Caesarstone Ltd is a manufacturer of large slabs of quartz for benchtops and related products. Ceramiche Caesar used a stylised trade mark including the word “CAESAR” in respect of tiles for floor and wall cladding, and registered their trade mark in 2004. Caesarstone Ltd filed an application to register CAESARSTONE in respect of tiling for floors and walls.
It was held by a Delegate of the Registrar of trade Marks, and the primary judge, that the CAESAR Trade Mark owned by Ceramiche Caesar prevented CAESARSTONE from registering the CAESARSTONE trade mark pursuant to section 44(1) and (2) of the Trade Marks Act4 based on the similarity of the Trade Marks. However, the primary judge agreed that CAESARSTONE could register their trade mark in class 19 in respect of “floor or wall goods” in accordance with the honest concurrent use provisions of the Act.
Ceramiche Caesar appealed to the Full Federal Court on the basis that CAESARSTONE is not entitled to registration in class 19 (although was entitled to registration in respect of services in classes 35 and 37). At the time of filing their word mark application for CAESARSTONE in 2005, Caesarstone Ltd omitted “goods in the nature of tiles” from their application through the filing of a disclaimer.5 On the basis of including this disclaimer, the Full Court held that “honest concurrent use” of the CAESARSTONE trade mark by Caesarstone Ltd did not permit registration.
This Full Court decision provides useful clarification that honest concurrent use needs to be demonstrated by reference to the goods/services outlined in the application, and that a disclaimer should be interpreted in plain English and can have an effect on the Applicant’s ability to validly claim honest concurrent use.
The Court also considered, in an additional appeal filed by Ceramiche Ceasar, whether CAESARSTONE had exercised quality control in exercising an “authorised use” of their trade mark. In this regard, Ceramiche Caesar appealed on the basis that there had been an error in the primary judge’s finding that the claimed use was authorised.6 Their Honours decided that the Caesarstone Ltd did not exercise quality control, and that the claimed use was not use under the control of Caesarstone Ltd and was not “authorised use”. This second proceeding emphasizes the importance for trade mark owners to exercise quality control, particularly where authorised use is required to be demonstrated (e.g. in support of an Applicant’s claim to registration, when defending against a non-use removal application, etc).
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1 Ceramiche Caesar S.p.A v Caesarstone Ltd (2020) 381 ALR 631 (‘Ceramiche Caesar’)
2 Ibid 14.
3 Ibid 35.
4 Trade Marks Act 1995 (Cth) s 44(1-2).
5 Ceramiche Caesar (n 5) 20.
6 Ibid 77.
