’s Services.

3. The Applicant’s Services in the present matter are therefore significantly narrower, such that they mostly refer to services in relation to goods that might be broadly described as worktops. The exception to this is a broad claim in class 35 for ‘[w]holesale and retail services’. The Applicant submits, and I accept, that its concession during opening submissions in the Trial Proceedings was made because the claims in question there covered a broader range of services. The Opponent submits that the differences between those services and the services in the Trial Proceedings are immaterial. I do not accept that submission. Those earlier proceedings necessarily dealt at length with whether stone slabs affixed to floors, walls and ceilings were similar to tiles—a discussion that is not relevant to the Applicant’s Services as they now stand. The Opponent is right that the Applicant’s Services were already claimed in the later of the ATMO Proceedings, and in the ensuing appeal/cancellation aspects of the Trial Proceedings. I cannot rely on those earlier findings given those claims were broader in scope than the Applicant’s Services, such that I cannot naturally read into them any specific discussions relating to the issues I deal with below.

Closely related goods

1. Notwithstanding the findings made in earlier proceedings, the Opponent separately submits that the Applicant’s Services are closely related to the Opponent’s Goods for the purposes of this ground. The courts have offered some guidance as to what this term of art means in the context of s 44:

   The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.

   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…[17]

   [17] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [37]-[38] (French J).

2. The second paragraph reproduced above is most relevant to the class 37 claims in the Applicant’s Services. That is, since the advent of service marks, the installation, maintenance and repair of specific goods has been generally treated as closely related to the goods themselves. This rests on the observation that one trader manufacturing specific goods, and another trader installing or repairing those same goods, trading under at least deceptively similar marks, is likely to confuse or even deceive consumers. For example, a television repair shop carrying the same name as the televisions it repairs would imply an association with the manufacturer, whether or not that association exists.[18] However, the treatment of retail and wholesale services for specific goods has seen markedly differing outcomes both before this office and the courts. There appears to be no general proposition that retail or wholesale services will necessarily be closely related to the goods sold via those services. Wherever the act of selling goods has been found to be closely related to the goods being sold, those decisions tend to first find that there is a general expectation amongst the relevant purchasing public that the services and the goods are provided under the same or similar mark. For example, a significant proportion of cafés sell coffee beans under the same name as the café, such that the beans and the selling of the beans have been held to be closely related.[19] In contrast, a seller of many different goods such as a big box retailer or a supermarket typically stock goods that come from many other traders, under a variety of different trade marks. When that is the prevailing condition of the relevant marketplace, then the relation between the act of selling and the goods themselves could not rightly be described as close.

Tiles vs selling tiles

[18] Ibid [38].

[19] See, eg, Kicking Horse Coffee Co Ltd [2018] ATMO 193 (Hearing Officer K Brown).

1. At the end of this analysis I decide whether the installation, maintenance, repair, retail and wholesale of worktops is closely related to ceramic tiles. I note that this analysis will necessarily be one step removed from deciding whether those same services in relation to ceramic tiles is closely related to ceramic tiles. However, given the nature of the Opponent’s evidence, it is helpful to briefly explore that question now.

2. The Opponent’s evidence somewhat understandably focuses on the Opponent’s own approach to selling its tiles into Australia, and the approaches of its local distributors. There is limited evidence of the approaches taken by other traders in this field more generally. What has been provided suggests that, at least in relation to retail and wholesale, the relation between selling tiles and the tiles themselves is not particularly close. For example, Tancredi names five of the Opponent’s Australian distributors and annexes images taken from their websites, before explaining that none of those distributors exclusively stock the Opponent’s tiles. That is, these retailers and wholesalers trade under their own name, and they stock the same and similar goods from other manufacturers. The Opponent’s Mark appears in relation to the Opponent’s Goods on those websites, and other manufacturers’ goods all appear to sport trade marks of those manufacturers. For example, the website of the retailer TileArte includes a page dedicated to ‘TileArte’s Caesar Eikon Range’ and other pages referring, presumably, to other manufacturers’ tiles, such as ‘Dot by Andrea Maffei’. In such a retail market, consumers are likely to be accustomed to retailers generally maintaining a distinct identity to their suppliers. So even within the Opponent’s immediate area of activity, it appears that the relationship between ceramic tiles and the selling of those same ceramic tiles is not one that could be characterised as close.

