FEDERAL COURT OF AUSTRALIA

Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 2) [2018] FCA 1096

File numbers:

NSD 166 of 2015

NSD 1187 of 2015

NSD 1719 of 2015

Judge:

ROBERTSON J

Date of judgment:

31 July 2018

Catchwords:

TRADE MARKS what trade mark was in fact used by the respondent – trade marks similar – whether deceptively similar – where no actual confusion – whether applicant had continuously used its trade mark before the priority date – whether use was authorised use under the control of applicant for the purposes of ss 7 and 8 of the Trade Marks Act 1995 (Cth) – if so, whether, for the purposes of s 58A, the respondent first used the similar trade mark before the applicant first used its trade mark – whether honest concurrent use of the two trade marks or “other circumstances” for the purposes of s 44(3) – exercise of s 44(3) discretion to accept application for registration, subject to conditions or limitations – whether, for the purposes of s 59, applicant not intending to use the trade mark in Australia in relation to the goods and/or services specified in the application – application under s 88 to rectify the Register by cancelling the registration of a trade mark – whether application made by an aggrieved person – whether any of the grounds established on which the registration of the trade mark could have been opposed – whether the ground established that because of the circumstances applying at the time when the application for rectification was filed, the use of the trade mark was likely to deceive or cause confusion – whether discretion under ss 88 and 89 should be exercised against rectification

Legislation:

Trade Marks Act 1995 (Cth) ss 7, 8, 10, 14, 44, 57, 58A, 59, 88 and 89

Trade Marks Regulations 1995 (Cth) r 8.2

Cases cited:

Australian Broadcasting Corporation v Commercial Radio Australia Ltd [2010] ATMO 46; 88 IPR 376

Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; 58 CLR 641

Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43;129 CLR 353

Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337

Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2015] ATMO 12; 111 IPR 598

Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2015] ATMO 83

Clark v Sharp (1898) 15 RPC 141

Crazy Rons Communication Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; 209 ALR 1

Daiquiri Rum Trade Mark [1969] RPC 600

Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company [2018] FCA 1014

E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144

Frigiking Trade Mark [1973] RPC 739

General Electric Co v The General Electric Co Ltd [1973] RPC 297

Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590

Johnson & Johnson v Kalnin [1993] FCA 279; 114 ALR 215

K-Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149

Lodestar Anstalt v Campari America LLC [2016] FCAFC 92; 244 FCR 557

London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264

Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27; 166 FCR 312

McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102

MID Sydney Pty Ltd v Australian Tourism Company Ltd (1998) 90 FCR 236

Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd [2012] FCA 1022; 97 IPR 183

Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; 275 ALR 526

QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553

Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407

Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252

Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901; 132 FCR 326

Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; 294 ALR 661

Davison, M and Horak, I, Shanahan’s Australian Law of Trade Marks and Passing Off (6th ed, Thomson Reuters, 2016)

Date of hearing:

27 March 3 April 2017

Date of last submissions:

13 April 2017

Registry:

New South Wales

Division:

General Division

National Practice Area:

Intellectual Property

Sub-area:

Trade Marks

Category:

Catchwords

Number of paragraphs:

785

Counsel for Caesarstone Ltd:

Mr T Cordiner QC with Ms R White

Solicitor for Caesarstone Ltd:

K&L Gates

Counsel for Ceramiche Caesar S.p.A:

Mr C Burgess with Ms EE Whitby

Solicitor for Ceramiche Caesar S.p.A:

Spruson & Ferguson Lawyers Pty Limited

ORDERS

NSD 166 of 2015

BETWEEN:

CAESARSTONE LTD

Appellant

AND:

CERAMICHE CAESAR S.P.A.

Respondent

NSD 1187 of 2015

BETWEEN:

CAESARSTONE LTD

Appellant

AND:

CERAMICHE CAESAR S.P.A.

Respondent

NSD 1719 of 2015

BETWEEN:

CERAMICHE CAESAR S.P.A.

Applicant

AND:

CAESARSTONE LTD

Respondent

JUDGE:

ROBERTSON J

DATE OF ORDER:

31 July 2018

THE COURT ORDERS THAT:

1.    By 14 August 2018, after conferring, the parties are to file a joint document indicating where, if at all, it is claimed that the reasons for judgment contain information in respect of which a non-publication order has been made or should be made. Where a non-publication order has not been made, an affidavit in support of each claim is to be filed by the same date.

2.    By 28 August 2018, Ceramiche Caesar is to provide its proposed form of orders, including orders as to costs, to Caesarstone.

3.    By 4 September 2018, Caesarstone is to respond to the form of orders proposed by Ceramiche Caesar in accordance with order 2.

4.    By 10 September 2018, a document is to be filed with the Court, setting out the parties’ proposed form of orders, either in an agreed form or setting out the differences between the parties.

5.    If there is a dispute between the parties in relation to the proposed form of orders, including orders as to costs:

(i)    by 17 September 2018, Ceramiche Caesar is to file and serve short written submissions, limited to 5 pages, in support of the orders for which it contends and which are in dispute;

(ii)    by 24 September 2018, Caesarstone is to file and serve its corresponding submissions answering the submissions of Ceramiche Caesar.

Each set of submissions made in accordance with this order, order 5, should state whether or not the parties are content for the form of orders, including orders as to costs, to be determined on the papers.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

ROBERTSON J:

Introduction

[1]

The decisions under appeal

[8]

The issues

[20]

The statutory provisions

[31]

The evidence

[41]

Ceramiche Caesar’s evidence

[41]

Caesarstone’s evidence

[136]

The parties’ submissions

[447]

Ceramiche Caesar’s submissions

[447]

Caesarstone’s submissions

[548]

Consideration

[659]

General

[659]

First disputed mark, trade mark No. 1058321, the priority date by reference to which the claims were to be assessed being 2 June 2005

[694]

Second disputed mark, trade mark No. 1211153, the priority date by reference to which the claims were to be assessed being 26 August 2007.

[757]

Rectification action in which Ceramiche Caesar applied for the cancellation of the third disputed trade mark under s 88(1)

[762]

Conclusion and orders

[783]

Introduction

1    There are three proceedings before the Court:

(a)    Proceedings NSD166/2015 and NSD1187/2015 were appeals brought by Caesarstone Sdot-Yam Ltd, now named Caesarstone Ltd, (Caesarstone) pursuant to s 56 of the Trade Marks Act 1995 (Cth) (the Trade Marks Act) from two decisions of the Registrar of Trade Marks to reject Caesarstone’s applications to register:

(i)    trade mark application No. 1058321 for the word mark CAESARSTONE filed in Class 19 (Decision 1: Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2015] ATMO 12; 111 IPR 598; and

(ii)    trade mark application No. 1211153 for the CAESARSTONE Device mark filed in Classes 19, 20, 35 and 37 (Decision 2: Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd [2015] ATMO 83).

and

(b)    Proceeding NSD1719/2015 was a rectification application brought by Ceramiche Caesar S.p.A (Ceramiche Caesar) pursuant to s 88 of the Trade Marks Act to cancel Caesarstone’s Trade Mark Registration No. 1211152 for the word mark CAESARSTONE in respect of certain services in Classes 35 and 37.

2    Caesarstone’s relevant trade marks were:

(a)    Australian trade mark application No. 1058321 for CAESARSTONE in Class 19 (the Caesarstone Goods Word mark);

(b)    Australian trade mark application No. 1211153 for the following mark in Classes 19, 20, 35 and 37 (the CAESARSTONE Device mark):

(c)    Australian registered trade mark No. 1211152 for CAESARSTONE in Classes 35 and 37 (the Caesarstone Services Word mark).

3    Ceramiche Caesar’s device mark, the CÆSAR Device mark was:

4    Not in issue was Caesarstone’s Trade Mark Registration No. 861751 for the word mark CAESARSTONE in Class 20 with a priority date of 28 December 2000, as follows:

Class 20: 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

5    Counsel for Ceramiche Caesar accepted that his client bore the ultimate onus of establishing that the three Caesarstone trade marks should not enjoy statutory protection under the Trade Marks Act.

6    By way of introduction, Ceramiche Caesar is an Italian manufacturer of ceramic tiles for indoor and outdoor flooring and wall cladding. It has manufactured and distributed its tile products under the CÆSAR Device mark (together with the word mark CAESAR) in many countries, currently about 90 countries. Since 1988, Ceramiche Caesar has promoted, manufactured and sold substantial quantities of its CAESAR branded tile products in Australia. Ceramiche Caesar’s tiles are made of porcelain stoneware, a type of ceramic that is made by grinding, mixing and pressing raw materials (such as quartz, kaolin, feldspar and clay) into slabs that are heated at approximately 1,200°C to achieve vitrification of the slab. Ceramiche Caesar promotes its tile products by reference to the ceramic material of which they are made. It registered the CÆSAR Device mark in Australia in November 2004. That priority date preceded the later (2005 and 2007) priority dates of the disputed Caesarstone trade marks.

7    Similarly by way of introduction, Caesarstone is an Israeli company which was founded in 1987. It manufactures and distributes engineered quartz surfaces that are composed of quartz combined with polymers and pigments in the form of slabs and are used as an alternative to natural stone, such as marble and granite, and can be used for the same applications as one would use a natural stone product. The Caesarstone slabs have been sold in Australia since approximately 1998. The underside of all Caesarstone slabs are, and have been since 1987, marked with and promoted by the Caesarstone Word mark. From 2003, Caesarstone distributed its products through two licensees, Carsilstone Pty Ltd (Carsilstone) and Tessera Stones and Tiles Pty Ltd (Tessera). Caesarstone now has an Australian subsidiary, Caesarstone Australia Pty Ltd (Caesarstone Australia), incorporated in September 2006.

The decisions under appeal

8    In matter NSD166/2015, Caesarstone’s application filed on 2 June 2005 to register the Caesarstone Word mark was examined and accepted for possible registration in respect of the following goods:

Class 19: Panels for floors, floor coverings, wall cladding, ceilings; non-metallic covers for use with floors and parts thereof; profiles and floor skirting boards; none of the foregoing being in the nature of tiles

9    Ceramiche Caesar filed a notice of opposition to registration of the trade mark which, by Decision 1, was granted by a delegate of the Registrar of Trade Marks on 4 February 2015. The delegate said the products were composed of reconstituted quartz stone. The products were intended for use in bathrooms, as bench and kitchen countertops and splashbacks, or as wall cladding and flooring. Caesarstone first used the trade mark in Australia in 1998. Caesarstone owned registration 861751 for the trade mark: see [4] above.

10    The delegate found that the goods were at least of the same description as Ceramiche Caesar’s goods. He found, at [43], that the likelihood of confusion or deception was very high. He found that it was almost inevitable that a substantial number of people would be confused or deceived by use of the trade mark. Accordingly, the delegate found that Ceramiche Caesar had made a case under s 44(1) of the Trade Marks Act and so, as the applicant acknowledged and argued, it bore the onus of proof to show that s 44(3) applied on the facts. The delegate, at [59], refused to apply s 44(3)(a). He added that there was nothing to cause him to think that s 44(3)(b) might apply instead.

11    In matter NSD1187/2015, Caesarstone, by application filed on 19 November 2007, sought registration for the CAESARSTONE Device mark in Classes 19, 20, 35 and 37 under application 1211153.

12    Those classes were as follows:

Class 19: Panels for floors, floor coverings not in the nature of tiles, wall cladding, flooring not in the nature of tiles, and ceilings; non-metallic covers for use with floors and parts thereof not in the nature of tiles; profiles and floor skirting boards; slabs formed of composite stone for building panels, counter tops, vanity tops, floors, stairs, and walls

Class 20: 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

Class 35: Wholesale and retail services; wholesale and retail stores and wholesale and retail showrooms featuring 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; offering consulting, support, marketing, promotional and technical assistance in the establishment and operation of distributorship, dealership, franchising, wholesale and retail stores 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

13    Caesarstone agreed to amend its specification in Class 19 to remove the item “tiles and qualify certain items in that class as being not in the nature of tiles.

14    Ceramiche Caesar filed a notice of opposition to the registration of the trade mark which, by Decision 2, was granted by a delegate of the Registrar of Trade Marks on 9 September 2015. At [26], the delegate said that some of Caesarstone’s goods in Class 19 had been qualified as being “not in the nature of tiles” namely “floor coverings not in the nature of tiles; “flooring not in the nature of tiles” and “non-metallic covers for use with floors and parts thereof not in the nature of tiles”, whereas items such as “slabs formed of composite stone for ….floors, stairs…” were unqualified. Regardless, the qualification “not in the nature of tiles” did not change the application of those goods as they remained flooring. Panels, slabs and tiles may differ in their nature, but they will be purchased by the same customer through the same trade channels for the same purpose.

15    At [27], the delegate said the actual nature of the use conducted by Caesarstone was irrelevant at that point as the “question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained”: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 at [50].

16    At [28], the delegate found that the goods in Class 19 of Caesarstone’s specification were similar (being goods of the same description) as the goods in Class 19 of Ceramiche Caesar’s specification. The delegate did not find that Caesarstone’s Class 20 goods were similar to the goods in Class 19 of Ceramiche Caesar’s specification.

17    At [34], the delegate found that Ceramiche Caesar’s ceramic tiles were closely related to Caesarstone’s services involving the retail and wholesale, installation, maintenance and repair of those goods.

18    At [39], the delegate found that Caesarstone’s trade mark was deceptively similar to Ceramiche Caesar’s trade mark. The delegate went on to consider whether the exceptions provided for under s 44(3) of the Trade Marks Act were applicable.

19    At [54], the delegate concluded that it was not appropriate to apply s 44(3)(a). At [58], the delegate concluded that it was not appropriate to apply s 44(3)(b).

The issues

20    During the course of the proceeding before me, there was a concession by Ceramiche Caesar that:

Ceramiche Caesar S.p.A does not press its grounds of opposition pursuant to sections 42(b) and 60 of the Act with respect to Australian trademark nos. 1058321, 1211152 and 1211153.

There were also concessions by Caesarstone in the following terms:

1.    For the purposes of these proceedings, Caesarstone Ltd does not press that the goods claimed in class 19 for Australian trade mark application nos. 1058321 and 1211153 filed in the name of Caesarstone Ltd are not similar goods to the goods claimed in Australian trademark no. 1031251 registered to Ceramiche Caesar S.p.A.

