Building products maker Caesarstone can register two trade marks despite their deceptive similarity to a mark by ceramic tile maker Ceramiche Caesar, a judge has ruled, after finding Caesarstone had shown honest concurrent use of the marks.
While agreeing the marks used by the Israeli company, which manufactures composite stone products, were deceptively similar to that of the Italian tile maker, Federal Court Justice Alan Robertson found the marks could co-exist on the Trade Mark register subject to certain conditions.
Caeasarstone brought two appeals, in February 2015 and September 2015, after IP Australia sided with Ceramiche, which had opposed the marks; one, the Caesarstone goods word mark and two, a device mark.
Ceramiche separately filed a rectification application with the Federal Court in December 2015 to cancel an existing Caesarstone trade mark, the Caesarstone services word mark.
After hearing all three matters, Judge Robertson ruled in a single judgement released Friday that Caesarstone could register the rejected marks, after the scope of each had been narrowed down on consultation with Ceramiche.
Ceramiche had argued before a delegate of the Registrar of Trade Marks, and later the Federal Court. that the disputed marks were deceptively similar to its own mark, a stylised version of the word Caesar.
In his decision rejecting the two opposed marks, the delegate found the likelihood of confusion between the two companies’ marks was “very high”.
On appeal, Caesarstone, which has sold its stone products in Australia using the marks for 20 years, argued that even if there were a degree of similarity between the marks, there was little chance of confusion because of the difference in the companies’ products. Caesarstone argued that it sold slabs for flooring, while Ceramiche sold tiled flooring.
Caesarstone argued before the Federal Court that no inconvenience to Ceramiche was likely. The contention that consumers were likely to be confused and that registration of the Caesarstone word mark would harm Ceramiche Caesar’s business and inconvenience its customers could not be maintained, Caesarstone argued, because there had been no actual instances of consumer confusion ever reported in the 17 years’ of concurrent trading.
In siding with Caesarstone, Judge Robertson echoed the findings of the delegate that the disputed marks were deceptively similar.
“I reject the submission on behalf of Caesarstone that the differences in ideas of the marks and the non-distinctiveness of the word elements of the marks made it very unlikely that the reasonable consumer would be caused to wonder whether there was an association between the owners of those marks and that any such wonderment would be nothing more than mere speculation,” the judge said.
However, he found that there had been “honest concurrent use” by Caesarstone of its marks since April 2001, both directly and through its Australian licensees.
As a result, the application for registration of the marks “may be accepted subject to conditions or limitations,” including narrowing the trade marks for use on products formed of composite stone or excluding product uses in certain functions.
On Ceramiche’s rectification application, Judge Robertson rejected Caesarstone’s argument that Ceramiche was not an “aggrieved person”. But he declined to cancel the Caesarstone services mark, saying there should be “conformity of result”.
K&L Gates represented Caesarstone. Spruson & Ferguson Lawyers represented Ceramiche Caesar.
The Caesarstone appeals were Caesarstone Ltd v Ceramiche Caesar S.p.A. and Caesarstone Ltd v Ceramiche Caesar S.p.A. while Ceramiche’s rectification application was Ceramiche Caesar S.p.A. v Caesarstone Ltd.