Worktops vs selling worktops

1. Turning briefly to whether retail and wholesale of worktops might be closely related to worktops themselves, Kortian 2 provides images of a selection of websites of retailers in Australia that appear to show a similar trend to retail of tiles discussed above. That is, sellers of worktops perform their retail and wholesale services in relation to those goods under their own trade marks, and trade in goods manufactured by others, which have the manufacturers’ trade marks affixed to them. For much the same reasons as for tiles/selling tiles above, this is not a close relationship.

Tiles vs selling worktops

1. In terms of retail and wholesale of both tiles and worktops, there does not appear to be a marketplace setting in which those services could be seen by consumers as closely related to the respective goods that they sell. To take this a step further, to directly address an issue in these proceedings, it follows that retail or wholesale of worktops is not closely related to ceramic tiles. For reasons given above, this also appears to be borne out in the evidence.

Tiles vs consulting/marketing/franchising in relation to selling worktops

1. The same conclusions follow for the consulting, marketing, franchising and similar services specified toward the end of the class 35 claim in the Applicant’s Services. It is worth recalling that each of these services are specifically to be provided in the context of operating a wholesale or retail presence where that merchant trades in worktops. As such, these categories of services are yet another step removed from the direct selling of worktops mentioned immediately above. In slightly more concrete terms, this is to find, for example, tiles are not closely related to consulting services provided to assist with the establishment and operation of a retail store that sells worktops.

Tiles vs selling anything

1. In relation to the broad claim in the Applicant’s Services for ‘[w]holesale and retail services’, the Applicant submits that the mere fact that services nominally deal in the goods does not render them closely related.[20] When a broad claim such as this is encountered, a useful approach is to consider breadth of the claim, and any specific uses to which the trade mark might be ‘properly put’.[21] For example, in having to decide whether a broad claim for ‘distribution of goods’, was closely related to ‘electrolytic water generators’ Charlesworth J said:

   that drafting encompasses services for the distribution of goods either of a confined kind or of infinite variety.  Absent words of limitation, the specification must be understood to encompass both, as if both were separately described in the text.[22]

The claim to ‘distribution of goods’ thus was considered to include a claim akin to ‘distribution of electrolytic water generators’. In the present case, the broad claim could be recast as ‘wholesale of ceramic tiles’ and ‘retail of ceramic tiles’. However, given my findings above have already concluded that such services do not appear to be closely related to ceramic tiles, this reading does nothing to advance the Opponent’s case.

Tiles vs installing worktops (and tiles vs worktops)

[20] See, eg, Qantas Airways Limited v Edwards [2016] FCA 729, [126] (Yates J).

[21] Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353, 362 (Mason J).

[22] Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [44].

1. Returning to installation, maintenance and repair, there has been a general attitude expressed in judicial findings that these services will be closely related to the specific goods in question. However, here we have two sets of underlying goods: worktops and ceramic tiles. So the issue is whether the installation, maintenance and repair of worktops is closely related to ceramic tiles.

2. To try to bring the two types of goods conceptually nearer to one another, the Opponent’s approach has been to explain why ceramic tiles are similar to worktops, including making the submission that since tiles can form the surface of a worktop, that they are the same (or at least similar) goods. The Opponent placed significant emphasis on the fact that tiles are being offered in large formats, such that a single tile can now comprise the surface of some worktops. I see the attraction in this approach. I expect, however, any opponent embarking on this approach has a difficult task ahead. This is because, as here, the relevant services relate to goods that are not identical to the goods in the comparison, then any purported relationship between those services and goods is necessarily more distant than were the respective goods the same.

