Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd

JurisdictionSingapore
JudgeSundaresh Menon CJ
Judgment Date26 April 2017
Neutral Citation[2017] SGCA 30
Plaintiff CounselPang Sze Ray, Melvin, Nicholas Ong and Nicholas Tong (Amica Law LLC)
Docket NumberCivil Appeal No 61 of 2016
Date26 April 2017
Hearing Date19 January 2017
Subject MatterConflicts with earlier marks,Trade Marks and Trade Names,Registration criteria
Published date29 April 2017
Defendant CounselPrithipal Singh s/o Seva Singh, Chow Jian Hong and Denise Anne Mirandah (Mirandah Law LLP)
CourtCourt of Appeal (Singapore)
Citation[2017] SGCA 30
Year2017
Sundaresh Menon CJ (delivering the judgment of the court): Background

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: The Appellant’s CAESAR Mark was registered for goods in Class 19 as follows:

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: The application was specified for registration in Class 19, among others, as follows:

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)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“TMA”); (b) s 8(4)(a) read with s 8(4)(b)(i) of the TMA; (c) s 8(4)(a) read with s 8(4)(b)(ii) of the TMA; and (d) s 7(6) of the TMA. The PAR allowed the opposition on the first two grounds.

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)(b) and s 8(4)(a) read with s 8(4)(b)(i) of the TMA). The Judge allowed the appeal in Caesarstone Sdot-Yam Ltd v Ceramiche Caesar SpA [2016] 2 SLR 1129, finding that both grounds were not made out. The Judge further ordered that the Appellant pay the Respondent the costs of both the hearings before him and the PAR, which were to be agreed or taxed. The Appellant has brought the present appeal against the Judge’s decision.

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: whether, in appeals from the Trade Marks Registry, there is a threshold requirement for a “material error of fact or law” to be shown before appellate intervention is warranted (“Issue 1”); whether the Judge erred in finding that the opposition under s 8(2)(b) of the TMA was not made out (“Issue 2”); and whether the Judge erred in finding that the opposition under s 8(4)(a) read with s 8(4)(b)(i) of the TMA was not made out (“Issue 3”).

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 intervention

Issue 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” …

It seems to us that the difference, to the Judge, turned on whether it had to be shown that there was a “material error of fact or law” in the registrar’s decision before the court could interfere on appeal. Ultimately, the Judge did not think that he needed to decide on which approach was correct because he took the view that nothing turned on what the threshold for appellate intervention was.

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 Future Enterprises Pte Ltd v McDonald’s Corp [2007] 2 SLR(R) 845 (“Future Enterprises”), which has been followed by the High Court in Festina Lotus SA v Romanson Co Ltd [2010] 4 SLR 552 (at [21]) and Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015] 5 SLR 618 (“Rovio”) (at [78]–[80]). As for the “normative grounds”, the Appellant submits that three key factors support a high level of appellate deference: (a) the highly subjective nature of assessing mark similarity and the likelihood of confusion; (b) the registrar’s specialised experience in dealing with trade mark disputes; and (c) the function of the Intellectual Property Office of Singapore as a low-cost tribunal for hearing trade mark disputes.

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 Future Enterprises is misplaced, and that a lower threshold for intervention is justified because the courts are in as good a position as the PAR when it comes to evaluating the merits of the opposition.

In our judgment, the starting point of the analysis is our decision in Future Enterprises, although, for some reason, it was not referred to by the Judge. The relevant paragraphs of this decision state (at [5]–[7]) as follows: … In Reef Trade Mark [2003] RPC 5, Robert Walker LJ considered the function of an appellate tribunal in relation to appeals from the UK Trade Mark Registry, and concluded (at [28]) that “an appellate court should … show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle. In SC Prodal 94 SRL v Spirits International NV [2003] EWHC 2756 (Ch), Laddie J expressed the same sentiments (at [19]) as follows:

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.

... Such an approach is consistent with established principles relating to appeals from tribunals that are not in the nature of a rehearing, such as an appeal from a decision of the PAR. The smorgasbord of trade mark cases which has reached the appellate courts demonstrates the innumerable (and subjectively perceived) similarities and differences that can be conjured up and persuasively articulated by an imaginative and inventive legal mind. ... In the light of the highly subjective nature of assessing similarity and the likelihood of confusion, we agree with the approach that an appellate court should not disturb the findings of fact of a trade mark tribunal unless there is a material error of principle.

[emphasis added in italics and bold italics]

It is evident that the Appellant’s position is supported by the foregoing passages from Future Enterprises. However, Future Enterprises was, in our respectful view, wrong on this point. There are at least two reasons why this is so.

First, as observed in a number of subsequent High Court decisions (MediaCorp News Pte Ltd v Astro All Asia Networks plc [2009] 4 SLR(R) 496 at [26]; Ozone Community Corp v Advance Magazine Publishers Inc [2010] 2 SLR 459 at [31]–[32]; Polo/Lauren Co LP v United States Polo Association [2016] 2 SLR 667 at [7]), the court in Future Enterprises did not consider the effect of O 87 r 4(2) of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) (“2006 ROC”) (which is worded identically in the current edition (Cap 322, R 5, 2014 Rev Ed) (“ROC”)). That provision expressly states that an appeal to the court from a...

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2 books & journal articles
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    • Singapore
    • Singapore Academy of Law Annual Review No. 2017, December 2017
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    ...Directories Pte Ltd [2017] 2 SLR 185 at [108]. 66 Global Yellow Pages Ltd v Promedia Directories Pte Ltd [2017] 2 SLR 185 at [108]. 67 [2017] 2 SLR 308. 68 Cap 332, 2005 Rev Ed. 69 Caesarstone Sdot-Yam Ltd v Ceramiche Caesar SpA [2016] 2 SLR 1129. 70 Ceramiche Caesar SpA v Caesarstone Sdot-......
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    • Singapore Academy of Law Journal No. 2020, December 2020
    • December 1, 2020
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