Caesarstone Sdot-Yam Ltd v Ceramiche Caesar SpA

• Judge: George Wei J
• Judgment Date: 29 March 2016
• Neutral Citation: [2016] SGHC 45
• Subject Matter: Grounds for refusal of registration,Trade Marks and Trade Names
• Citation: [2016] SGHC 45
• Hearing Date: 23 September 2015
• Docket Number: Tribunal Appeal No 12 of 2015
• Published date: 13 May 2017
• Defendant Counsel: Melvin Pang (Amica Law LLC)
• Year: 2016
• Court: High Court (Singapore)
• Plaintiff Counsel: Prithipal Singh and Chow Jian Hong (Mirandah Law LLP)

George Wei J:

This is an appeal against the decision of the Principal Assistant Registrar (“PAR”) to allow an opposition filed against a trade mark application. For reasons that will be set out below, I allow the appeal and order costs to be paid to the applicant, to be agreed or taxed.

Introduction

The applicant, Caesarstone Sdot-Yam Ltd, is an Israeli company that was founded in 1987.1PAR’s Grounds of Decision, para 18. The company is a worldwide manufacturer of engineered quartz and stone surface products for various applications including kitchen and bathroom countertops, back splash surfaces for the kitchen, wall claddings and floor tiles for kitchens and bathrooms, and so on. Its slabs are used in a variety of residential and non-residential applications.

The opponent, Ceramiche Caesar SpA, is an international manufacturer of porcelain stoneware tiles for indoor and outdoor use, both for flooring and cladding installations with more than 20 years of corporate history.2PAR’s Grounds of Decision, para 16. It is incorporated in Italy and its range of porcelain stoneware tiles is marketed in many countries including Singapore.

The opponent is the registered proprietor of the following trade mark in Singapore (“the CAESAR Mark”).

The CAESAR Mark is a composite mark comprising a word with the letters “A” and “E” being ligated. The word is placed between two small diamond-shaped dot devices. The CAESAR Mark was registered for goods in:

Class 19

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.

The applicant applied to register the following mark (“the CAESARSTONE Mark”) in Singapore: The CAESARSTONE Mark is also a composite mark comprising a word and a graphic device placed at the beginning of the word element. The application was specified for the following classes of goods and services:

Class 19

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.

Class 20

Worktops, sinktops [kitchen furniture]; work surfaces and surrounds [furniture] for kitchens, bathrooms, vanity units and offices, counter tops; table tops; bar tops [furniture]; non-metallic work surfaces for furniture, fixtures or surrounds [furniture] used in reception areas.

Class 35

The bringing together, for the benefit of others, of a variety of goods such as tops and facing surfaces (excluding the transport thereof), enabling customers to conveniently view and purchase those goods from wholesale and retail outlets; wholesale and retail services in relation to tops and facing surfaces, work surfaces, surrounds, tiles, panels, floor coverings, wall cladding, flooring, ceilings, slabs and tiles formed of composite stone for building panels, counter tops, vanity tops, floors, ceilings, stairs, and walls; provision of commercial information relating to the aforesaid goods; provision of business consultancy, marketing services, promotional services and business assistance in the establishment and operation of, dealership, franchising, wholesale and retail services that feature tops and facing surfaces, work surfaces and surrounds, tiles, panels, floor coverings, wall cladding, flooring, ceilings, slabs and tiles formed of composite stone for building panels, counter tops, vanity tops, floors, ceilings, stairs, and walls.

Class 37

Installation, maintenance and repair services of worktops, sinktops, work surfaces and surrounds for kitchens, bathrooms, vanity units and offices, counter tops, table tops, bar tops, tops and facing surfaces for furniture, reception desks and reception areas, tiles, panels for floors, floor coverings, wall cladding, flooring, ceilings, non-metallic covers for use with floors and parts thereof, profiles and floor skirting boards, slabs and tiles formed of composite stone.

The opponent objected to the application in Class 19 and commenced the present opposition proceedings against the applicant. No objection was raised against the applicant in respect of Classes 20, 35 and 37. It bears noting that similar opposition proceedings have been brought against the CAESARSTONE Mark in other jurisdictions including Australia and Canada. Reference will be made to some of these cases where relevant later in this judgment. That said, it is critical to bear in mind that the specifications, facts, submissions, statutory provisions and evidence behind the relevant applications vary from jurisdiction to jurisdiction.

