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

This matter concerned an opposition by Ceramiche Caesar SpA (the Opponent) to the registration of the trade mark application number 2112516, for the mark CAESARSTONE, filed by Caesarstone Limited (the Applicant). The application sought registration for services in classes 35 and 37, specifically wholesale and retail services, showrooms featuring worktops and surrounds, commercial information, consulting, marketing, and technical assistance related to distributorships and retail stores, as well as installation, maintenance, and repair services for worktops and surrounds. The opposition was heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate included whether the Applicant's services were closely related to the Opponent's registered goods, ceramic tiles, under section 44(2) of the *Trade Marks Act 1995* (Cth). The Opponent also nominated grounds under sections 58A, 59, and 60, but the delegate determined that section 58A was not applicable. The central question was whether the Opponent could establish that the CAESARSTONE trade mark should not proceed to registration based on the existence of its earlier CAESAR mark, considering the nature of the goods and services involved.

The delegate reasoned that for the opposition under section 44(2) to succeed, the Opponent's earlier mark needed to be deceptively similar to the Applicant's mark, and the Applicant's services needed to be in relation to "closely related goods" to the Opponent's goods. While acknowledging a significant resemblance between the marks CAESAR and CAESARSTONE, the delegate found that the Applicant's services, as currently specified, were not closely related to the Opponent's ceramic tiles. This conclusion was based on an analysis of the marketplace, where retailers and wholesalers of both tiles and worktops typically trade under their own brand names and offer products from various manufacturers, indicating a lack of a close relationship between the act of selling and the goods themselves. Furthermore, services such as consulting and marketing for worktop retailers were considered even further removed from ceramic tiles.

Ultimately, the delegate found that the Opponent had not established any grounds for opposition. The delegate concluded that the Applicant's services were not closely related to the Opponent's goods, and therefore, the requirements of section 44(2) were not met. As no other grounds of opposition were successfully established, the delegate ordered that the trade mark application proceed to registration.