2.    For the purposes of these proceedings, Caesarstone Ltd does not rely on proving “predecessor in title” pursuant to section 44 of the Trade Marks Act 1995 (Cth)…

21    None of the priority dates were in dispute in the proceedings.

22    The major points of contention between the parties were as follows.

23    One issue was whether the name and trade mark being projected to the market was Caesar rather than Ceramiche Caesar. A related issue was whether the word “ceramic” or “CERAMICHE” was an additional alteration that affected the identity of the trade mark. Caesarstone’s contention was that the error in the delegates decisions was that each of them failed to have proper regard to the lack of distinctiveness in the name “Caesar” and the effect that had on a proper consideration of whether or not there was deceptive similarity.

24    There was an issue as to the proper identity of a tile, Caesarstone asserting that their slabs were too big to be tiles, by way of thickness or by way of other dimensions.

25    There was a dispute about prior use for s 44(4), earlier use for s 58A and intention to use for s 59. The issue of use “under the control of” Caesarstone for ss 7 and 8 was significant.

26    There was a dispute about the uses of the goods. Ceramiche Caesar submitted that bathroom floors were one example where there was a high likelihood of confusion if Caesarstone were permitted to obtain registration. It was contended that there was a likelihood of confusion in respect of flooring and walling applications.

27    Substantial time was spent on the question of “splashback” surfaces. Ceramiche Caesar accepted that a splashback is a surround for a kitchen, relevant to Class 20 goods. Caesarstone submitted that splashbacks were not identified separately in the Class 19 goods in respect of which it sought registration. It submitted that use of the product as a splashback was sufficient to give registration in relation to wall cladding generally.

28    There was a dispute over the channels to the market for Ceramiche Caesar’s tiles and what were common trade channels as between Ceramiche Caesar and Caesarstone. One example was architects, interior designers and developers. Another was retailers who sold tiles and slabs that may be looked at in showrooms and then purchased through those retailers.

29    Counsel for Ceramic Caesar submitted there was no dispute that the parties could exist concurrently in the Australian market, where Caesarstone’s use of its products was for the kitchen counter top, bathroom counter top, vanity units and splashback surfaces specified in the Class 20 Caesarstone registration. The dispute was about Caesarstone’s wish to extend, by the disputed trade marks, the scope of its registered trade mark rights from those uses, into Ceramiche Caesar’s area of registered trade mark protection which was tiles predominantly used in flooring and wall cladding: it was this extension of Caesarstone’s trade mark rights that was held by the Registrar’s delegates to give rise to a very high likelihood of deception or confusion.

30    In the rectification application, additional issues included whether Ceramiche Caesar was an aggrieved person and the exercise of the discretions in ss 88 and 89.

The statutory provisions

31    The relevant provisions of the Trade Marks Act were as follows.

32    Sections 7 and 8 provided:

7    Use of trade mark

(1)    If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

Note: For prescribed court see section 190.

(2)    To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

(3)    An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

(4)    In this Act:

use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).

(5)    In this Act:

use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

8    Definitions of authorised user and authorised use

(1)    A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

(2)    The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

(3)    If the owner of a trade mark exercises quality control over goods or services:

(a)    dealt with or provided in the course of trade by another person; and

(b)    in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(4)    If:

(a)    a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

(b)    the owner of the trade mark exercises financial control over the other person’s relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

(5)    Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

33    By s 10, for the purposes of the Trade Marks Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

34    Section 14 provided:

14    Definition of similar goods and similar services

(1)    For the purposes of this Act, goods are similar to other goods:

(a)    if they are the same as the other goods; or

(b)    if they are of the same description as that of the other goods.

(2)    For the purposes of this Act, services are similar to other services:

(a)    if they are the same as the other services; or

(b)    if they are of the same description as that of the other services.

35    Section 44 provided:

44    Identical etc. trade marks

(1)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)    the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)    a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)    a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2: For similar services see subsection 14(2).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3)    If the Registrar in either case is satisfied:

(a)    that there has been honest concurrent use of the 2 trade marks; or

(b)    that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note: For limitations see section 6.

(4)    If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)    beginning before the priority date for the registration of the other trade mark in respect of:

(i)    the similar goods or closely related services; or

(ii)    the similar services or closely related goods; and

(b)    ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

36    Section 58A provided:

58A    Opponent’s earlier use of similar trade mark

(1)    This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a)    subsection 44(4); or

(b)    a similar provision of the regulations made for the purposes of Part 17A.

Note:    Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)    The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)    first used the similar trade mark in respect of:

(i)    similar goods or closely related services; or

(ii)    similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)    has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:    For predecessor in title see section 6.

37    Section 59 provided:

59    Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)    to use, or authorise the use of, the trade mark in Australia; or

(b)    to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:    For applicant see section 6.

38    Section 88 provided:

88    Amendment or cancellation—other specified grounds

(1)    Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:

(a)    cancelling the registration of a trade mark; or

(b)    removing or amending an entry wrongly made or remaining on the Register; or

(c)    entering any condition or limitation affecting the registration of a trade mark that ought to be entered.

(2)    An application may be made on any of the following grounds, and on no other grounds:

(a)    any of the grounds on which the registration of the trade mark could have been opposed under this Act;

(b)    an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation;

(c)    because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion;

(e)    if the application is in respect of an entry in the Register—the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation.

Note 1:     For prescribed court see section 190.

Note 2:     For file, registered owner and this Act see section 6.

39    Section 89 provided:

89    Rectification may not be granted in certain cases if registered owner not at fault etc.

(1)    The court may decide not to grant an application for rectification made:

(a)    under section 87; or

(b)    on the ground that the trade mark is liable to deceive or confuse (a ground on which its registration could have been opposed, see paragraph 88(2)(a)); or

(c)    on the ground referred to in paragraph 88(2)(c);

if the registered owner of the trade mark satisfies the court that the ground relied on by the applicant has not arisen through any act or fault of the registered owner.

Note: For registered owner see section 6.

(2)    In making a decision under subsection (1), the court:

(a)    must also take into account any matter that is prescribed; and

(b)    may take into account any other matter that the court considers relevant.

40    The “matter that is prescribed” for the purposes of s 89(2)(a) was set out in r 8.2 of the Trade Marks Regulations 1995 (Cth) as follows:

8.2    Amendment or cancellation—matters for the court

For the purposes of paragraph 89(2)(a) of the Act (which deals with amendment or cancellation by a prescribed court), a prescribed court, in making a decision under subsection 89(1) of the Act on an application for rectification of the Register, must take into account the following matters, so far as they are relevant:

(a)    the extent to which the public interest will be affected if registration of the trade mark is not cancelled;

(b)    whether any circumstances that gave rise to the application have ceased to exist;

(c)    the extent to which the trade mark distinguished the relevant goods and/or services before the circumstances giving rise to the application arose;

(d)    whether there is any order or other remedy, other than an order for rectification, that would be adequate in the circumstances.

The evidence

Ceramiche Caesar’s evidence

41    Ceramiche Caesar’s general catalogues for the years 1993 to 2007 were tendered, relating to the issue of continuity of usage. There was no dispute that continuity was proved after the priority date 2007, the priority date of the second and third disputed trade marks. Its general catalogue for 2015 was also tendered. 2015 was the year the rectification suit was filed, so Ceramiche Caesar sought to establish affairs as they stood in that year.

42    Ceramiche Caesar published and distributed an annual general catalogue to promote its product lines in each year since 1988. I find that the annual catalogues were distributed by Ceramiche Caesar to its Australian customers in the corresponding year for the purpose of those customers providing the catalogues to their own clients and displaying them in their showrooms. I accept the catalogues were also distributed, in 1994 to 1996, 1997 to 2007 and from 2011 to Ceramiche Caesar’s local Australian sales agent for the purposes of distribution by that agent to potential future customers of Ceramiche Caesar.

43    The general catalogue for 1993 had on its cover, at the bottom of the page, the following:

On page 1, it was said: “CERAMICHE CAESAR, founded on decades of experience in the sector, was established in 1988 to produce Fine Porcelain Stoneware.” It was also said, later on that page, that the firm’s output “places Caesar among the leading companies in the sector.”

44    The same applied to the general catalogues for each of the years 1994-1997. For 1996 and 1997 the words “the continuous investments put in research and the excellent quality of the product” also appeared.

45    In the general catalogue for 1998, the cover page was the same as the previous years and the introductory prose in English was to the same effect, the firm also being referred to as “Caesar Ceramics”. That catalogue also contained the following photograph:

46    For the general catalogues for 1999-2001, the image at [43] above was at the top of the cover page rather than the bottom. Each also included the photograph at [45] above.

47    The introductory prose was as follows:

Ceramiche Caesar was founded in 1988 to produce PORCELAIN STONEWARE.

The vast range of products available has placed Caesar Ceramics within the leading companies in this sector.

To confirm the importance that the company has always dedicated to total quality, Caesar Ceramics obtained in 1996 the ISO 9001 certification…

Ceramiche CAESAR is the first Italian manufacturer of ceramic tiles to obtain the prestigious ISO 14001

48    For the years 2002-2007 the image at [43] above returned to the bottom of the cover page.

49    The photograph at [45] above was included in the general catalogues for each of 2002-2005 but not in the catalogues for 2006-2007.

50    In the general catalogue for 2002 the introductory prose was as follows:

Since 1988 Caesar has been synonymous with top quality porcelain stoneware, the perfect union between technology performance, functionality and aesthetics.

Caesar’s porcelain stoneware is distributed in over 80 countries throughout the world. It is used both for flooring and cladding in installations and projects of diverse natures.

51    The same prose also appeared in the general catalogues for 2003-2007.

52    The following photograph also appeared at the beginning of the general catalogues for the period 2002-2007:

53    For 2015, the image at [43] above remained at the bottom of the cover page. The photograph at [45] above was not included, although there were other photographs of the same building. The references in the prose are to “Caesar”, with one photographs of the CÆSAR Device mark alone and another with “Ceramiche” appearing above that mark.

54    Mr Adolfo Tancredi was the Chief Executive Officer “of the Caesar tiles business of Ceramiche Caesar S.p.A” and he had held that position since November 2006. Previously he was Sales Manager and, before that, Marketing Manager

55    The written evidence of Mr Tancredi was given in affidavits affirmed 3 May 2016, 4 August 2016 and 25 March 2017.

56    In his first affidavit, Mr Tancredi stated that as at 2005 and 2007, the tile products within Ceramiche Caesar’s range varied in size from 14.8 x 14.8cm (the smallest) to 60 x 60cm (the largest tile in 2005) and 60 x 120cm (the largest tile in 2007). The thickness of Ceramiche Caesar’s tiles in those years ranged between 7.9 and 14mm. As at 2016, the largest tiles that were available for purchase in Australia in Ceramiche Caesar’s range had dimensions of 120 x 240cm, and a thickness of 30mm.

57    He stated that the CÆSAR Device mark was, and had in each year since 1988 been, part of the house or master branding that Ceramiche Caesar used to advertise, promote and sell its tile products. More particularly, the CÆSAR Device mark had been used to identify the origin of Ceramiche Caesar’s tile products, as follows.

58    First, Ceramiche Caesar had applied the CÆSAR Device mark physically to the underside of its tile products, including the tile products that it had distributed and sold in Australia. He deposed that it had been the company policy since 1988 to apply the CÆSAR Device mark to the underside of every tile product that it manufactured. To his knowledge, this policy had always been followed. He had observed the CÆSAR Device mark present on the underside of every Caesar tile product that he had seen since he began working at Ceramiche Caesar in 1998. In cross-examination, Mr Tancredi accepted that in terms of the depictions on the back of tiles, whether the CÆSAR Device mark by itself or the CÆSAR Device mark with “Ceramiche”, he could not be sure which tile had which stamp on it and could not tell which of the tiles in fact went to Australia.

59    Second, Mr Tancredi deposed, the CÆSAR Device mark had been applied physically to the side of the tile samples that Ceramiche Caesar had manufactured and distributed to its customers and prospective customers for promotional purposes, including its customers in Australia.

60    Third, the CÆSAR Device mark had been displayed since 1988 on the invoices issued by Ceramiche Caesar to purchasers of its products, including its Australian customers. In cross-examination, Mr Tancredi accepted that from 1988 to the present the CÆSAR Device mark had always been used on invoices with the word Ceramiche in combination with it.

61    Fourth, the CÆSAR Device mark had been displayed on the websites operated by Ceramiche Caesar. Ceramiche Caesar had also used the CÆSAR Device mark on social media (such as Facebook) and web platforms dedicated to designers, architects or specific industries, such as www.architonic.com. In cross-examination, Mr Tancredi accepted that how Ceramiche Caesar’s website looked in 2017, and probably back in 2016, was that the CÆSAR Device mark was used in combination with the word Ceramiche above it, although he could not make out the presence of the word Ceramiche on the second page of the printout. Mr Tancredi accepted that the CÆSAR Device mark was used in combination with the word Ceramiche above it in the original website in 1998.

62    Fifth, the CÆSAR Device mark had been displayed in advertising and promotional materials for (and at exhibitions of) Ceramiche Caesar’s tile products.

63    Sixth, the CÆSAR Device mark had been displayed in product showrooms.

64    Seventh, the CÆSAR Device mark had been displayed at Ceramiche Caesar’s offices and its Italian manufacturing facility.

65    Mr Tancredi said that Ceramiche Caesar had also used the word CAESAR, without the stylised script used in the CÆSAR Device trade mark, to identify the origin of its tile products.

66    Mr Tancredi deposed that since 2011, Ceramiche Caesar had engaged a local (Perth based) Australian sales agent, Mr Gianfranco Circati. Ceramiche Caesar’s instructions to Mr Circati were that he physically visit the premises of Ceramiche Caesar’s customers at least four or five times per year to promote Ceramiche Caesar’s products. Mr Circati was instructed by Ceramiche Caesar to distribute, during such visits, its product catalogues and product samples, to present and explain new products or sales offers and promotions, to provide advice regarding current orders, to solicit new product orders and to negotiate for major products and sales. Between 1988 and 2011, Mr Circati’s role was performed by either different local Australian or foreign based sales agents, or Ceramiche Caesar’s own Italy based staff. The years prior to 2011 in which Ceramiche Caesar had an Australian sales agent were between March 1994 and August 1996, June 1997 and January 2003 and February 2003 and October 2007.

67    Ceramiche Caesar’s customers in Australia, Mr Tancredi deposed, placed orders for Ceramiche Caesar’s tile products either directly with its sales office in Italy, or with its Australian sales agent (who then dispatched the sales order to Ceramiche Caesar’s sales office in Italy for processing). Ceramiche Caesar’s sales office invoiced the Australian customer and made the purchased product available to be shipped from Italy to Australia on an Ex Works basis.

