Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd
Jurisdiction | Singapore |
Judge | Sundaresh Menon CJ |
Judgment Date | 26 April 2017 |
Neutral Citation | [2017] SGCA 30 |
Plaintiff Counsel | Pang Sze Ray, Melvin, Nicholas Ong and Nicholas Tong (Amica Law LLC) |
Docket Number | Civil Appeal No 61 of 2016 |
Date | 26 April 2017 |
Hearing Date | 19 January 2017 |
Subject Matter | Conflicts with earlier marks,Trade Marks and Trade Names,Registration criteria |
Published date | 29 April 2017 |
Defendant Counsel | Prithipal Singh s/o Seva Singh, Chow Jian Hong and Denise Anne Mirandah (Mirandah Law LLP) |
Court | Court of Appeal (Singapore) |
Citation | [2017] SGCA 30 |
Year | 2017 |
The appellant, Ceramiche Caesar SpA (“the Appellant”), is an Italian company and a manufacturer of porcelain stoneware tiles for indoor and outdoor use, both for flooring and cladding installations. The respondent, Caesarstone Sdot-Yam Ltd (“the Respondent”), is an Israeli company and a manufacturer of engineered quartz and stone surface products for various applications.
The Appellant is the registered proprietor of the following trade mark (“the Appellant’s CAESAR Mark”) in Singapore:
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 Respondent, on the other hand, applied to register the following mark (“the Respondent’s CAESARSTONE Mark”) in Singapore:
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.
The Appellant objected to the Respondent’s application in Class 19 and commenced opposition proceedings against the Respondent. No objection was raised against the Respondent in respect of the other classes in which registration was sought, these being Classes 20, 35, and 37.
Opposition proceedings were first heard before the Principal Assistant Registrar of Trade Marks (“the PAR”). Before the PAR, the Appellant relied on the following four grounds of opposition: (a) s 8(2)(
Dissatisfied with the PAR’s decision, the Respondent appealed to the High Court in Tribunal Appeal No 12 of 2015. The appeal was in relation to the grounds on which the Appellant had succeeded before the PAR (namely, s 8(2)(
In addition to the substantive issues which arise from the Judge’s decision on the two aforementioned grounds, this appeal also raises the issue of the appropriate threshold for appellate intervention in appeals from the Trade Marks Registry. Specifically, the question is whether there must be a “material error of fact or law” before appellate intervention is warranted. Consequently, the following three issues arise in this appeal:
In relation to Issue 1, the Appellant submits that decisions of the registrar ought not to be disturbed unless there has been a “material error of fact or law”, and that in the instant case the PAR did not make any material error. The Respondent, on the other hand, submits that the threshold for appellate intervention cannot be uniformly high in all appeals from the Trade Marks Registry, and that the question of whether appellate intervention is warranted must depend on the nature and facts of each case. On Issues 2 and 3, the Appellant unsurprisingly urges this court to reverse the Judge’s findings while the Respondent, similarly unsurprisingly, urges us to affirm the same.
Issue 1: Threshold for appellate interventionIssue 1 relates to the threshold for appellate intervention in an appeal from the registrar’s decision. The Judge observed that there was “some uncertainty” over this question. He framed this uncertainty as follows:
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 the PAR ought not to be disturbed unless there has been a “material error of fact or law” … On another view, the threshold for appellate intervention may be lower in view of O 87 r 4(2) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) which provides that “an appeal shall be by way of rehearing and the evidence used on appeal shall be the same as that used before the Registrar and, except with the leave of the Court, no further evidence shall be given” …
On appeal to us, the Appellant submits that the cases and “normative grounds” support the threshold requirement of a “material error of fact or law”. The main case relied on by the Appellant is our decision in
On the other hand, the Respondent submits that the threshold for appellate intervention cannot be uniformly high in all appeals from the Trade Mark Registry, and that the question of whether appellate intervention is warranted must depend on the nature and facts of each case. The Respondent also submits that the Appellant’s reliance on
In our judgment, the starting point of the analysis is our decision in
It is not the duty of this court to overturn a decision of the Trade Mark Registry simply because it comes to the conclusion that it might have decided the case differently had it, that is to say the High Court, been the court of first instance.
It has to be demonstrated that the decision at first instance was wrong in a material way ; that is to say there must be some significant departure from a proper assessment of the law or the facts .
[emphasis added in italics and bold italics]
It is evident that the Appellant’s position is supported by the foregoing passages from
First, as observed in a number of subsequent High Court decisions (
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