Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 3) [2019] FCA 7

Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 3) [2019] FCA 7

Orders amending the specifications of disputed trade marks must ensure that the amendments do not extend the applicant's rights beyond what was originally published, in accordance with s 65(7) of the Trade Marks Act 1995 (Cth). The Court determined that the appropriate form of order is to amend the specifications as proposed for each mark, retaining the limitation excluding goods 'in the nature of tiles' and restricting to composite stone, to reflect honest concurrent use found at trial and statutory requirements. Costs were apportioned 50% to Ceramiche Caesar, reflecting Caesarstone's greater but not unlimited success.

Jurisdiction
Australia
Judgment Date
14 January 2019
Procedural Posture
Appeal and Rectification Applications Under the Trade Marks Act 1995 (cth) / Determination of Final Orders and Costs Following Trial on Registrability and Form of Trade Mark Applications/registrations
Outcome
Appeals and rectification applications resolved with amendments to trade mark applications/registrations as ordered; appeals and applications otherwise dismissed; costs awarded 50% to Caesarstone Ltd.
Legal Topics
['trade Marks' 'specification Amendments' 'registration Appeals' 'rectification' 'costs']
['intellectual Property'] ['trade Marks' 'specification Amendments' 'registration Appeals' 'rectification' 'costs']

Case Brief

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Procedural Posture

Appeal and Rectification Applications Under the Trade Marks Act 1995 (cth) / Determination of Final Orders and Costs Following Trial on Registrability and Form of Trade Mark Applications/registrations

Legal Issues

  1. 1 ['What amendments to the specifications of goods and services in the trade mark applications/registrations are appropriate under the Trade Marks Act 1995 (Cth), particularly ss 65, 88, 197' 'To what extent may specifications be limited or expanded on appeal, especially regarding the exclusion of tiles and limiting to composite stone' 'Appropriate costs orders where each party has mixed success and evidence differs from the proceedings before the Registrar']

Ratio Decidendi

Orders amending the specifications of disputed trade marks must ensure that the amendments do not extend the applicant's rights beyond what was originally published, in accordance with s 65(7) of the Trade Marks Act 1995 (Cth). The Court determined that the appropriate form of order is to amend the specifications as proposed for each mark, retaining the limitation excluding goods 'in the nature of tiles' and restricting to composite stone, to reflect honest concurrent use found at trial and statutory requirements. Costs were apportioned 50% to Ceramiche Caesar, reflecting Caesarstone's greater but not unlimited success.

Court Disposition

Appeals and rectification applications resolved with amendments to trade mark applications/registrations as ordered; appeals and applications otherwise dismissed; costs awarded 50% to Caesarstone Ltd.

Orders

  • ['Trade Mark Application No. 1058321 amended as specified (Class 19 limited to panels for floors, floor coverings, and wall cladding formed of composite stone slabs; none of the foregoing being in the nature of tiles).' 'Trade Mark Application No. 1211153 amended as specified for Classes 19, 20, 35, and 37 and...