68    Mr Tancredi deposed that the ultimate consumers of Ceramiche Caesar’s tile products in Australia were the clients of Ceramiche Caesar’s customers. In the case of Ceramiche Caesar’s property developer, contractor and architect customers, Ceramiche Caesar’s sales resulted from the developer, contractor or architect recommending to their client that Ceramiche Caesar’s tiles should be used in their building project. The developer, contractor or architect customer then purchased Ceramiche Caesar’s tiles for use in the project. Ceramiche Caesar’s tiles had been purchased by developers, contractors and architects in Australia for use in both commercial and residential building projects.

69    Ceramiche Caesar’s Australian tile wholesaler and retailer customers stocked Ceramiche Caesar’s tiles and sold them to building professionals (such as developers, contractor and architect clients), tile retail outlets and (in the case of tile retailers) the general public. Since before 2005, none of Ceramiche Caesar’s Australian tile wholesaler and retailer customers had been exclusively dedicated to the brand. Rather, each had stocked and sold a range of different tile brands.

70    Many of Ceramiche Caesar’s Australian tile wholesaler and retailer customers had tile showrooms. Ceramiche Caesar’s tile products were, and had since before 2005 been, stocked and displayed together with other tile brands in those showrooms.

71    Mr Tancredi deposed that from 1988 onwards Ceramiche Caesar had either Jordan used the CÆSAR Device mark and the word CAESAR to promote and identify the origin of the tile products that it sold in Australia in the following manner: the tile products and the samples that Ceramiche Caesar had distributed in Australia had been physically marked with the CÆSAR Device mark on the underside or side (respectively); all invoices dispatched by Ceramiche Caesar’s Italian sales office to its Australian customers since 1988 had borne the CÆSAR Device mark; Ceramiche Caesar had published and distributed an annual general catalogue to promote its product lines in each year since 1988. Each annual general catalogue published by Ceramiche Caesar had borne the CÆSAR Device mark and/or the word CAESAR without stylised script; Ceramiche Caesar had published and distributed catalogues for specific product lines that bore the CÆSAR Device mark and/or the word CAESAR without stylised script since 2001; some of Ceramiche Caesar’s Australian customers had displayed signage and promotional furniture, fixtures and panel boards featuring the CÆSAR Device mark; the CÆSAR Device mark and the word CAESAR without special script had been used by Ceramiche Caesar on its website, which was accessible to Australians; Ceramiche Caesar operated two further websites at the addresses www.caesarcontractsolutions.it (online since 2012) and www.caesargreen.it (online between 2009 and 2015) which had featured the CÆSAR Device mark and the word CAESAR; and Ceramiche Caesar’s internal marketing team had since 2009 issued monthly newsletters and, since 2014, alerts to customers and distributors around the world, including in Australia, about Ceramiche Caesar’s business, including upcoming or complete projects, to subscribers. There were presently approximately 30,000 subscribers to this newsletter.

72    Mr Tancredi deposed that Ceramiche Caesar had exhibited its tile products by reference to the CÆSAR Device mark at various conventions and trade shows at trade fairs around the world. For example, Ceramiche Caesar had exhibited a trade booth featuring the CÆSAR Device mark at each trade fare CERSAIE in Bologna, Italy annually since 1988. Mr Tancredi deposed that he regarded the CERSAIE trade fair to be the most important ceramics exhibition in the world as it was the largest attended trade show of attendees and exhibitors relating to ceramics. He had been attending the trade fair since 1988 and had observed Australian delegates there. He met with a delegation of Australian architects there at the 2015 CERSAI trade fair. Similarly, Ceramiche Caesar had maintained trade booths at other trade fairs such as the International Council of Shopping Centers.

73    Mr Tancredi deposed that Ceramiche Caesar’s tiles had since 1988 been used in many significant building projects around the world, including in Australia. Those projects included: shopping centres; stores and boutiques; lounges and restaurants; hotels and spas; airports and stations; public areas and places of worship; and offices.

74    In his second affidavit, Mr Tancredi stated, and I accept, that while Ceramiche Caesar first began distributing CÆSAR Device mark branded tile products in 1988, the CÆSAR Device mark was created by the company one year earlier, in 1987. Mr Tancredi referred to a template letter used by Ceramiche Caesar in 1987 which used, as part of the letterhead, the CÆSAR Device mark. In cross-examination, it was put to Mr Tancredi that the whole device there was Ceramiche Caesar. Mr Tancredi first replied that he saw two devices, Ceramiche and Caesar and then said he saw three different devices, Ceramiche, Caesar and then “Capitale Sociale”.

75    Also in his second affidavit Mr Tancredi provided greater, confidential, detail of Ceramiche Caesar’s Australian customers since 1988, being predominantly wholesalers, retailers and importers of tiles, together with property developers, contractors and architects. The confidential detail was as to the names and addresses of each Australian customer of Ceramiche Caesar in each year.

76    Mr Tancredi also gave confidential evidence as to the quantity of “CAESAR tiles” that Ceramiche Caesar sold in Australia between 1998 and 2015. The figure for quantity was given in square metres and in each year exceeded 10,000 square metres. In many years the quantity was a substantial multiple of that figure. Mr Tancredi also provided figures showing the revenue, in euro, from “CAESAR tile” sales in Australia from 1988 to 2015. In each year the figure was substantial, being well in excess of €200,000 since 1994 and regularly exceeding that figure by multiples.

77    Mr Tancredi deposed that some of Ceramiche Caesar’s customers had the equipment and skills necessary to cut and shape Ceramiche Caesar’s tiles into custom sizes for the end consumer and, he deposed, he was aware that they did this from time to time. He also deposed that, from time to time, Ceramiche Caesar also cut and fitted tiles to custom sizes for its customers upon request, in some instances.

78    Mr Tancredi deposed, and I accept, that Ceramiche Caesar intended to continue to use the CÆSAR Device mark in Australia both with and without the word “Ceramiche” and what he referred to as “taglines” in future. An example of a tagline was: “Materia Fino in Fondo”, meaning “Porcelain from top to bottom in English. He also observed that Ceramiche Caesar used the CÆSAR Device mark and the trade mark CAESAR (in plain text) in Australia before 2001 without the word “Ceramiche” and/or an accompanying tagline.

79    Mr Tancredi deposed that he strongly disagreed with the contention that Ceramiche Caesar would not suffer any inconvenience if the Caesarstone Goods Word mark, the CAESARSTONE Device mark and the Caesarstone Services Word mark were registered in Australia. He deposed that he and his colleagues at Ceramiche Caesar were concerned that registration of the Caesarstone Goods Word mark and the CAESARSTONE Device mark would give Caesarstone the right to use its CAESARSTONE trade marks for floor and wall panels and covers that were similar with, or would be marketed as alternatives to, Ceramiche Caesar’s ceramic tiles. They were also concerned that registration of the CAESARSTONE Device mark and Caesarstone Services Word mark would give Caesarstone the right to use the CAESARSTONE Device mark to provide wholesale, retail, installation, maintenance and repair services for tiles, floor and wall panels and like goods. He deposed that he and his colleagues believed that if Caesarstone obtained and exercised such rights, members of the Australian public, including architects, property developers, contractors and end consumers were likely to be confused, having regard to Ceramiche Caesar’s use of its CÆSAR Device mark and the trade mark CAESAR (unstylised) in the Australian marketplace since 1988. Confusion between the two companies, he deposed, would harm Ceramiche Caesar’s business and inconvenience Ceramiche Caesar’s customers.

80    Mr Tancredi deposed that Ceramiche Caesar was also concerned that Caesarstone’s registration and use of the disputed trade marks for floor and wall panels and covers that were similar with (or marketed as alternatives to) Ceramiche Caesar’s ceramic tiles would dilute the distinctiveness of its CÆSAR Device mark and CAESAR branding in the Australian market. Since 1988, he deposed, Ceramiche Caesar had invested substantial time and effort promoting its CÆSAR Device mark internationally and generating goodwill. It had grown to become one of the leading stoneware tile manufacturers in the world. Ceramiche Caesar did not wish to see its investment in its CÆSAR Device mark and CAESAR branding compromised by a company that was not presently a competitor entering its marketspace using a confusingly similar trade mark.

81    In his oral evidence, Mr Tancredi said that if Caesarstone was confined to the countertop business, it was not a competitor of Ceramiche Caesar because Ceramiche Caesar sold and promoted its material for floor and wall coverings. He said that a splashback could also be part of a wall application, although Ceramiche Caesar had never specifically promoted its tiles for use as splashbacks.

82    A further concern of Ceramiche Caesar, Mr Tancredi deposed, was that it would suffer inconvenience in the form of a restriction on its freedom to modernise or adapt its existing CAESAR branding, if the Caesarstone Goods Word mark, the CAESARSTONE Device mark and the Caesarstone Services Word mark were on the Australian Trade Marks Register. More particularly, if the Caesarstone Goods Word mark were permitted to proceed to registration, Ceramiche Caesar may have difficulty registering further trade mark applications for its products for new or adapted logos that incorporated the word CAESAR.

83    One of the issues Mr Tancredi addressed in his third affidavit was the quantities of Ceramiche Caesar’s catalogues and brochures that were distributed in Australia from 2001 onwards. I find that in 2001 there were 27 catalogues, in 2002 - 138, in 2003 - 201, in 2004 - 125, in 2005 - 95, in 2006 - 74, in 2007 - 52, in 2008 - 59, in 2009 - 18, in 2010 - 20, in 2011 - 29, in 2012 - 32 and in 2013 - 62.

84    In cross-examination, Mr Tancredi accepted that in relation to the annexures he had listed in his first affidavit, more often than not, where the CÆSAR Device mark was there, it was used in combination with the word Ceramiche or in combination with a tag line.

85    Ceramiche Caesar’s merchandising manual for 2002 was tendered. It showed that the word Ceramiche appeared above each use of the CÆSAR Device mark.

86    Mr Lino Bianco, product manager of the “Caesar tiles” business of Ceramiche Caesar, affirmed an affidavit dated 4 August 2016. His evidence was that he had been the product manager since 1989 and had inspected and handled Ceramiche Caesar’s finished tile products regularly and extensively throughout the period from 1989 to the present. He said that as a result of his inspections and his observations of the manufacturing process since 1989, he was aware that Ceramiche Caesar, using stamps, impressed words onto the underside of all tiles in the “CAESAR product line.

87    Mr Bianco deposed that between 1989 and 2000, to his personal observation of the manufacturing process, two forms of the CAESAR brand were impressed onto the underside of Ceramiche Caesar’s tiles. He also observed both forms of brands visible on the underside of the tiles that he inspected and handled from 1989 to 2000. These were, as to the first form:

    

and, as to the second form:

    

88    Mr Bianco’s recollection was that the majority of the tiles that Ceramiche Caesar made between 1989 and 2000, including the tiles that it made for, and exported to, its Australian customers in each year during that period, were impressed with the first form of wording. There was, however, no policy or practice between 1989 and 2000 whereby the form of wording imprinted on Ceramiche Caesar’s tiles varied depending on the country in which the tiles were to be sold or distributed, or the particular product within Ceramiche Caesar’s product line. Ceramiche Caesar had been unable to locate any records showing the actual marks used during that period.

89    In cross-examination, Mr Bianco made clear that there were two types of stamps but many hundreds of stamps. He could not recall whether the stamp with “Ceramiche Caesar” on it was used more or less than the stamp with “Caesar” on it prior to 2000 or 2001.

90    Mr Mark Ryan had been a director of Ceramic Distributors Pty Ltd, trading as Imported Ceramics in Western Australia, for about 30 years. He affirmed an affidavit dated 6 January 2017.

91    He deposed that Imported Ceramics was one of the largest ceramic tile importers by volume in Western Australia. It had one of the largest ranges of imported ceramic tiles showcased in its showrooms in Western Australia. Imported Ceramics also had two warehouses in Western Australia, totalling around 20,000 square metres.

92    Imported Ceramics had promoted and sold tiles manufactured by Ceramiche Caesar since the 1990s. Since 2004, Imported Ceramics had been the exclusive distributor in Western Australia of certain product lines of Ceramiche Caesar’s tiles. Imported Ceramics promoted those product lines as a range that was exclusive to it.

93    Mr Ryan first became aware of Ceramiche Caesar and the sale of its tile products in the Australian market in around 1997. At that time, he was working in distribution in Imported Ceramics’ warehouse. In distribution, it was his job to coordinate the delivery of tiles received from manufactures such as Ceramiche Caesar to the location of Imported Ceramics’ customers.

94    Imported Ceramics had two business aspects, a retail aspect and a commercial aspect. The retail was directed to domestic and residential customers and the commercial was directed to commercial projects such as shopping centres, car parks and high rise developments. Since before 2000, Imported Ceramics had promoted and sold tiles manufactured by Ceramiche Caesar for both aspects. An example of a significant commercial project in which Imported Ceramics supplied Ceramiche Caesar’s tiles was the construction of the Rockingham Shopping Centre in Western Australia. This project was completed in around 1997 or 1998.

95    Imported Ceramics registered the domain name www.importedceramics.com.au in around 2003. Since then, it had published a website on that domain name to promote its tile products. Those products included ceramic products manufactured by Ceramiche Caesar. Mr Ryan annexed to his affidavit a bundle of screenshots from Imported Ceramics’ website. In that material Ceramiche Caesar was referred to as “Caesar” and its various tile products by reference to “Caesar”. For example, one tile product was referred to as “Caesar Feel”.

96    He said that since before 2000, Imported Ceramics in each year had received from Ceramiche Caesar promotional material in the form of merchandise, display stands, annual general catalogues, product specific catalogues and folders containing tile chips, product ranges and colours. It had distributed the product specific catalogues together with the folders to architects and designers. The annual general catalogues had been kept in Imported Ceramics’ showrooms and, since 2000, in its architectural library as reference material for the full range of Ceramiche Caesar’s tiles. The annual general catalogues had been made available for inspection by customers visiting the showroom in each year since before 2000.

97    Mr Ryan deposed that since before 2000, he had in each year observed the CÆSAR Device mark displayed on Ceramiche Caesar’s tiles and in the Ceramiche Caesar promotional materials that he had referred to. Sometimes, Mr Ryan deposed, the word CERAMICHE had been displayed adjacent to (immediately above) the trade mark. Nevertheless he had always recognised and understood the brand of Ceramiche Caesar’s tiles to be “Caesar”, not Ceramiche Caesar. In cross-examination, Mr Ryan could not recall having seen the CÆSAR Device mark without the word Ceramiche above the word CÆSAR. He added that generally what he always looked at or what he identified was the Caesar word. He agreed that about 99% of the time, in terms of promotional materials, the word “Ceramiche” had sat above the word “Caesar”. Mr Ryan accepted that the word “sometimes” which he had used in relation to the word “Ceramiche” would be more accurately expressed as “quite commonly”. He said that the word that was most pronounced was “Caesar”.

98    Mr Ryan deposed that, in each year since 1997, during his discussions with the clients of Imported Ceramics, he had always referred to Ceramiche Caesar’s tiles by the brand nameCaesar, notCeramiche Caesar. To his observation, the other staff at Imported Ceramics had done the same.

99    Mr Ryan deposed that the architectural library was established in 2000 when Imported Ceramics moved premises. Since then, the architectural library had been used as a promotional resource by Imported Ceramics. It was kept up to date with current copies of the Ceramiche Caesar annual general catalogues and sample tiles. The library was promoted to, and attracted, architects and interior designers of both commercial and domestic industries. Architects and designers could browse the open library but would typically be accompanied by one of Imported Ceramics sales representatives. Mr Ryan annexed to his affidavit copies of extracted pages of Ceramiche Caesar’s annual general catalogues for the years 2000 and 2001. The catalogues were kept in Imported Ceramics architectural library during the years when they were current.

100    Mr Ryan deposed that in each of the years 2000, 2001, 2002, 2003 and 2004 he attended the CERSAIE International Exhibition of Ceramic Tile and Bathroom Furnishings, which was held in Italy. CERSAIE was the most important international exhibition of Italian ceramic tile products. He observed that Ceramiche Caesar promoted its tile products at a trade stand at each of the CERSAIE exhibitions that he attended. At each of the above CERSAIE exhibitions, Mr Ryan observed that approximately 50 to 100 delegates from the leading tile distributors in Australia were also in attendance. The CÆSAR Device mark was displayed at the trade stand at the exhibitions he attended.

101    Mr Ryan deposed that one of the reasons he decided that Imported Ceramics should become an exclusive distributor of particular Ceramiche Caesar product ranges was because of his awareness and assessment in preceding years that Ceramiche Caesar had a full range of tiles of very good quality material that could be used in both commercial and domestic projects. Prior to 2001, the quality of Ceramiche Caesar’s tiles was well known by him and the tiling industry. He had regarded Ceramiche Caesar to be one of the leading tile manufacturers out of Italy since prior to 2000.

102    In cross-examination, Mr Ryan said that in promoting Ceramiche Caesar tile products to customers he would say “this is a tile from Caesar. It’s of Italian origin and it’s a very good quality, high-end type of material.” He said he had always called the company “Caesar”, shortening the name of Ceramiche Caesar.

103    Mr Ryan said he believed that the typical Australian would understand the word Caesar to also be a name for Julius Caesar or the emperors known as Caesar from ancient Italy. He also agreed that he believed that the name Caesar on its own, connoted the idea of strength and quality and fine, ancient things because of its association with Julius Caesar and Roman Caesars. He agreed that the name Caesar on its own was a particularly good name to use for the tiling products from Italy, given the connotations the name had of strength, quality and fine things. He agreed that Caesar was an attractive name but could not be 100% sure that a tiling manufacturer would be drawn to use such a name as Caesar as a brand for its business or its tiles because of the connotations of strength, quality and fine, ancient things. Mr Ryan agreed that it was unsurprising that a tiling company which was a tiling manufacturing company based in Italy would have a name such as Caesar in it.

104    In re-examination Mr Ryan said there was no tile company other than Ceramiche Caesar that manufactured tiles for distribution in Australia that had the name Caesar as a brand or company name.

105    On the subject of splashbacks, Mr Ryan agreed that a tiled splashback was a form of wall cladding. Where the tiled splashback was put on a gyprock wall, Mr Ryan agreed that he would still call that tiled splashback a wall cladding. He agreed that a gyprock sheet could be considered a wall if it was just sitting on a wooden frame, for example. If a gyprock sheet was covering the wall, Mr Ryan regarded that as a wall. He agreed that, in a kitchen, a splashback could be simply a wall cladding in a kitchen, even where the abutting benchtop had no sink or stove. In a bathroom, Mr Ryan accepted one could have a splashback to guard against splashing from a vanity or a sink. He would not typically describe as a tile a reconstituted quartz slab being used as a splashback.

106    Mr Ryan became aware that Caesarstone slabs could be used as a splashback when he saw it in some display homes maybe in the mid or late 2000s.

107    Mr Gian Malavasi, tile agent or representative, affirmed an affidavit dated 25 January 2017. He was a director of Essegi Tiles Pty Ltd (Essegi), a company that he owned and founded. He had held this position for around 10 years. Essegi acted as an agent in Australia for foreign tile manufacturers. Between 1996 and 2001, Mr Malavasi was the Australian and New Zealand agent for Ceramiche Caesar. During that period, he was engaged directly by Ceramiche Caesar to promote its tile products to the Australian and New Zealand market. He deposed that he assisted in establishing distributorship relationships between Ceramiche Caesar and Australian tile wholesalers across Australia. In the period between 1996 and 2001, Ceramiche Caesar had distributors in New South Wales, Victoria, Queensland, Western Australia and South Australia. It also had distributors in Auckland, New Zealand.

108    Mr Malavasi deposed that, as Ceramiche Caesar’s agent in Australia from 1996 to 2001, he met at least once every two to three months with each of the distributors of Ceramiche Caesar’s tile products to promote those products in Australia. During that period, he also met with Australian architects and designers who were referred to him by the distributors to promote Ceramiche Caesar’s tile products. At those meetings, he presented a range of Ceramiche Caesar’s tile products, answered technical questions, and described the uses, applications, finishes and technical advantages of the tile products with respect to the residential and commercial industries. He also assisted with the placement of orders to purchase Ceramiche Caesar’s tile products.

109    Mr Malavasi deposed that he brought with him to those meetings his personal copy of Ceramiche Caesar’s annual general catalogue (entitled ‘Catalogo Generale), one or two spare copies of the annual general catalogue, and about 10 to 15 copies of different product specific catalogues and other promotional material such as pens and notebooks. He provided copies of the annual general catalogue and product specific catalogues to the distributors, architects and designers that he met with.

110    He also took with him to those meetings samples of Ceramiche Caesar’s tile products for visual inspection. If he did not have a sample of the specific tile of interest to the distributor, architect or designer, he arranged for Ceramiche Caesar to deliver a sample to himself or to one of its Australian distributors directly. Once received, either he or the distributor would deliver or distribute the sample to the architect or designer.

111    Mr Malavasi deposed that the CÆSAR Device mark was stamped on the underside of each Ceramiche Caesar tile that he dealt with while he was Ceramiche Caesar’s Australian distributor. He could not recall whether the word “Ceramiche was also stamped onto the underside of Ceramiche Caesar’s tiles. It was his own practice, when promoting Ceramiche Caesar’s tile products to its Australian distributors, architects and designers, to refer to its tiles as “Caesar brand tiles. He referred to Ceramiche Caesar’s business as either “Caesar” or “Ceramiche Caesar.

112    Mr Malavasi deposed that products were supplied to Ceramiche Caesar’s Australian distributors by shipment from Italy. It was his usual practice to request that Ceramiche Caesar include in shipment containers to distributors in Australia: copies of annual general catalogues and product specific catalogues; samples of new products; promotional items for display in the distributor’s showroom, such as wooden panel boards displaying tile sample; and promotional items for use by the distributor, such as notebooks and pens.

113    Mr Malavasi deposed that in or around 1998 or 1999, Ceramiche Caesar, in partnership with its Australian distributors, hosted promotional events in New South Wales, Western Australia, Queensland and Victoria. Formal invitations to each event were distributed by Ceramiche Caesar based on lists of names of architects, builders and designers provided by each distributor. The events, which he attended and assisted in organising, were held at various hotels and convention or exhibition centres across Australia and he recalled that there were around 150 attendees in each State. Promotional material prepared by Ceramiche Caesar was imported to Australia specifically for the event in each State. That promotional material included display stands, annual general catalogues and product specific catalogues. He recalled that the promotional material was stamped or marked with the CÆSAR Device mark (with or without the word Ceramiche displayed immediately above the word Caesar).

114    Mr Malavasi expressed the opinions, based on his discussions with Ceramiche Caesar’s Australian distributors, together with Australian architects and designers, that Ceramiche Caesar’s tile products were well regarded in both the residential and commercial industries in the period between 1996 and 2001. He deposed that they continued to be well regarded in both the residential and commercial industries to this day.

115    To the best of his recollection, Mr Malavasi deposed, around 80% of Ceramiche Caesar’s tile products were used in commercial applications such as shopping centres and various McDonald’s stores across Australia between 1996 and 2001. In his opinion, the selection of Ceramiche Caesar’s tile products for these commercial applications occurred because of Ceramiche Caesar’s reputation for producing tile products that were heavy duty, of high quality, had various suitable technical advantages (such as anti-slip finishes) and a large range of products and colours.

116    In each year of his role as agent for Ceramiche Caesar from 1996 to 2001, Mr Malavasi attended the CERSAIE International Exhibition of Ceramic Tile and Bathroom Furnishings, held in Italy. He observed that Ceramiche Caesar had a stall at CERSAIE in each of those years and distributed from that stall annual general catalogues and product specific catalogues. He observed that Australian industry members (for example, the representatives of Parrella Tiles, Better Tiles, De Fazio Ceramics) were present at each CERSAIE Exhibition that he attended and visited Ceramiche Caesar’s stall. He discussed Ceramiche Caesar’s tile products with these Australian industry members and provided details of relevant Australian distributors of Ceramiche Caesar’s tile products.

117    In cross-examination, Mr Malavasi was asked whether he used the name Caesar rather than Ceramiche Caesar because, for his customers who did not have Italian heritage or did not speak Italian, he was of the view that the word Ceramiche had little meaning to them and instead Caesar did have a meaning. His answer was:

Well, Ceramiche is – in English, is very similar so when you mention Ceramiche Caesar, automatically, they know it is a ceramic.

118    Mr Malavasi agreed that the name Caesar would be understood by the Australians he dealt with to refer to Julius Caesar or the Caesar emperors from ancient Italy. He did not agree that the name Caesar connoted to him concepts of strength, quality and fine quality things. He said the name had nothing really to do with the quality or the strength or the beauty of the product itself. He presumed that the name Caesar was a particularly apt or good name to use for tiling products from Italy but said he did not know why the company called itself Caesar. He said he dealt in the past with tile merchants and not with the public so he did not know what the public considered about the name Caesar.

119    In relation to splashbacks, Mr Malavasi said that normally a splashback was described as small areas in a kitchen or laundry. He considered a tiled splashback to be a form of wall cladding. He said that a tiled splashback could be applied on many surfaces. He agreed that a splashback was still a wall cladding if it was applied to a gyprock sheet. He agreed that the gyprock sheet itself was also a form of wall cladding. He agreed that, theoretically, where there was a tiled splashback on a gyprock base there was a wall cladding on a wall cladding. In re-examination he explained his use of the word “theoretically” as follows:

We apply different type of – we – the builder or the tile-installer, the person that does installation – depends the surface they’re using, different type of adhesive, and they can actually install the tiles in that surface. The “theoretically” is particularly applying ceramic tile surface to another surface, but we cannot describe the second ceramic tile. Nothing more than ceramic tiles

120    I understood Mr Malavasi to say that the second surface was not wall cladding.

121    Mr Malavasi agreed that in a kitchen there could be a splashback even where the abutting benchtop had no sink or stove. He said that most of the time the word splashback was not used to describe the surface of a bathroom, which was described as bathroom wall tiles and the general description of the surface was a wall.

122    Mr Malavasi said he was not very familiar with reconstituted material, but presumed it could be called a tile as well, if it was is in a tile form. In 2000, a tile form between wall cupboards and benchtops was 600mm. Most of the builders suggested to use a 600mm tile or two 300mm tiles to fit the gap as a splashback.

123    Mr Malavasi agreed that the use of the Caesar logo without the word “Ceramiche” on it was very rare in promotional material.

124    The evidence of Ms Jacqueline Chelebian was in writing only. She was not required for cross-examination. She was a solicitor in the employ of Spruson & Ferguson Lawyers, the legal representatives of Ceramiche Caesar. She swore three affidavits.

125    In her first affidavit, sworn on 4 May 2016, Ms Chelebian deposed that on 15 March 2016, she accessed the website published at the www.caesarstone.com.au domain name. She annexed a screenshot of the content displayed on the FAQ section of the website on 15 March 2016. She also annexed a screenshot of the content displayed on the “Bathrooms section of the website on 15 March 2016. As to the former, it contained the FAQ “Can Caesarstone® be used as flooring?” As to the latter, it stated:

Perfect for Wet Areas

Caesarstone surfaces are ideal for wet areas as they are non-porous, durable, resistant to stains, scratches, common household chemicals, mould and mildew.

Caesarstone surfaces are not only perfect for bathroom wall panels but also vanities, bath surrounds, inset shelving, shower recesses, floor panels* and window sills. Caesarstone’s surfaces offer endless design possibilities to create your dream bathroom.

*Floor panel applications are excluded from Caesarstone’s 10 Year Limited Warranty

126    During her visit to the www.caesarstone.com.au website on 15 March 2016, she also downloaded a brochure from the website 10 Year Limited Warranty. Ms Chelebian annexed a copy of that brochure. Clause 3(iii) of the warranty set out in the brochure read: “the Warranty does not cover any defect in, or damage to, the Product which results from it being used for flooring or in any outdoor application (including swimming pools) or any other application involving exposure of the Slab to ultraviolet radiation, chemicals, flames or excessive heat”.

127    In respect of Ceramiche Caesar’s opposition to the Caesarstone Goods Word mark, Ms Chelebian annexed a copy of the application dated 2 June 2005 that Caesarstone filed with IP Australia; a copy of the Examiners Report dated 4 August 2005 that was issued by IP Australia; and a copy of a letter from Chrysiliou Law, the attorneys for Caesarstone, to IP Australia dated 16 March 2007.

128    On 4 May 2016, Ms Chelebian deposed that she conducted a number of online searches for Australian based businesses promoting, offering for sale and selling flooring products. In the process of conducting those searches, she located four businesses operating in Australia, which she listed.

129    In her second affidavit, dated 26 August 2016, Ms Chelebian said that Ceramiche Caesar had appealed, to the Singapore Court of Appeal, the decision of the High Court of the Republic of Singapore that was annexed to the affidavit of Andrew James Dixon sworn on 7 June 2016. She also annexed a copy of a decision of the Federal Court of Canada, together with the decision of the Trade Marks Opposition Board (TMOB) of Canada that was the subject of the Federal Court of Canada’s decision. It was her understanding that the Federal Court of Canada upheld the TMOB’s decision to refuse to allow Caesarstone to register the CAESARSTONE Device mark in respect of services related to floor coverings and stairs, but allowed the appeal in respect of certain other services related to wall cladding and walls.

130    Ms Chelebian deposed that Caesarstone filed Australian trade mark application No. 917822 for CAESAR MOSAIC in Class 20 on 26 June 2002 (Caesar Mosaic mark). She annexed a printout of the current particulars for that trade mark application, obtained from the Australian Trade Mark Offices online database. The Caesar Mosaic mark application was opposed by Ceramiche Caesar on 26 September 2003. On 8 March 2006, Caesarstone withdrew the Caesar Mosaic mark application. She annexed documents relating to that application.

131    Ms Chelebian deposed that on 8 August 2016 she conducted searches of the domain name www.caesarstone.com.au on the internet archive, WaybackMachine, situated at https://archive. org/web/ (WaybackMachine). She annexed a screenshot of the “Product Information” webpage maintained by the WaybackMachine archive of the Caesarstone Website for 19 August 2006. She annexed two brochures downloaded from that archive of the Caesarstone Website of the “Product Information” webpage for 19 August 2006, referred to as Limited Warranty and 2005 Caesarstone brochure. She annexed a bundle of screenshots of the FAQ webpage maintained by the WaybackMachine archive of the Caesarstone Website for 24 November 2010, 21 July 2011, 21 March 2012, 16 January 2013, 26 January 2014 and 10 February 2015, respectively.

132    Ms Chelebian deposed that on 11 August 2016 she conducted an online search on Google using the search terms “caesarstone stonemason australia tiling”. She located a number of businesses operating in Australia, which she listed.

133    Ms Chelebian deposed that she accessed the Caesarstone website on 11 August 2016. She searched to locate all Caesarstone showrooms located in ‘Sydney South, NSW’, which she chose at random. The listed Caesarstone showrooms included Harvey Norman Renovations, 84 O’Riordan Street, Alexandria, NSW. She accessed the website of Harvey Norman situated at www.harveynormanrenovations.com.au on the same date and annexed a bundle of screenshots of that website.

134    Ms Chelebian deposed that on 26 August 216 she conducted an online search on Google using the search terms “stonemason ceramic tile”. She located a number of businesses operating in Australia and annexed a bundle of printouts from their websites.

135    In her third affidavit, sworn on 23 January 2017, Ms Chelebian annexed documents relating to the Tile Today magazine, which stated on its website that it was circulated to importers, resellers and installers of ceramic tile located in all States and Territories. She annexed a copy of pamphlets entitled Media Kit 2016, Media Kit 2007 and Media Kit 2002 which set out the circulation data of Tile Today for those years. She also annexed a copy of a series of photographs taken of the Tile Today publications for the years 1997 to 2007. I accept Tile Today is a publication that has been circulated since 1993 to importers, resellers and installers of ceramic tiles across Australia.

Caesarstone’s evidence

136    Ms Tricia Lockart affirmed an affidavit dated 3 June 2016. Since September 2012 she had been a director at Carsille Pty Ltd. In 2001, she was employed as the Finance Manager at Tessera. In her role as Finance Manager, she was responsible for the full operations of the business, including growing the business in New South Wales and throughout Australia.

137    In about 2004, Ms Lockart was promoted to Chief Operating Officer of Carsilstone. Her responsibilities included ordering, importing, managing stock control and warehousing the Caesarstone slabs. In 2006, Caesarstone Australia was incorporated and, in her understanding, in 2008 purchased the assets of Tessera and Carsilstone. She was employed by Caesarstone Australia in 2008 and continued in her role as Chief Operating Officer.

138    Ms Lockart deposed that in 2001, the Caesarstone slabs were relatively new to the Australian marketplace. At the time, Carsilstone’s employees were educating the stone market in Australia about the qualities and various applications of the Caesarstone slabs. From speaking with stonemasons at the time, she was aware that many stonemasons were cautious about using the Caesarstone slabs and that their preference at the time was to use natural stones. In cross-examination, Ms Lockart said stonemasons were cautious at that time because of unfamiliarity with what they considered a man-made product. They felt that it was never going to take off because people would not like that product compared to the natural product like granite or marble. The focus of Tessera was to say that Caesarstone was an alternative to natural stone in that it provided different qualities - colour ranges, non-staining properties and with no need to seal the product.

139    Ms Lockart deposed that, in order to increase business and to promote the Caesarstone slabs, commencing in 2001 she would take direct enquiries from consumers regarding the purchase and installation of Caesarstone slabs for various applications. The consumers would contact her and provide her with a plan showing the proposed use of the slabs and she would cost the materials and the fabricator’s costs based on a price guide she had which detailed the prices of the slabs and the costs to fabricate and install them. At the time, Tessera had arrangements with various stonemasons whereby they would cut, fabricate and install Caesarstone slabs according to the quotes which she provided. If the quote was accepted, she would arrange for one of those stonemasons to cut, fabricate and install the Caesarstone slabs in accordance with the customer’s plan at the customer’s premises. She would also issue a purchase order to the stonemason for the work and arrange payment from the consumer for the materials and labour.

140    In cross-examination, Ms Lockart said that the quote she sent to the customer contained a single total price including the cost of the slab and the costs of the slab being cut and installed in the length and width dimensions that the consumer desired for the end use. She agreed that the company did that because the product it was selling in this kind of transaction was the benchtop. It was not the raw slab that the consumer was buying from Tessera, but the fabricated and installed benchtop. It was also to protect the wholesale price of the slabs. The company did not want it to be common knowledge to the general market at what price the company was selling the slabs to stonemasons, because it was rather irrelevant to them when they were only getting a finished product.

141    In cross-examination, Ms Lockart was asked about the Tessera showroom in about 2001. She agreed that raw slabs were not on display and that there were tiles on display in that showroom as well. There were quartz tiles in the kitchen area and, to her memory, stone slabs cut to size as the stair tread. There was also a garden outside, and the front of the building was covered in the stone slabs, fabricated on the wall, and around the edge of the stone garden. In re-examination, Ms Lockart said that the slabs were on walls and stairs in that showroom and were made of Caesarstone slabs and they were promoted as such in the showroom.

142    In cross-examination, Ms Lockart accepted that if an end user had asked Tessera in the early days to supply Caesarstone slabs, precut, into 60cm x by 60cm size pieces for use on a bathroom floor or wall, Tessera would have provided that end user with a quote for that installation and the end user could have accepted that purchase quotation.

143    Ms Lockart said that that way of doing business stopped well before Caesarstone Australia came on board to take over the business in Australia. Ms Lockart said this was to do with a warranty issue where the company was held liable even though it was not the fabricator of the slab and also as a wholesaler it was not meant to be selling directly to the public. By 2004, the practice of Tessera selling fabricated and installed product direct to the end user had ceased and that practice was never resumed either before June 2005 or before August 2007.

144    Ms Lockart deposed that in late 2001/2002 she was involved with the installation of the kitchen displays in the kitchen showroom at the Harvey Norman Renovations Centre in Auburn, New South Wales. Many of the kitchen displays in the kitchen showroom at that Harvey Norman Renovations Centre used Caesarstone slabs for benchtops and splashbacks. From her involvement with the installation of the kitchen displays in the kitchen showroom at that Harvey Norman Renovations Centre, she was also aware that Caesarstone slabs were used for flooring in most of the kitchen displays, as well as wall panelling between walkways. She arranged the supply of the Caesarstone slabs to a stonemason to be cut into large squares and used for flooring in most of the kitchen displays at that Harvey Norman Renovations Centre. The Caesarstone slabs were not laid as large slabs due to the level of the floor. She annexed to her affidavit a manual showing the fit outs for the kitchen displays at the Harvey Norman Renovations Centre as they existed in 2004. Some of the photographs in that manual showed the flooring of the kitchen displays, which depicted the Caesarstone slabs. The kitchen displays were changed over the years. Ms Lockart also annexed a photograph of a kitchen display at the Harvey Norman Renovations Centre, taken on 7 March 2006, showing the Caesarstone slabs, cut to size and installed as flooring.

145    In cross-examination Ms Lockart agreed that tiles had been displayed from time to time in that main showroom area over many years and it was a normal and fair use in the trade for Harvey Norman to have display kitchens that had on the ground tile products that it was selling and a Caesarstone benchtop positioned above those floor tiles. Visitors to the Harvey Norman Renovations Centre were able to purchase the Caesarstone benchtop by placing an order with the Harvey Norman sales representative. If the consumer placed an order for tiles with the Harvey Norman sales representative and if they were tiles that needed to be cut by a stonemason, the process would be the same.

146    Ms Lockart agreed that many stonemasons cut tiles and that was common. If the end user found the particular tile size on display to be attractive and it did not require further cutting or finishing, he or she placed the order with Harvey Norman, paid the deposit, and then a tiler arrived at their front door and installed the tiles. Whether that particular tiler, depending upon Harvey Normans arrangements, could be a stonemason would depend on the product that was going to be laid on the floor. In circumstances where stonemasons installed both fabricated benchtops on the one hand and tiles on the other, Ms Lockart agreed that it may be a stonemason who did the tiling work.

147    She accepted that Saba Bros Tiling was an example of a business that was both able to install with the stonemason hat on, on the one hand, and the tiling hat, on the other. The business was identified as a tiling business and an end user was quite likely more naturally to think of that firm as a tiler than a stonemason.

148    In cross-examination, Ms Lockart agreed that the focus of promotion of the new material in the period between 2001 and 2004 was benchtops and splashbacks. She said it was a whole kitchen application that they were looking to promote. It was the one-stop shop. Those two particular applications of installing a benchtop with a splashback if possible were Tessera’s predominant promotional activities in that period.

149    In cross-examination, Ms Lockart agreed that a raw Caesarstone slab before it had been fabricated by a stonemason was not yet a benchtop or a splashback or a floor or wall panel: it was not any other kind of flooring or walling surface.

150    In cross-examination, Ms Lockart accepted that Caesarstone was always marketed as a finished product so customers could relate to it. The product to be marketed under the Caesarstone trade mark was not the raw slabs but was the finished, fabricated and installed product. It was the actual material of the Caesarstone itself, the properties of it and the uses for it. Ms Lockart said that the company was trying to sell the benefits of Caesarstone over the natural product and the technical properties were definitely a large marketing benefit.

151    In cross-examination, Ms Lockart was taken to a photograph which she identified as an example of Caesarstone slabs that had been fabricated and installed as tiles.

152    Ms Lockart deposed that in late 2014, there was a renovation at the Harvey Norman Renovations Centre in Auburn which she arranged. During that renovation, she arranged for the Caesarstone slabs which had been laid on the floor for the kitchen display in 2001/2002 to be removed. The Caesarstone slabs were removed by Harvey Norman Commercial with jackhammers and were destroyed. There were also Caesarstone slabs used as wall panelling at that Harvey Norman Renovations Centre which were installed in 2002 and some of these were removed in 2014 as part of this renovation. She arranged for some of the Caesarstone which was installed as wall panelling at the Harvey Norman Renovations Centre to be removed and to be collected by N&F Arciuli Pty Ltd (Arciuli) in late 2014 as she wanted to re-use them.

153    Ms Lockart deposed that in about 2003, kitchen and bathroom displays were installed at the Harvey Norman Renovations Centre in South Oakleigh, Victoria. Some of those kitchen and bathroom displays were designed by Maria Talarico and they featured Caesarstone slabs as benchtops, splashbacks and vanities. Ms Lockart was not involved in the design or installation of those displays. She annexed to her affidavit kitchen and bathroom layouts with specifications and pictures showing the kitchen and bathroom displays at the Harvey Norman Renovations Centre in South Oakleigh.

154    Ms Lockart deposed that, in about 2004, she was involved with the installation of the kitchen displays in the kitchen showroom at the Harvey Norman Renovations Centre in Alexandria, New South Wales. Many of the kitchen displays in the kitchen showroom used Caesarstone slabs for benchtops and splashbacks. She annexed to her affidavit a manual showing the fit out of the kitchen displays at that Harvey Norman Renovations Centre at the time.

155    Ms Lockart deposed that the kitchen and bathroom displays at the Harvey Norman Renovation Centre in Auburn were in the main showroom area. The CAESARSTONE logo was also on display in the showroom. That area had high visibility as it was in the main showroom area and customers frequently walked through that area.

156    Ms Lockart deposed that there were currently approximately seven showroom consultants who provided advice to Harvey Norman customers on the Caesarstone slabs, its uses, benefits and applications. Those consultants were trained by the Harvey Norman Sales Manager and Caesarstone Australia also provided training to Harvey Norman consultants. From her roles at Carsilstone and Caesarstone Australia, Ms Lockart was aware that similar consultants providing this information had been at the Harvey Norman Renovation Centre in Auburn since at least 2002 and that they had received training regarding the Caesarstone slabs since at least 2002.

157    The Harvey Norman Renovation Centre in Auburn also had a Design Centre, which was depicted in photographs annexed to Ms Lockart’s affidavit. That area allowed customers to view samples of the products that could be specified in a new kitchen or bathroom, including Caesarstone slabs. There were currently approximately nine Harvey Norman designers that worked full time in that area of the showroom. There were currently approximately 15 customers per week that were shown through to the Design Centre to consult with a designer to view, amongst other products, Caesarstone slabs on display for the potential application of the product either in a kitchen or a bathroom. The designers worked with customers to advise on the Caesarstone slabs and the designers provided 3D modelling to show how the product would look. The Harvey Norman designers were trained by a Harvey Norman Sales Manager on the various uses, benefits and applications of the Caesarstone slabs. Caesarstone Australia also provided training to Harvey Norman designers. Ms Lockart was aware that similar designers providing these services had been at the Harvey Norman Renovation Centre in Auburn since at least 2002 and that they had received training regarding the Caesarstone slabs since at least 2002.

158    Ms Lockart deposed that Caesarstone slabs were also used at the Tessera and, post 2008, Caesarstone Australia’s offices located in Auburn which opened in 2001. The Caesarstone slabs were used for desk surfaces, outside wall panelling as well as flooring in the kitchen.

159    Ms Lockart deposed that in about 2004, Caesarstone slabs were used as flooring for the Caesarstone display at the DesignEx Trade Show in Sydney. The DesignEx Trade Show was Australias largest interiors, design and architecture show. She attended the DesignEx Trade Show as an observer in 2004 and she saw the Caesarstone slabs being used as flooring for the Caesarstone display at that time. She annexed to her affidavit photographs of, and architectural drawings for, the stand.

160    Ms Lockart deposed that she was also familiar with the Caesarstone slabs being used as wall cladding as the kitchen in her previous home featured a splashback, installed in approximately 2004/2005, made from Caesarstone slabs.

161    Ms Lockart deposed that from her various roles she was aware that prior to 2005 the Caesarstone slabs were used primarily for benchtops. However, she was also aware that prior to 2005 the Caesarstone slabs were used for floors and wall linings.

162    She deposed that when the Caesarstone slabs were first released into the Australian marketplace the product was not commonly used for walls. She believed this was due to the high cost of the Caesarstone slabs and the labour involved in installing them on a wall. The Caesarstone slabs were also very heavy and a number of people were required to install them on a wall.

163    Ms Lockart deposed that the typical process for ordering Caesarstone slabs was consumers placed an order for the product with a kitchen company, bathroom company, builder or architect, which then contacted a stonemason. The stonemason measured and costed the job and placed an order with Caesarstone Australia (and before that Tessera) for the slabs required to complete the job. The stonemason would collect the Caesarstone slabs from Caesarstone Australia (and before that Tessera) and then cut the slabs to the required dimensions. The stonemason would also carry out the installation of the Caesarstone slabs according to the customers specification.

164    During Ms Lockart’s employment with Tessera and Caesarstone Australia, stonemasons would not provide any specific details regarding the intended application of the Caesarstone slabs which they purchased. Stonemasons would simply order the required number of Caesarstone slabs to complete the job. Tessera and Caesarstone Australia would supply the Caesarstone slabs and they would also provide the stonemason with a Fabrication Manual so that the stonemason could install the Caesarstone slabs according to the guidelines contained in the manual. During her employment with Tessera and Caesarstone Australia, Ms Lockart was not aware of any records being kept regarding the various applications of the Caesarstone slabs which were ordered and delivered to stonemasons.

165    As the finance manager and later the Chief Operations Officer, Ms Lockart deposed that she had direct knowledge of stock levels and the movement of stock of the Caesarstone slabs and of the various markings which were applied to them. She was aware that Caesarstone Australia (and before that Tessera) would keep four months worth of stock of the Caesarstone slabs in its warehouse. Those companies would never return any old stock to Caesarstone as there was no risk of any deterioration of the Caesarstone slabs. Rather, if there was excess stock of a particular colour that had been discontinued, then Caesarstone Australia (and before that Tessera) would conduct “run out” discounts to move the stock.

166    Ms Lockart deposed that she was also aware that the backs of the Caesarstone slabs were stamped with the date of manufacture of the slab in Israel. Upon manufacture, the Caesarstone slabs were immediately shipped within approximately four weeks of their manufacture date. The slabs would then typically arrive in Australia eight weeks after the date of shipping (usually within six weeks), allowing for shipping delays. The colour code 3141 Osprey was the biggest selling colour of the Caesarstone product range. She estimated that the Caesarstone slabs with the colour code 3141 would have been sold within 60 to 90 days of their arriving in Australia. Caesarstone Australia (and before that Tessera) would always sell the oldest stock in the warehouse first and it would usually keep around 60 to 90 days’ worth of stock in the warehouse.

167    Ms Judith Anne Dwyer affirmed one affidavit dated 3 June 2016. She was an area manager employed by Caesarstone Australia. In 2002 she was employed by Tessera. At the time, Tessera and Carsilstone were jointly licensed by Caesarstone to import and distribute Caesarstone slabs in Australia. She deposed that the Caesarstone slabs were engineered quartz surface slabs that were 3060mm +/- 10mm long and 1440mm +/- 5mm wide and they came in three different thicknesses of 13mm, 20mm or 30mm +/- 1.5mm.

168    Ms Dwyer deposed that when she commenced employment with Tessera in 2002, she received induction training over a few days on the Caesarstone slabs and their various applications for use. Initially, the main applications of the Caesarstone slabs that she was trained to promote were for kitchen bench tops, vanities and laundry benches. In 2002, Caesarstone and its Australian distributors were not focussed on promoting the use of the Caesarstone slabs for other applications such as splashbacks or wall panelling in advertisements to the public or in brochures featuring the Caesarstone slabs. In recent years, she deposed, there had been more promotion of the Caesarstone slabs by Caesarstone and Caesarstone Australia for splashbacks and wall panelling through print advertisements and in brochures.

169    Ms Dwyer deposed that Caesarstone Australia (and Caesarstone’s former Australian distributors) was a wholesaler of the Caesarstone slabs. In the ordinary course, a stonemason ordered the Caesarstone slabs from Caesarstone Australia. The stonemason took delivery of the slabs and measured and cut the slabs to fit the required area and application. Caesarstone Australia did not sell the Caesarstone slabs to customers directly. The installation of the Caesarstone slabs was undertaken by a stonemason and completed in accordance with Caesarstone Australia’s technical manual. Caesarstone Australia (and Caesarstone’s former Australian distributors) was not generally advised of the application of the Caesarstone slabs when an order was placed. Those companies did not complete the installation of the slabs. Ms Dwyer was not aware of any records which Caesarstone Australia held which indicated how the Caesarstone slabs had been used by the end consumer.

170    Ms Dwyer deposed that in order to view the Caesarstone slabs, customers could either visit the Caesarstone Australia showrooms around Australia or view samples in a kitchen company showroom. Many architects and interior designers also had samples of the Caesarstone slabs to show clients.

171    Ms Dwyer deposed that she had not been responsible for dealing with warranty issues or customer complaints once the Caesarstone slabs had been installed. However, Caesarstone Australia (and Caesarstone’s former Australian distributors) had technical managers that were responsible for repairs relating to the Caesarstone slabs.

172    Ms Dwyer gave evidence that in her role as a merchandiser, she travelled to and visited kitchen companies throughout New South Wales. If the kitchen companies told her during these visits that they were building a new kitchen in their showroom then she suggested that they should consider using Caesarstone for the benchtop and splashback and that Caesarstone’s Australian distributor at the time may agree to provide the Caesarstone slabs for the kitchen display at no cost. If a kitchen company wanted to be provided with Caesarstone slabs at no cost to use for their displays then it needed to provide her with a plan for the proposed display. She would then complete a “Free Slab Requisition Form”.

173    In cross-examination Ms Dwyer agreed that if a customer went into a kitchen company store and selected a Caesarstone slab to use as a benchtop, the customer would place the order for that product with the representative of the kitchen company and the kitchen company would then arrange for a stonemason to attend the customer’s premises at a later time to install the benchtop slab. She agreed that kitchen companies and stonemasons were two different channels to the market for the Caesarstone slabs.

174    Ms Dwyer agreed that when she commenced employment with Tessera she was not trained to promote the Caesarstone slabs for flooring. Similarly, at that time she was not trained to promote the Caesarstone slabs for splashbacks or walling applications. She agreed that when she commenced in 2002 she was taught that the Caesarstone slabs were not warranted for flooring applications. She could not recall whether she was taught that Caesarstone slabs were not warranted for walling applications.

175    Ms Dwyer agreed that as at 2005 she knew that the Caesarstone products were not suitable for use as flooring because of the inability of the products to comply with slip resistance standards. She did not regard Caesarstone to be in the market for flooring, including bathroom flooring, between 2002 and 2009. It was also her evidence that the Caesarstone slabs were not in the market for bathroom walling between 2002 and 2009.

176    Ms Dwyer could not recall any promotion of Caesarstone slabs for splashbacks in the period between 2002 and 2009. Nevertheless, I note in this respect that documents annexed to Ms Dwyer’s affidavit show Caesarstone being requested for installation by a number of kitchen companies in their showrooms between late 2004 and March 2007, including as splashbacks. Ms Dwyer was not taken to these documents in cross-examination or in re-examination.

177    Ms Dwyer agreed that one of the reasons why there had been more promotion for Caesarstone products in recent years for walling applications was that a 13mm slab was released.

178    Ms Linda Hannah, the marketing communications manager at Caesarstone Australia, affirmed an affidavit dated 23 June 2016.

179    In October 2002, Ms Hannah was employed by Tessera as a sales representative. Tessera and Carsilstone were until 2008 jointly licensed by Caesarstone to import and distribute Caesarstone slabs in Australia. In her role as a sales representative, her duties included visiting and looking after kitchen companies, including showrooms, joiners and tile stores. She promoted the Caesarstone slabs and their uses to those customers. She also provided product samples of the Caesarstone slabs and brochures featuring the Caesarstone slabs to kitchen companies. Her duties also included looking after the visual merchandising of the Caesarstone slabs as well as increasing knowledge of the Caesarstone slabs and its various applications.

180    In performing her role as a sales representative, Ms Hannah was responsible for looking after sales to kitchen companies spanning a very large area of New South Wales including the New South Wales Northern Beaches area and the Western Sydney district.

181    Ms Hannah deposed that, in 2004, she changed roles in the Caesarstone business and she became responsible for looking after sales to New South Wales project home builders. She was still employed by Tessera. Her duties included introducing and educating project home builders in New South Wales about the Caesarstone slabs, the properties of the Caesarstone slabs and the various uses of them; and promoting the Caesarstone slabs so that the product was included as a standard inclusion in new home builds or included as an upgrade option.

182    In 2007, Ms Hannah became responsible for marketing the Caesarstone brand and the Caesarstone slabs throughout South East Asia. At that time, she was employed by Caesarstone Australia and she completed that job from Sydney. In particular, she was responsible for the marketing function in the China and Singapore offices of Caesarstone.

183    In 2008, Ms Hannah was promoted to Product Application Manager employed by Caesarstone Australia and she was responsible for supervising the testing of the Caesarstone slabs for use as flooring and splashbacks. She recalled that the business decided to undertake this testing as it wanted to increase sales of the Caesarstone slabs for use as flooring and splashbacks and it wanted to have empirical test results in order to be able to boost those sales. Her evidence was that the feasibility study showed that Caesarstone slabs could be used for splashbacks, however, as it was classified as a combustible product, installation of the Caesarstone slabs for that application needed to adhere to the Australian and New Zealand standards with regards to distances from gas burners or electric hotplates; and Caesarstone could be used for flooring, however, Caesarstone Australia did not warrant use of the Caesarstone slabs for that application. The study showed that Caesarstone slabs did not meet the slip resistance standards for commercial applications for flooring. Customers using the Caesarstone slabs for flooring applications would need to apply to the slab, or treat the slab with, a slip resistant coating such as the R10plus product. There were no slip resistance standards for residential floor applications at the time, however there were discussions held internally that these standards may be introduced.

184    In 2010, Ms Hannah was promoted to Marketing Communications Manager. Her current responsibilities and duties included: managing and updating the content on the Caesarstone website located at domain name http://caesarstone.com.au/; managing the digital strategy for the Caesarstone brand in Australia; overseeing the management of the various social media accounts for the Caesarstone brand in Australia including the Facebook, Twitter and Instagram accounts; managing and arranging the advertising and editorials regarding the Caesarstone brand in Australia; managing and arranging all public relations in relation to the Caesarstone brand in Australia; drafting and creating all marketing collateral for the Caesarstone brand in Australia in consultation with Andrew Dixon; and managing, drafting and arranging all marketing communications for the Caesarstone brand in Australia in consultation with Andrew Dixon.

185    Ms Hannah deposed that when she commenced her employment at Tessera in 2002, the Caesarstone slabs had only recently entered the Australian marketplace. At that time, there was no formal training given to employees of Tessera or Carsilstone regarding the various applications for the Caesarstone slabs. Following the commencement of her employment with Tessera, she developed a training manual and conducted training sessions for all new employees of Tessera on the Caesarstone slabs and their various applications using that training manual. She was not able to locate any copies of the training manual.

186    Ms Hannah deposed that from working in the Caesarstone business, she was aware of the various applications of the Caesarstone slabs and those applications include kitchen benchtops, bathroom vanities, flooring, furniture and splashbacks. She had always promoted the Caesarstone slabs for those various uses to customers. She had also always told customers that the Caesarstone slabs could be used in the same manner and for the same applications as one would use marble and any other natural stone surfaces. In fact, she had told customers that the Caesarstone slabs were stronger than natural stone products. The various applications of the Caesarstone slabs had been communicated by her to potential customers and current customers of the Caesarstone business since she commenced her employment with Tessera. At each of the training sessions which she conducted for all new staff members, she presented on those applications of the Caesarstone slabs.

187    Ms Hannah deposed that during her various roles over the years dealing with the Caesarstone slabs and before 2003, it was not uncommon for her to be asked by customers whether the Caesarstone slabs could be used for flooring. She said that she would always respond to these enquires by saying that the slabs could be used for flooring but that Caesarstone did not warrant their use for flooring. She believed stonemasons were aware that the Caesarstone slabs could be used for flooring because the slabs were promoted as an alternative to natural stone and could be used for any application for which natural stone could be used. Many stonemasons cut and installed the Caesarstone slabs for flooring.

188    Ms Hannah deposed that she was aware that Mr Kon Kalpou, a director of Carsilstone, used Caesarstone slabs on floors, staircases, baths and shower walls as well as for the baths and shower floors in an apartment and restaurant complex which he developed in Cronulla, New South Wales. She could not recall the date when this development was constructed.

189    Ms Hannah deposed that customers installing the Caesarstone slabs for use as a splashback had to adhere to the Australian and New Zealand standards for installation. If the Caesarstone slabs were installed for a splashback and if they were not installed in accordance with those standards then the warranty offered by Caesarstone Australia and Caesarstone’s former Australian distributors became void, subject to warranties that were provided for by statute.

190    Ms Hannah deposed that it was possible that consumers had used Caesarstone slabs for flooring and wall cladding, however, Caesarstone Australia had no records regarding the various applications of the Caesarstone slabs which were purchased from Caesarstone Australia or Caesarstone’s former Australian distributors. This was because the Caesarstone slabs were purchased by stonemasons on behalf of their customers and the stonemasons did not disclose the way in which the slabs were to be installed.

191    Ms Hannah deposed that it almost invariably became the case that, when a customer decided that they wanted to use Caesarstone slabs for a project, the customer (or their architect, kitchen company or the like) must first engage a stonemason. The stonemason would determine the quantity of slabs needed for the job and the stonemason would order the slabs from Caesarstone Australia. The stonemason did not disclose the use of the Caesarstone slabs when an order was placed. The stonemason would then cut, measure and fit the Caesarstone slabs as required.

192    Ms Hannah deposed that, in her opinion, based on her experience, Caesarstone slabs were more commonly used for benchtops and splashbacks as compared to flooring given the expense of using Caesarstone slabs for floors. This expense was due to the following: Caesarstone slabs was generally more expensive than ceramic tiles which were commonly used for hard or stone like flooring; floors were commonly a large surface area (compared to a benchtop or splashback for which Caesarstone slabs were used); and Caesarstone slabs needed to be cut by a stonemason and they needed to be cut off site which was more costly than typical ceramic tiles which, where necessary, could be cut on site.