3. Whether goods are similar requires a global consideration as to their respective natures, uses and trade channels.[23] In deciding whether services are similar, the test is essentially the same, subject to any necessary modifications.[24]

   [23] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 606 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ).

   [24] MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, 244 (Burchett, Sackville and Lehane JJ).

4. Beginning with the nature of the goods, do worktops appear to have the same characteristics and/or are they of a similar composition to tiles? This is a difficult question to answer with certainty. The first issue I see is that the Opponent’s Goods are plainly defined as ceramic, whereas the relevant goods mentioned in the Applicant’s Services are not restricted as to materials. I think this can be resolved by observing that there appears to be no technical reason why a worktop could not be ceramic. Indeed, the large tile format example pressed by the Opponent suggests that they could. Another issue relates to the general characteristics of worktops and of tiles. The latter are typically thin, while the former are typically more solid.

5. Turning to the uses of the respective goods, tiles are versatile, performing a wide variety of applications. They offer a hard-wearing finish to surfaces of all kinds and all orientations: from domestic and commercial wet area walls, floors and ceilings, to lining swimming pools, and the heat shields of space shuttles to name a few. Worktops and the like are decidedly less versatile in their application. They are generally large, flat and level, providing a stable base upon which a person, standing or sitting by the worktop, can place other objects.

6. As mentioned, the Opponent sought to stress that there are examples in evidence of worktops being made from tiles. I do not see evidence of a worktop being made only from tiles, but there are examples where tiles (or even one large tile) has been used as the finishing surface of that worktop, presumably having been affixed to some other substrate. Given this, it might be that the Opponent submits that when a tile is affixed to a worktop, it becomes the same as (or at least similar to) that worktop. If that is the Opponent’s position, I do not think this is a firm basis on which to find these goods similar. If it were, then a brick foundry could similarly claim exclusive use of its trade mark over all manner of goods that may be made from brick, be they walls, barbecues or lighthouses.

7. As for trade channels for the respective goods, the evidence suffers from a lack of information about the trade(s) generally. What has been filed appears to show that some retailers and wholesalers stock both worktops and tiles, the norm, and therefore the likely consumer expectation appears to be that any given trader will stock one or the other.

8. On the whole, I do not think that worktops and tiles can be said to be of the same description. There are not enough areas of alignment, and too many points of difference above, to render them similar.

9. This foray into a hypothetical comparison of goods now at an end, having found that tiles and worktops have not been shown to be similar, I can confidently make the required finding: the Applicant’s Services in class 37 are not closely related to the Opponent’s Goods. I have already found above that the Opponent’s Goods are not closely related to the Applicant’s Services in class 35. This absence of goods closely related to the Applicant’s Services renders the s 44 ground of opposition impossible to establish. The Opponent has not met its burden for this ground. It follows that, as s 44(4) is not enlivened in these proceedings, the s 58A ground does not arise.

10. Neither party has offered any evidence of confusion by consumers between the activities of the parties, let alone between the Trade Mark and the Opponent’s Mark. Given the artificial notional nature of the s 44 enquiry, this lack of confusion is not determinative. However given the very long time both of these parties have been projecting their goods into the Australian market, I find in this some further modest support for my finding that there is no tangible likelihood of confusion here. This ground is not established.

Section 60

1. Section 60 caters for conflicts with earlier, typically unregistered, trade marks that have a reputation – something that might be called a common law trade mark (‘CLM’). But when the CLM has an identical twin (‘RTM’) on the register of trade marks, and the RTM has been nominated by the opponent under the s 44 ground of opposition, s 60 will have only so much work to do.

2. Where it is available, at opposition, s 44 (together with s 58A as applicable) is apt to address most issues of similarity between two trade marks. It is possible for s 60 to take an opponent’s case further than s 44, but this requires a distinction be drawn between the opponent’s cases under each ground. For example, where the reputation of the CLM is of a nature that the likelihood of confusion or deception is somehow increased, such that a fatal level of similarity between the marks could be less than that of deceptive similarity.[25] Or, where the CLM’s reputation extends into markets not covered by the RTM, thus increasing the potential areas in which likelihood of confusion or deception may occur. But no such distinction has been proffered in these proceedings.

