On March 29, 2016, the High Court of Singapore overturned the Intellectual Property Office of Singapore’s (IPOS’s) decision to refuse registration of Caesarstone Sdot-Yam Ltd’s mark CAESARSTONE for goods in Class 19.

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The respondent, Ceramiche Caesar SpA, had a prior registration in Class 19 for goods including “Non-metallic building materials, especially tiles for covering, floor coverings, tiles for gutters, cove moldings, corner beads not of metal, protruding wedges, stilted modular floors, special parts for finishing, stair treads.” Caesarstone Sdot-Yam Ltd’s’s application covered “Non-metallic tiles, panels for floors, floor coverings, wall cladding, flooring, and ceilings; non-metallic covers for use with floors and parts thereof; non-metallic profiles and floor skirting boards; slabs and tiles formed of composite stone for building panels, counter tops, vanity tops, floors, stairs, and walls.”

The Principal Assistant Registrar (PAR) had allowed the opposition against the appellant’s mark on the grounds that the mark was visually, aurally, and conceptually similar to the respondent’s mark in Class 19 and was likely to cause confusion as to trade source. The registrar further held that the respondent’s mark was well-known in Singapore and that the appellant’s mark was similar to a well-known mark.

In her decision, the PAR had found that the dominant element in both the appellant and respondent’s mark was the word “CAESAR.” On appeal, the appellant argued that there was no particular dominant element in the appellant’s mark. The appellant successfully argued that the significance of the device element in the mark should not be set aside and the impact of the device on the consumers’ perception of the mark in question should be taken into consideration. The judge further reiterated the established principle of law that the word element of the appellant’s mark CAESARSTONE should be examined as a single word, rather than dissecting its components “CAESAR” and “STONE.” The Court took into account that the word CESARSTONE in itself was an invented word.

In the appeal, the Court analyzed Section 8(2)(b) of the Trade Marks Act while discussing whether a relevant date or time should be taken into consideration when assessing likelihood of confusion. The Court observed that, although the provision did not stipulate the relevant time at which the likelihood of confusion is to be assessed, the provision also does not restrict the assessment to the date of the application.

This decision highlights the significance of post-application evidence filed in support of the application. Several cases on the point were discussed in the decision. In the present case, the Court found that the registrar had not given due consideration to the sales figures and other evidence filed by the applicant that were dated after the application was filed. The approach adopted by the Court is noteworthy because this will allow due consideration to be given to post-application usage of the mark while assessing the likelihood of confusion under Section 8(2)(b) of the Trade Marks Act.

This decision is on appeal before the Court of Appeal.

This article was first published in INTA Bulletin on August 1, 2016. For further information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.