The opposition proceedings

Before the PAR, the opponent advanced the following objections to the registration of the CAESARSTONE Mark in Class 19, namely that: the CAESARSTONE Mark was similar to the CAESAR Mark in respect of identical or similar goods, and there existed a likelihood of confusion (pursuant to s 8(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”)); the CAESARSTONE Mark was similar to the opponent’s earlier well-known trade mark and indicated a connection in the course of trade with the likelihood of causing damage to the interests of the opponent (s 8(4)(a) read with s 8(4)(b)(i) of the TMA); and the CAESARSTONE Mark was similar to the opponent’s earlier well-known trade mark, the use of which would cause dilution or take unfair advantage of the earlier well-known trade mark (s 8(4)(a) read with s 8(4)(b)(ii) of the TMA); and the application for the CAESARSTONE Mark was made in bad faith (s 7(6) of the TMA).

Having considered the evidence and submissions presented by both parties, the PAR allowed the opposition on the first two grounds, viz, the ground of opposition premised on s 8(2)(b) as well as that of s 8(4)(a) read together with s 8(4)(b)(ii). However, the PAR determined that the opponent was only entitled to 60% of its costs considering that it had failed on two grounds of opposition. Briefly, the PAR’s decision may be summarised as follows: On the ground of opposition under s 8(2)(b) of the TMA, the marks were similar on the whole, there was a clear similarity of the goods in question and there was a likelihood of confusion on the part of the public. Therefore, the opposition under s 8(2)(b) succeeded.3PAR’s Grounds of Decision, paras 20 to 96. On the ground of opposition under s 8(4)(a) read with s 8(4)(b)(i) of the TMA, the marks were similar on the whole, the CAESAR Mark was well-known in Singapore as at 21 November 2007 and there was a confusing connection that caused blurring in that consumers may be led to believe there is an economic connection such as to divert sales away from the opponent. Therefore, the opposition under s 8(4)(a) read with s 8(4)(b)(i) succeeded.4PAR’s Grounds of Decision, paras 98 to 111. On the ground of opposition under s 8(4)(a) read with s 8(4)(b)(ii) of the TMA, the CAESAR Mark was not well-known to the public at large in Singapore. Therefore, the opposition under s 8(4)(a) read with s 8(4)(b)(ii) failed.5PAR’s Grounds of Decision, paras 112 to 127. On the ground of opposition under s 7(6) of the TMA, there was insufficient evidence to show how the applicant had fallen short of some acceptable standard of commercial behaviour by reasonable and experienced men in the particular area of trade. Therefore, the opposition under s 7(6) failed.6PAR’s Grounds of Decision, paras 128 to 140. Where relevant and necessary, I will refer to the PAR’s analysis in greater detail in the discussion that will follow.

This appeal

The applicant urges this court to re-examine the PAR’s decision in relation to the grounds on which the opponent succeeded, namely those concerning: s 8(2)(b) of the TMA; and s 8(4)(a) read with 8(4)(b)(i) of the TMA.

The first broad issue is whether the PAR erred in allowing the opposition under s 8(2)(b) of the TMA. In this regard, the following sub-issues arise for consideration: whether the CAESARSTONE Mark and the CAESAR Mark are similar; whether the applicant’s goods are the same or similar to those of the opponent; and if so, whether there is a likelihood of confusion arising from the similarity of the marks and the parties’ goods.

The second broad issue is whether the PAR erred in allowing the opposition under s 8(4)(b)(i) of the TMA. In this regard, the following sub-issues arise for consideration: whether the CAESARSTONE Mark is similar to the CAESAR Mark; whether the CAESAR Mark is well-known in Singapore and was well-known at the date of application of the CAESARSTONE Mark; whether the applicant’s use of its mark in relation to the goods for which the CAESARSTONE Mark is sought to be registered would indicate a connection between those goods for which the CAESARSTONE Mark is registered and the applicant’s goods; and whether the applicant’s use of its mark in relation to the goods for which the CAESARSTONE Mark is sought to be registered is likely to damage the interests of the opponent.

I pause to briefly note that the common thread that runs through both grounds of opposition is the element of confusing similarity between the respective marks. It follows that both grounds of opposition would fail in limine if the marks are held not to be confusingly similar.

The court’s role in an appeal

It is apposite to begin the legal analysis with the observation that there appears to be some uncertainty over the threshold for appellate intervention in an appeal against the PAR’s decision.

On one view, this appeal operates by way of a rehearing and that the court may consider afresh all the evidence adduced at the hearing below but the decision of...