   [25] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [40] (Hearing Officer Lyons).

3. Here, the Opponent has raised the Opponent’s Mark as the sole mark to test under this ground of opposition and put forward evidence that the Opponent’s Mark enjoys a reputation in relation to tiles. That is, the Opponent submits that the Opponent’s Mark has a reputation in relation to the Opponent’s Goods, and no more. The Opponent also submits that the Trade Mark is deceptively similar to the Opponent’s Mark (that is, it does not submit that this is a case of a lesser degree of similarity that can be made up by the nature of the earlier mark’s reputation).

4. While reputation is not a factor that can be considered for the purposes of the deceptive similarity analysis in s 44,[26] that ground nevertheless requires the decision-maker to consider notional use of the mark and the effects of imperfect recollection. In other words, for a deceptive similarity enquiry under s 44, that relevant consumers know the earlier RTM is assumed. In contrast, for s 60(a), an opponent will have passed that threshold only when it is found that a ‘significant’ or ‘substantial’ number of persons are aware of the CLM.[27] Once that threshold has been met, it is safe to conclude that relevant consumers will know the CLM. Where the nature of the s 60(a) reputation is no broader than the notional use of the trade mark under s 44, this becomes a distinction without a difference.

   [26] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [50] (Kiefel CJ, Gageler, Gordon, Edelmen and Gleeson JJ).

   [27] Le Cordon Bleu BV v Cordon Bleu International Ltee (2000) 50 IPR 1, 19 [91] (Heerey J).

5. So, in the present proceedings, s 60 has been prosecuted as though it were s 44 but with extra steps. I see no reason why it is necessary to explore s 60 in detail separately. I have already found above that confusion (for the purposes of s 44) is unlikely to occur mainly because of the differences between the Opponent’s Goods and the Applicant’s Services. Given the s 60 ground relies on the same factual background, the same conclusions follow. This ground is not established.

Section 59

1. The operation of this ground of opposition can be relatively complex, in that it typically requires that an opponent establish a prima facie case that the applicant did not, at the time of filing the application, intend to use the trade mark, assign the trade mark or authorise others to use the trade mark. When an opponent makes that prima facie case, the onus reverses on to the applicant to establish that it did in fact hold the requisite intention at that time. There is, in certain factual settings, a short cut to deciding this ground of opposition. Evidence of actual use of a trade mark, particularly where that use happened at a time and in such as fashion that is not colourable, for example at a time before the mark is opposed, will typically refute the allegation of a lack of intention to use. That is, actual bona fide use of a trade mark is a complete answer to an allegation that a party did not intend to use a trade mark.[28]

   [28] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [82]-[83] (Keane CJ, Stone and Jagot JJ).

2. According to Cullen, before and at the Relevant Date the Applicant had a wholly owned subsidiary as its local distributor for its goods, Caesarstone Australia Pty Ltd (‘CA’). In evidence is an agreement between the Applicant and CA, though this agreement was not executed until 1 January 2021, some months after the Relevant Date. That agreement includes that CA has the rights to:

   • market, resell and provide [the Applicant’s slabs and goods fabricated from them] to [CA’s] customers under the [Trade Mark]
   • use and display the [Applicant’s] trade names and trademarks solely for the distributing and resale of the [the Applicant’s slabs and goods fabricated from them]

3. In turn, the agreement states that the Applicant is responsible for providing support services to CA. The Opponent says that the specifics in this agreement do not provide the degree and type of control that is required for any trade mark use by CA pursuant to that agreement to have been ‘authorised’ by the Applicant within the meaning of s 8.

