Ceramiche Caesar S.p.A v Caesarstone Ltd [2020] FCAFC 124

Ceramiche Caesar S.p.A v Caesarstone Ltd [2020] FCAFC 124

The primary judge erred because the goods on which the honest concurrent use finding was based were in the nature of tiles, and goods in the nature of tiles were expressly excluded from the class 19 specification. There was no finding of honest concurrent use for goods remaining within the specification. Further, Caesarstone did not exercise control as a matter of substance over the designated finished goods: quality control over slabs, provision of guidance-only manuals, marketing material, website content and reporting did not amount to control over the fabricated floor and wall products. The s 44(3)(b) contention failed because it depended on the erroneous finding of use of the mark...

Jurisdiction
Australia
Judgment Date
28 July 2020
Procedural Posture
Trade Marks Appeal and Applications for Leave to Appeal / Full Court Appeal From Orders Allowing Trade Mark Applications to Proceed to Registration and Allowing a Trade Mark Registration to Remain Registered
Outcome
Applications for leave to appeal granted where required; appeals allowed; primary judge's orders set aside; trade mark application appeals dismissed; Australian Trade Mark Registration No 1211152 cancelled; respondent ordered to pay costs.
Legal Topics
['deceptively Similar Trade Marks' 'honest Concurrent Use' 'authorised Use Under Control of Trade Mark Owner' 'quality Control' 'rectification and Cancellation of Trade Mark Registration' 'other Circumstances Under S 44(3)(b) of the Trade Marks Act 1995 (cth)']
['intellectual Property' 'trade Marks'] ['deceptively Similar Trade Marks' 'honest Concurrent Use' 'authorised Use Under Control of Trade Mark Owner' 'quality Control' 'rectification and Cancellation of Trade Mark Registration' 'other Circumstances Under S 44(3)(b) of the Trade Marks Act 1995 (cth)']

Case Brief

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Procedural Posture

Trade Marks Appeal and Applications for Leave to Appeal / Full Court Appeal From Orders Allowing Trade Mark Applications to Proceed to Registration and Allowing a Trade Mark Registration to Remain Registered

Legal Issues

  1. 1 ['Whether the primary judge erred in concluding there was honest concurrent use of the Caesarstone Goods Word Mark for the designated class 19 goods.' "Whether any prior concurrent use by Australian distributors was authorised use under Caesarstone's control for the purposes of ss 7 and 8 of the Trade Marks Act 1995 (Cth)." 'Whether the Caesarstone Goods Word Mark should be accepted because of other circumstances under s 44(3)(b) of the Trade Marks Act 1995 (Cth).' 'Whether the Caesarstone Device Mark appeal followed the outcome of the first proceeding.' 'Whether Australian Trade Mark Registration No 1211152 should be cancelled in the third proceeding.']

Ratio Decidendi

The primary judge erred because the goods on which the honest concurrent use finding was based were in the nature of tiles, and goods in the nature of tiles were expressly excluded from the class 19 specification. There was no finding of honest concurrent use for goods remaining within the specification. Further, Caesarstone did not exercise control as a matter of substance over the designated finished goods: quality control over slabs, provision of guidance-only manuals, marketing material, website content and reporting did not amount to control over the fabricated floor and wall products. The s 44(3)(b) contention failed because it depended on the erroneous finding of use of the mark...

Court Disposition

Applications for leave to appeal granted where required; appeals allowed; primary judge's orders set aside; trade mark application appeals dismissed; Australian Trade Mark Registration No 1211152 cancelled; respondent ordered to pay costs.

Orders

  • ['NSD 120 of 2019: The application for leave to appeal be granted.' 'NSD 120 of 2019: The appeal be allowed.' 'NSD 120 of 2019: The orders made by the primary judge in proceeding NSD 166 of 2015 on 14 January 2019 be set aside.' 'NSD 120 of 2019: The appeal from the decision of the Registrar of Trade Marks made by...