We often advise clients to file trade mark applications that are broad enough to cover all of the products and services that may be of future interest, not just those for which they have immediate plans.  This helps ensure that our clients are free to expand their product/service offering over time.

The recent decision of CERAMICHE CAESAR S.p.A. v CaesarStone Sdot-Yam [2015] ATMO 12 is a timely reminder of just how important this filing strategy is.  

CAESARSTONE is a brand of engineered stone surfaces, marketed in lifestyle magazines and real estate listings.  The mark is registered in Australia for a range of building materials in class 20, including worktops, sink tops and counter tops, with a priority date of 28 December 2000.    

However, it was not until 2 June 2005 that Caesarstone filed an application to register the mark for floor coverings, wall cladding and profiles.    

The application was opposed by an Italian company, Ceramiche Caesar SpA ('Ceramiche Caesar'). Ceramiche Caesar owns an earlier trade mark registration for the stylised depiction of the word CAESAR shown below, covering ceramic tiles for indoor and outdoor use (‘the CAESAR Mark’):

Click here to view image.

Caesarstone’s attorneys had successfully overcome the CAESAR Mark in examination by restricting the application to exclude tiles.  However the Hearing Officer decided that this amendment was not sufficient to avoid conflict with the CAESAR mark.    The Hearing Officer held that products such as vinyl floor sheets, carpet, wood and laminate ‘serve the same purpose as ceramic tile flooring[,]… are sold through the same or substantially overlapping trade channels[, and]… are purchased by the same or a substantially overlapping class of consumer to ceramic tiles, being consumers purchasing floor coverings.   

Further, the Hearing Officer considered that it was ‘almost inevitable’ that a substantial number of people will be confused or deceived by use of Caesarstone.  In reaching this conclusion, the Delegate accepted Ceramiche Caesar’s submissions that the term CAESAR is the essential feature of the CAESAR Mark and is also the most distinctive and memorable element of the opposed CAESARSTONE mark, whereas the word STONE is descriptive of a characteristic of the opponent’s goods.  

In response, Caesarstone argued that the opposed application should nevertheless be accepted on the ground that it was an “honest concurrent user” of the mark.  The Hearing Officer accepted that the CAESARSTONE mark had been adopted honestly, that there had been remarkable sales and marketing of goods under the CAESARSTONE mark in Australia over the period leading up to the priority date, and that there was no evidence of actual confusion.    

However, the Hearing Officer refused to accept Caesarstone’s application on the ground of honest concurrent use.   The Hearing Officer was not convinced that there was sufficient evidence of concurrent use of the marks.  In particular, it was not clear to what extent Caesarstone has been used in relation to products sold as floor coverings, even though it was apparent that its engineered stone surfaces might be used for that purpose.  The Hearing Officer was also concerned by the fact that Caesarstone had opposed applications filed by Ceramiche Caesar, as it suggested that both parties were concerned by the risk of market confusion.  

Ultimately Caesarstone was unsuccessful in extending the scope of its trade mark rights, which may significantly impede its freedom to expand its product offering under the CAESARSTONE brand.