4. Aside from the text of that agreement, the Opponent’s case under this ground relies on historical use of the Trade Mark in relation to the wholesaling of slabs by the Applicant, and a more limited period of retail of the same via a website operated by the Applicant. The Applicant’s historical practice of wholesaling large slabs and leaving it to local stonemasons to fabricate and install worktops (and other goods) from them,[29] combined with this agreement with CA, the Opponent submits, shows that the Applicant did not intend to offer the Applicant’s Services under the Trade Mark at the Relevant Date.

   [29] The Applicant’s historical sales of large format slabs into Australia, and how they have over time found their way into end applications is discussed in some detail in the ATMO Decisions (n 6), Primary Judgment (n 8) and Full Court Judgment (n 3).

5. A lack of use to date and the Opponent’s preferred reading of a bare agreement is not in my view a sufficient basis upon which to shift the onus on to the Applicant. Regarding lack of use to date in general, this will only ever be a necessary but insufficient factor, since the courts and this office recognise that it is entirely legitimate and fairly common for traders to wait for registration before exploiting a trade mark. As for the Applicant’s agreement with CA, the Applicant’s evidence is that this agreement does not inform the entirety of the relationship between these two entities. Indeed, it could not have informed their relationship as at the Relevant Date. Since CA was created, there has been an active relationship between these entities, which I briefly outline immediately below. As such the Opponent’s submissions do not put into question whether, at the time of filing, the Applicant had an intention to use the Trade Mark in relation to the Applicant’s Services. The act of filing the application is a presumption that the Applicant so intended, and that presumption is in my view not displaced.

6. In case I am wrong on whether the Opponent has met the threshold to reverse its onus on to the Applicant (a threshold that has been described as ‘very low’[30]), I am also satisfied that there has been actual use by the Applicant. Where a trade mark is used by person A, ‘under the control of the [trade mark] owner’, that use is taken to be use by the owner.[31] The evidence shows that, well before the Relevant Date, and continuing up to (and beyond) that date, CA has offered fabrication, installation, and warranty repair of worktops fashioned from the Applicant’s slabs. The Applicant has put on uncontested evidence that CA is a wholly-owned subsidiary of the Applicant, and has put in evidence instruction manuals that the Applicant has supplied to CA. Those manuals offer CA specific guidance as to how to fabricate the Applicant’s slabs into worktops and how to install the resulting worktops. In other words, the Applicant has told CA how to perform installation, maintenance and repair service. That instruction is backed up by a controlling financial stake in CA. Coupled with the aforementioned agreement, use of the Trade Mark by CA can, I think, only be rightly viewed as use that the Applicant ‘knew of and approved’.[32]

   [30] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [67] (Keane CJ, Stone and Jagot JJ).

   [31] Section 8.

   [32] Dunlop Aircraft Tyres Ltd v Goodyear Tire and Rubber Company [2018] FCA 1014, [70]-[88].

7. Given use of the Trade Mark by CA was authorised, that use becomes that of the Applicant. Actual use by the Applicant having been shown, there can be no question that the Applicant intended to use the Trade Mark. This ground is not established.

Decision and costs

1. Section 55(1) requires that I, at the end of these opposition proceedings, decide to either register, or refuse to register the Trade Mark. This decision is informed by ‘the extent (if any) to which any ground on which the application was opposed has been established.’ As I have noted along the way, three of the grounds nominated by the Opponent have not been established to any extent, and the fourth ground does not arise on the facts. As such, my decision is to register the Trade Mark.

2. Particulars of the Trade Mark will be entered onto the register one month from the date of this decision. However, if the Registrar of Trade Marks is served with a notice of appeal of my decision before that date, I direct that registration shall not occur until that appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the orders or direction of the court.

3. Both parties have asked that costs be awarded. It is usual for costs to follow the event. No submissions have been put as to why I should, nor have I seen any reason to, deviate from the usual course. I award costs against the Opponent.

Adrian Richards

Supervising Hearing Officer

Delegate of the Registrar of Trade Marks

29 August 2025