This matter concerned the opposition to the CAESARSTONE mark in relation to flooring in Class 19, by the owner of a prior CAESAR trade mark covering the same goods.
The crux of the matter, as considered by the Hearing Officer, was the deceptive similarity of the respective trade marks and the goods covered by those respective marks.
Arguments were made by both parties as to the nature of the goods and whether ‘tiles’ and larger ‘floor coverings’ were similar goods. The Hearing Officer considered the matter and came to the view that ‘the class of consumers to whom these products are sold sufficiently overlap to mean that they are goods of the same description’.
Having decided that the respective goods were similar, the Hearing Officer turned to the deceptive similarity of the trade marks. The Hearing Officer noted the descriptive nature of the ‘STONE’ element in relation to the goods at issue and came to the overall view that ‘the likelihood of confusion or deception [arising between the trade marks] is very high’.
Accordingly, the Hearing Officer found in favour of the opponent and noted that there was insufficient use by the applicant in relation to flooring for the provisions of honest concurrent use to apply.
The opposition was successful and the CAESARSTONE Logo refused registration. However, this decision is now under appeal.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions.