This was an appeal of the decision of the Trademarks Opposition Board ("TMOB"), refusing in part the Applicant's registration of the trademark CAESARSTONE & Design.
The central issue raised by the Applicant against the TMOB's Decision was an alleged unreasonable finding of a likelihood of confusion between the Applicant's CAESARSTONE Mark proposed to be used for the Opposed Services relating to flooring and similar applications, and the Opponent's CAESAR Mark.
On the issue of the appropriate standard of review, the Court held that the TMOB's decision was to be reviewed on a standard of reasonableness. While the Applicant had submitted new evidence, the Court did not find that this new evidence would have materially affected the TMOB's findings of fact or its exercise of discretion. The new evidence was found to be supplemental to, and simply more of the same of, that which was before the TMOB when it rendered its decision.
The Court allowed the appeal with respect to the TMOB's consideration of the likelihood of confusion in relation to certain Opposed Services (tiles, slabs and tiles formed of composite stone, and wall cladding and walls), and the matter was referred to a different member of the TMOB for redetermination. The Court found that the TMOB's conclusion that the certain of the Opposed Services were a departure from, rather than an extension of, certain of the goods covered by the Applicant's earlier CAESARSTONE registration, was unreasonable. The Court also noted that this unreasonable conclusion may have affected the TMOB's assessment of the likelihood of confusion.
While this was but one factor, and a surrounding circumstance to be considered in assessing likelihood of confusion, this unreasonable conclusion impacted the outcome and the reasonableness of the TMOB's assessment of other factors, including the weight afforded to the lack of actual confusion in the marketplace where both have coexisted, at least with respect to the Opposed Services relating to tiles, slabs and tiles formed of composite stone and wall cladding and walls.
The appeal of the TMOB's decision in relation to the remaining Opposed Services was dismissed.