193    Ms Hannah deposed that she was aware that Caesarstone slabs had been used for the following: on the staircase at the Harvey Norman Renovation Centre at Auburn; and at the China Doll restaurant in Woolloomooloo in New South Wales. She could not recall the dates of either installation.

194    Ms Hannah deposed that in 2004 Caesarstone had a display at the DesignEx exhibition which was held in Darling Harbour, in Sydney from 22 to 24 April 2004. She attended the exhibition. Caesarstone slabs were used on the floors at the Caesarstone Australia display at that exhibition. Ms Hannah said that the purpose of the stand at the exhibition was to promote the Caesarstone brand and Caesarstone slabs to the building industry. The target audience for the exhibition were architects and interior designers. The exhibition was held over a weekend and it was open to the public on the Saturday of the exhibition. While at the Caesarstone Australia display, Ms Hannah said she spoke with various persons who appeared to be or introduced themselves as architects or interior designers, as well as potential consumers, about the Caesarstone slabs and the various applications for the Caesarstone slabs, how the slabs were made and the various colour ranges. In particular, she deposed, she would invariably tell each of those persons that the Caesarstone slabs could be used for kitchen benchtops, splashbacks, flooring and wall cladding.

195    Ms Hannah said that in or about 2001/2002, Carsilstone imported and sold Caesarstone branded quartz tiles. This was a limited run product line. The product became unavailable in about 2005/2006. Ms Hannah deposed that the Caesarstone tiles did not come in large slabs like the reconstituted stone slabs which had been sold by Caesarstone Australia and Caesarstone’s former Australian distributors in Australia for various applications. The Caesarstone tiles were not cut from the Caesarstone reconstituted stone slabs and they were manufactured according to a different process. The “tile products included tile mosaics, which were small tiles that were produced on the back of netting and which were installed for use as splashbacks and for other wall applications. Other than that product line, Caesarstone Australia and Caesarstone’s former Australian distributors had always sold its products in Australia in the form of the large slabs and not as tiles.

196    Ms Hannah deposed that in 2004, when she was responsible for looking after sales to New South Wales project home builders, she would visit project home builders and display home centres in New South Wales on a regular basis. During those visits, she would enquire with the relevant project home builder whether there were any opportunities to install the Caesarstone slabs in their displays, usually as benchtops and splashbacks. In most cases, she would offer the Caesarstone slabs free of charge, noting that the project home builder would need to engage their own stonemason to measure, fabricate and install the slabs.

197    In cross-examination, Ms Hannah agreed that the reason she promoted the Caesarstone slabs to tile stores was that they were one channel to market for distributing the Caesarstone slabs between October 2002 and October 2004.

198    Ms Hannah accepted that if an end user was to visit a showroom such as Adelaide Marble and wished to purchase a Caesarstone benchtop, he or she would usually see both the Caesarstone benchtop and tiles on display.

199    She said most stonemasons offered stone and tiles as well or they cut the slabs into tiles a lot of times. So they would have the large format slab, cut it into tiles and put it on the floor so the end user could choose whatever size they wanted. A showroom such as Adelaide Marble would be like a one-stop shop where you could get slabs or you could choose tiles rather than slabs only, rather than having to go to an individual tile shop to purchase a tile.

200    Ms Hannah was familiar with businesses where an end user could place a single order with the sales representative for both a Caesarstone benchtop and for tiles. She said most stonemasons would do that. The end user would simply deal with the sales representative and it would not be necessary for the end user to deal personally with either the tiler or the stonemason. A stonemason would turn up at the door to do the benchtop and a tiler to do the flooring.

201    Ms Hannah accepted it would be very easy for people to be confused about whether the tradesman who arrived at the door was a stonemason on the one hand or a tiler on the other and that consumers who had not dealt with a stone company before may not appreciate whether there was a distinction between somebody who was a stonemason on the one hand and a tiler on the other. She accepted that stonemasons also install tiles.

202    Ms Hannah thought porcelain and ceramic were two different materials with stonemasons doing porcelain tiles but tile shops doing ceramic. She accepted that if porcelain stoneware was a type of ceramic and a consumer was looking at a website and saw porcelain and natural stone, there was a possibility that the consumer could be confused about whether or not that was porcelain stoneware ceramic tiles.

203    Ms Hannah agreed that benchtops and splashbacks went hand in hand and the marketing objective was to sell a splashback ideally each time a benchtop was sold by the company. The majority of splashback sales were made together with a benchtop. It was rare for consumers who bought splashbacks not to have bought a Caesarstone slab for use as a benchtop together with that splashback.

204    Ms Hannah said that a splashback was a specialty form of wall cladding, and that underneath the splashback was wall cladding.

205    A Caesarstone kitchen splashback technical and design guide of 2015 contained the following:

We recommend the use of CaesarStone neutral cure flexible silicone for bonding the splashback to the wall cladding and CaesarStone neutral cure coloured silicone for sealing the joins.

206    Ms Hannah agreed that the Caesarstone slabs had not been promoted for splashbacks before 2008 and, similarly, prior to 2008, Caesarstone slabs had not been promoted for flooring. However, Ms Hannah’s evidence was that Caesarstone always sold the slabs for those uses: she told customers and prospective customers that Caesarstone slabs could be used as a substitute for natural stone surfaces. Ms Hannah agreed, however, that for 2008 there were no advertisements, brochures or publications that she was aware of promoting the Caesarstone slabs for flooring or for splashbacks or walling applications.

207    In Caesarstone’s fabrication manual effective in May 2005, it was stated under the heading “Fact Sheet”:

If using CaesarStone® as a splashback/wall lining you must follow the appropriate Australian Standards with respect to clearances, especially behind cooktops.

CaesarStone® is not suitable for exterior use, flooring or any areas that are exposed to UV radiation or excessive heat (eg. Fireplace surrounds).

208    Ms Hannah agreed that as at 2005, 2007 and 2017, it was very common in the trade in stone tiles to use the word “stone” as part of the trade mark and branding. Very many of the companies used “stone” in that way.

209    Turning to the question of dimensions, Ms Hannah accepted that material that measured 1.2m x 1.2m was appropriately described as a tile. Caesarstone currently had a 13mm thickness offering.

210    By reference to a 2017 Caesarstone document entitled “Bathroom Surfaces”, Ms Hannah accepted that she was intending to communicate the possibility of cutting the slabs into smaller sizes than 1m x 3m and that the sizes the slabs could be cut into would include the size of tiles. She agreed that the 13mm range was released in part because it was desirable to have a thinner slab than the existing 20mm and 30mm slabs for flooring and walling applications. The document also contained the following:

Installation of Caesarstone® floor and wall tiles should always be conducted in accordance with all relevant Australian building codes, regulations and standards by qualified trade professionals.

211    Ms Hannah agreed that bathroom designers, who obtained this brochure and handed it to potential customers, would also regard it as an appropriate and natural use of the English language to describe the floor and wall panels as tiles. For large format panels Ms Hannah accepted that you could call them tiles as well, or large format tiles. She agreed that “slab” was not an attractive word to use when marketing the Caesarstone products. Ms Hannah agreed that in the case of a flooring offering, a more attractive label for the market was a floor panel, as one example and a tile as another example and that those two applied just as equally to wall panels.

212    Ms Hannah was taken to the FAQ section of Caesarstone’s website and agreed that as at November 2010 and February 2015 the answer to the question “Can CaesarStone be used as flooring?” was “No. Whilst some customers have opted to use Caesarstone as flooring, this type of application is not covered by the Caesarstone 10 Year Limited Warranty.” and that this was communicating to consumers that the Caesarstone slabs were not suitable for use as flooring. When she saw the statement in that period, she regarded it as accurate. The equivalent page as at 2017 read:

Can Caesarstone® be used as flooring?

Caesarstone® can be used for flooring, however this type of application is not covered by the Caesarstone® 10 year Limited Warranty.

Ms Hannah accepted that the average consumer could read into that statement the meaning that Caesarstone did not recommend that use.

213    Mr Andrew James Dixon had been the General Manager, Marketing and Strategic Development of Caesarstone Australia since 1 April 2012. He affirmed two affidavits in the proceeding dated 7 June 2016 and 1 February 2017. He said that in his role he was responsible for managing all marketing activities for Caesarstone Australia in Australia. He also had strategic input into the major sales decisions of Caesarstone Australia. He said he was familiar with all aspects of Caesarstone Australia’s business.

214    In August 2004, Mr Dixon was employed by Carsilstone as the sales and marketing manager. His main responsibilities included: drafting all marketing materials relevant to the Australian market; assessing the overall stone surfaces market environment and leading the development of new products and new colours for the Australian market; overseeing and managing sales including profitability; managing the three State managers in New South Wales, Victoria and Queensland; managing the Caesarstone distributors in Western Australia and South Australia; and managing the Caesarstone distributor in New Zealand.

215    Mr Dixon said he was aware that the name CAESARSTONE was invented and adopted by Caesarstone in 1987 to reflect the company’s origins near the ancient Roman city of Caesarea, in Israel and that the use of the word STONE within the CAESARSTONE trade mark was selected to evoke the image of stonemasonry of a venerable, age-old heritage. In cross-examination Mr Dixon accepted that he believed Caesarstone adopted the word trade mark “Caesarstone” in order to convey some kind of connection with the city of Caesarea, but he also accepted that Caesarstone did not adopt the trade mark “Caesareastone” but Caesarstone which, he accepted, was a different trade mark. He accepted that he was familiar with the meaning of “Caesar” to mean Julius Caesar and any of the Roman emperors from Augustus to Hadrian, the title later being applied to the heir presumptive. Mr Dixon accepted that the major reason why the trade mark “Caesarstone” was adopted was to convey to the marketplace the idea of the Roman Caesars, bearing in mind that Caesarea itself was named after Caesar Augustus. Mr Dixon was not himself involved in the adoption of the trade mark “CaesarStone” in 1987. He did not state in his affidavit that the trade mark “Caesarstone” was adopted for the purpose of identifying a new type of stone not previously in existence. Mr Dixon was shown two pages from the September/October 2016 edition of Australian Vogue Living and accepted that Caesarstone’s marketing objectives were advanced by a connection between the trade mark “Caesarstone”, which conveyed the idea of the Roman Caesars, and the Roman Colosseum which was connected with that idea.

216    Mr Dixon viewed the word “CaesarStone” as one word because there was no gap between the word “Caesar” and the word “Stone”, but accepted that viewing the Caesarstone trade mark as two words was a reasonable interpretation of the representation of the “CaesarStone” trade mark in an undated document issued prior to 2004. He deposed that he was aware that: the swirl at the start of the CAESARSTONE Device mark, being the deep orange colour of the device, coupled with its smooth curves and strokes, was chosen to add the ideas of prestige, class and refinement in line with stonemasonry images; and the swirl design at the start of the CAESARSTONE Device mark was an evolution of the previous logo of Caesarstone “which contained an iconic Roman column.”

217    In cross-examination, Mr Dixon accepted that columns of that kind were a feature of the period of Caesar Augustus and of the Roman Caesars generally and the reason why Caesarstone had depicted a Roman column was because it wanted to reinforce that the idea underpinning the “Caesarstone” trade mark was the Roman Caesars and where the company came from, being Caesarea. He accepted that Roman columns were not only used in Caesarea but were a general feature of the period of the Roman Caesars. He accepted that the average Australian seeing the representation of the column would be more likely to recognise it as invoking a connection with the Roman Caesars generally rather than Caesarea specifically. Mr Dixon agreed that the circular device element to the left of the word Caesarstone in the CAESARSTONE Device mark was essentially just a device with no meaning.

218    Mr Dixon deposed that since 1987, the Caesarstone business being carried out by Caesarstone, its distributors and subsidiaries had expanded, with the Caesarstone slabs now being sold in more than 50 countries around the world; and Caesarstone had subsidiaries in Israel, Australia, the USA, Canada and South East Asia and it also had distributors in South America, Europe, the Middle East and Africa.

219    Caesarstone had distributed through distributors, including Caesarstone Australia, the Caesarstone slabs in Australia since approximately 1998; and Caesarstone was first distributed through a business owned and operated by Peter Voltz. In 2003, Caesarstone granted Tessera an exclusive distributorship allowing it to import and distribute Caesarstone slabs in Australia. In 2004, Tessera granted a franchise to Carsilstone to market Caesarstone slabs and Caesarstone allowed Tessera to sub-licence to Carsilstone the right to use the name Caesarstone to market the Caesarstone slabs.

220    When he began his employment with Carsilstone, Mr Dixon deposed, Caesarstone slabs were being distributed across Australia. Carsilstone and Tessera distributed the Caesarstone slabs directly to customers in New South Wales, Victoria and Queensland and they maintained a warehouse in each of these States. Their customers included kitchen companies, cabinet makers, architects (for either residential or commercial developments), interior designers, new home builders, and bathroom product suppliers. Carsilstone and Tessera also had a showroom in each of these States where samples of the Caesarstone were on display. In Western Australia and South Australia, the Caesarstone was distributed through independent distributors.

221    Mr Dixon’s understanding was that Caesarstone Australia was incorporated on 19 September 2006, and on 1 April 2008, Caesarstone Australia purchased the assets of Tessera and Carsilstone. Since that time, Caesarstone Australia had been responsible for importing, marketing and distributing the Caesarstone slabs and providing related information and support services in Australia.

222    Since at least 2004, Mr Dixon deposed, the customers of Caesarstone Australia (and Caesarstone’s former distributors in Australia) of the Caesarstone slabs in Australia had been and still were kitchen companies, cabinet makers, architects (for either residential or commercial developments), interior designers, new home builders, and bathroom product suppliers. Each of these customers specified the use of the Caesarstone slabs for use in both residential and commercial buildings. The customers had been and still included stonemasons. Caesarstone Australia currently had approximately 20,000 customers in Australia (which included 750 stonemasons). The Caesarstone slabs were supplied through stonemasons, who were responsible for measuring, fabricating and then installing the Caesarstone slabs in both residential and commercial premises across a range of different applications including benchtops, splashbacks, table tops, commercial counters, wall panelling, and flooring, amongst other things. He understood that the types of the Caesarstone slabs in Australia were the same in 2001.

223    In cross-examination, Mr Dixon accepted that an alternative legitimate way for companies to distribute quartz slabs, similar in physical dimensions and properties to the Caesarstone slabs, was directly to the customer in the way that Tessera did in the early days.

224    Since at least 2004, Mr Dixon deposed, Caesarstone Australia (and Caesarstone’s former distributors in Australia) had marketed, and still marketed directly to consumers in New South Wales, Victoria, Queensland, South Australia, Tasmania, Western Australia, the Australian Capital Territory and the Northern Territory in the following ways: via print advertisement, and promotional activities, in relevant residential and commercial housing and lifestyle magazines; in various forms of online marketing; in proactive social media activity; by way of electronic direct mails which included both business to business and business to customer; through the Caesarstone Australia website; participating in local exhibitions and trade shows; and by issuing press releases to magazines and online sites to gain free editorial. He understood that many of those marketing efforts were also employed in 2001.

225    Mr Dixon listed Caesarstone Australia’s showrooms and warehouses and deposed that the showrooms could be visited by both its customers including kitchen companies, cabinet makers, architects, interior designers, new home builders, and bathroom product suppliers as well as individual consumers. The predominant visitors to the Caesarstone showrooms had been and still were individual consumers.

226    In cross-examination, Mr Dixon agreed that quite frequently kitchen companies had showrooms that featured both tiles on the one hand and Caesarstone bench tops on the other hand. He agreed that for other businesses selling flooring, the kitchen companies were an attractive place to market and sell their products and that same trade channel was a channel through which Caesarstone slabs were marketed and sold.

227    In cross-examination, Mr Dixon accepted that there were tile showrooms across Australia that showed and displayed Caesarstone samples. He said:It’s part of the way we take our product to market.” The tile companies requested those samples be placed in tile showrooms because tile shops were a key decision point for a consumer who had been to a kitchen showroom and looked at different benchtop options and wanted to then make the right selection of tile colour for a splashback or for a flooring colour. It was very convenient for the consumer and also advantageous to the tile company to actually have samples of the Caesarstone product in that location so the consumer could look at a Caesarstone benchtop colour and also decide on the splashback or floor tile colour.

228    In cross-examination, Mr Dixon said he was not familiar with any location where the consumer could place an order for a Caesarstone slab with the sales representative at the tile premises, unless the tile showroom was actually part of a stonemason’s business, that business also selling fully fabricated benchtops whether of quartz, granite or marble, at the same location. He agreed it was definitely possible that such a business could take the order and then itself engage a stonemason to fabricate and install the product. Mr Dixon said that a sample was typically 100mm x 100mm or 250mm x 125mm as indicative of the colour and there would also be a brochure depicting the Caesarstone slabs as they appeared after fabrication and installation.

229    Mr Dixon deposed that prior to 2004, the Caesarstone slabs came in 2 sizes in Australia being: 3080mm +/- 10mm long and 1340mm +/- 5mm wide; and 3060mm +/- 10mm long and 1440mm +/- 5mm wide. There were two different thicknesses being 20mm or 30mm +/- 1.5mm. Since 2004, Caesarstone Australia and Caesarstone’s former Australian distributors had only supplied the Caesarstone in one size, being 3060mm +/- 10mm long and 1440mm +/- 5mm wide. However, the Caesarstone came in three different thicknesses being 13mm, 20mm or 30mm +/- 1.5mm. He deposed that 90-95% of the Caesarstone sold in Australia was of the 20mm thickness. The Caesarstone slabs weighed approximately 140kg (for 13mm), 220kg (for 20mm) and 330kg (for 30mm).

230    The underside of all Caesarstone slabs were, and had been since 1987, marked with: the CAESARSTONE mark; the slab ID; the inspection date; the batch number; the colour code; and the finish type.

231    Due to their size and weight, the Caesarstone slabs had to be lifted by a forklift, overhead crane or other suitable lifting device, and had to be transported in a suitable manner.

232    Mr Dixon deposed that the Caesarstone slabs were not ready for installation upon purchase, but instead needed to be individually cut to size, finished and then installed by a stonemason. Caesarstone Australia and Caesarstone’s former Australian distributors had always supplied and still did supply the Caesarstone slabs to stonemasons for fabrication.

233    The stonemason would use fabrication machinery, including stone cutting and polishing equipment, to cut the Caesarstone into the required panel size(s), attend to additional fabrication of the edges, polish the piece to produce a final product and then install it for the customer. Only a fabrication facility with stone cutting and polishing equipment could transform the Caesarstone slabs into smaller panels that were ready for installation. Caesarstone Australia and Caesarstone’s former Australian distributors had always recommended and still recommended that Caesarstone slabs not be cut on site.

234    Mr Dixon annexed to his affidavit a range of fabrication and installation manuals with the earliest document dating from October 2002. Caesarstone Australia and Caesarstone’s former Australian distributors had required and still required that all stonemasons signed and acknowledged that they had read the fabrication manual before a customer account would be set up and before the Caesarstone slabs would be made ready for collection or delivered to a stonemason.

235    Mr Dixon deposed that Caesarstone Australia and Caesarstone’s former Australian distributors had offered and still offered technical support services to stonemasons. For example, stonemasons often consulted with Caesarstone Australia regarding product fabrication and installation. Caesarstone Australia and Caesarstone’s former Australian distributors had fielded and still did field enquiries from architects and designers about the possible applications of the Caesarstone and whether the product was warranted for certain applications.

236    Mr Dixon deposed that Caesarstone Australia and Caesarstone’s former Australian distributors had procured flooring slip resistance tests, stain tests and fire tests from CSIRO. He annexed copies of a selection of those reports issued by CSIRO, dated between 2005 and 2010. These test results formed part of the technical information made available to customers and stonemasons.

237    Caesarstone Australia, and Caesarstone’s former Australian distributors, was and remained a wholesaler and did not generally sell the Caesarstone slabs directly to individual consumers but to stonemasons. They did not know the ultimate application of the Caesarstone slabs when they were purchased and could not control the applications that the slabs were used for once sold and collected. However, Mr Dixon deposed that they had had and still had a sales team which promoted the Caesarstone slabs and educated purchasers such as kitchen companies, cabinet makers, architects, interior designers, new home builders, and bathroom product suppliers as well as individual consumers regarding the various uses of the Caesarstone slabs.

238    Since 2004 when Mr Dixon commenced working to promote and sell the Caesarstone slabs, he and his colleagues had promoted the Caesarstone slabs for the following uses: kitchen benchtops; splashbacks; table tops; flooring; counters in various commercial applications; wall panelling; and bathroom vanities. He understood that the Caesarstone slabs had been promoted for those uses since at least 2001.

239    Mr Dixon agreed, in cross-examination, that the Fabrication Manual effective in May 2005 did not include installation instructions for wall applications (leaving aside splashbacks) or for flooring. He accepted that, as at May 2005, the Caesarstone limited warranty did not apply to flooring or wall applications other than splashbacks, there being no guidance in the Fabrication Manual about the installation of those applications. He agreed that the Fabrication Manual effective in May 2005 included a statement that the Caesarstone slabs were not suitable for use as flooring and confirmed that that statement was referring to both interior and exterior flooring.

240    In cross-examination, Mr Dixon said that Caesarstone marketed slabs directly to consumers through various forms of advertising, including brochures. He accepted that this was an important form of communication for Caesarstone and that it was so important that a person of his very high level was involved hands-on in drafting the contents of the documents. He agreed that probably the number one objective in Caesarstone’s marketing department was to educate the public about what the Caesarstone slabs were.

241    Mr Dixon accepted that a brochure entitled Bathroom Surfaces, a 2017 revision of an earlier version, was an example of Caesarstone promoting the Caesarstone slabs after their fabrication and installation and doing so under the Caesarstone trade mark. The brochure depicted Caesarstone slabs after they had been fabricated and installed. Mr Dixon agreed that he wrote the following paragraph:

Installation of Caesarstone® floor and wall tiles should always be conducted in accordance with all relevant Australian building codes, regulations and standards by qualified trade professionals.

and agreed that it was a natural and ordinary use of the English language to describe the product offerings in the pictures in the brochure as floor and wall tiles. He agreed that in order to promote the floor and wall panels he regarded it as an entirely natural and ordinary use of the English language to describe that product as floor and wall tiles.

242    Mr Dixon agreed that anyone seeing the kitchen display installed in the Harvey Norman Renovations Centre in Auburn in about 2006 would understand that the flooring shown was in the nature of a tile. The photograph was of a kitchen display at the Harvey Norman Renovations Centre in Auburn taken on 7 March 2006 and showing the Caesarstone slabs, cut to size and installed as flooring.

243    Mr Dixon deposed that the qualities of the Caesarstone slabs included: providing superior strength and flexibility; being durable and easy to work with; having high heat resistance; being highly scratch resistant; being resistant to chipping and cracking; being impervious to stains; being resistant to many chemicals, acids and solvents; being immune to freezing and thawing; being mould and mildew resistant; being bacteria free; and offering low maintenance. Those features made the Caesarstone slabs suitable for a range of applications.

244    He understood that the most common applications of the Caesarstone slabs were kitchen countertops, bathroom countertops and splashback surfaces (which was a wall panel application). Mr Dixon said in cross-examination that a splashback was a small wall panel and it went hand in hand with kitchen benchtops, which was the primary focus for the sales development.

245    He was also aware that the Caesarstone slabs could be and had been used for a broad range of applications, including flooring and wall cladding. He understood that Caesarstone had been used for these various applications since at least 2001. He annexed a Caesarstone 2005 brochure which stated:

Caesarstone®. Great bench tops and so much moreCaesarstone®’s unique blend of aesthetic and functional qualities make it the perfect choice for bench tops, table tops, bathroom vanities and wall linings. Caesarstone® can be used for splashbacks in accordance to the relevant Australian Standards.

246    Mr Dixon referred to Caesarstone’s Australian distributors presenting at the McDonald’s conference held in Sydney in November 2004 at the Sydney Exhibition Centre. At the conference, Caesarstone’s Australian distributors at the time had on display benchtops and cafe table tops which were manufactured using Caesarstone slabs. Mr Dixon deposed that Caesarstone’s Australian distributors at the time presented at the McDonalds Design Expo in March 2005. That expo was attended by McDonald’s Australian franchisees.

247    Mr Dixon deposed that in about August 2005, Caesarstone slabs were used extensively for a residential apartment and restaurant development at Cronulla in New South Wales. That site was developed by a director of Carsilstone. The Caesarstone slabs were used for floors and walls in the apartments as well as for stairs on a circular staircase.

248    Mr Dixon annexed to his second affidavit, affirmed 1 February 2017, a document created in 2005 detailing the various uses at the Cronulla residential and restaurant development of the Caesarstone slabs which was inadvertently omitted from his first affidavit. That document stated:

The beauty of natural materials were the corner stone of the design. Floors of limestone walls and cupboards paneled in Australian Silver Ash, kitchens and bathrooms detailed in white CaesarStone all treated with stainless steel hardware. The interior and exterior colour is white allowing for unity in the overall design concept.

249    He deposed that the photographs, which he had annexed to his earlier affidavit, showed the Caesarstone slabs being used for wall and flooring applications.

250    Mr Dixon deposed that he understood that Caesarstone Australia and Caesarstone’s former Australian distributors had always been a wholesaler of the Caesarstone slabs; and in 2001, the Caesarstone slabs had only just recently been released into the marketplace and Caesarstone’s market share in Australia was relatively small. For that reason, Mr Dixon said, when the Caesarstone slabs were initially introduced to the market, employees of Caesarstone’s former Australian distributors provided quotes for the purchase, fabrication and installation of the Caesarstone slabs direct to consumers in order to increase sales.

251    Mr Dixon located and annexed copies of quotations for Caesarstone slabs for benchtops, splashbacks, bathroom steps and bathroom flooring dating from at least 2001.

252    In cross-examination, Mr Dixon was taken to the 2008 Splashback Feasibility study and agreed that splashback applications for Caesarstone had not been actively marketed by the company at that time. He agreed that it was the right decision not to actively market Caesarstone for splashbacks prior to the study taking place and for the business to really understand what the requirements of the relevant standard were so as to provide some recommendations in a document the business could share with kitchen companies and stonemasons, and then consumers, to make them aware of the correct use of the product behind a gas hotplate. It was a matter of minimum distance requirements per one of the Australian standards. There had been a serious concern using Caesarstone slabs as a splashback behind a gas cooktop, as opposed to an electric cooktop.

253    Mr Dixon was taken in cross-examination to the flooring study done in 2008 and agreed that any promotion in the case of flooring prior to that study was significantly less than for splashbacks. For example, before that study Caesarstone Australia did not know that if an anti-slip treatment was used then it would be possible to comply with the slip resistance standards for commercial premises.

254    As far as Mr Dixon was aware, Caesarstone and its Australian distributors had never produced a fabrication and installation manual for Australia which detailed instructions for the fabrication and installation of the Caesarstone slabs for flooring before 2013. While that meant that the 10 year limited warranty had not and did not apply when the Caesarstone slabs were used for flooring, he deposed that the Caesarstone slabs had been used for various flooring applications and employees had promoted their use for flooring and had told potential customers that the application required a special adhesive.

255    He deposed that prior to 17 May 2016, the FAQ page of Caesarstone Australia’s website at http://www.caesarstone.com.au/faq provided that the Caesarstone slabs could not be used for flooring. That, he said, was an error and the website had since been amended.

256    In fact, Mr Dixon deposed, at the same time as the FAQ page provided that the Caesarstone slabs could not be used for flooring, Caesarstone Australia’s website provided on the bathrooms page that:

Caesarstone surfaces are not only perfect for bathroom wall panels but also vanities, bath surrounds, inset shelving, shower recesses, floor panels* and window sills. Caesarstone’s surfaces offer endless design possibilities to create your dream bathroom

and this statement was first included on this website page in 2013. The asterisk used on the bathrooms page next to the word floor panels provided and still did provide that that type of application was not covered by the Caesarstone 10 year limited warranty.

257    In cross-examination, Mr Dixon said that the statement was correct as at 2005 and at 2007 and it was an answer that he would expect representatives of the business would have given to those asking a question about the suitability of Caesarstone for flooring in 2005 and 2007. It was after 2016 that Caesarstone had formed the view that it was appropriate for the answer to the FAQ to be amended. Mr Dixon said that a number of FAQs on the website were overlooked and were not updated “as we developed a number of strategies, including a bathroom strategy where we produced a design guide … where we said that the product could be used for floor panels.”

258    Mr Dixon deposed that the Caesarstone slabs were an expensive product as compared to other premium surface products. For that reason, consumers often consulted with kitchen design professionals or architects or interior designers as part of the selection process in order to take in-depth advice from these professionals before purchasing and installing the Caesarstone slabs. He said the purchase process for the Caesarstone for any applications involved careful inspection of the product, as well as time and effort in considering the qualities and source of the goods. Based on his experience, a high degree of care was taken by consumers during the purchase process of the Caesarstone slabs.

259    Mr Dixon annexed a selection of price lists from July 2003 to date. By 2009, the wholesale price for a Caesarstone slab in the standard colour range (20mm thick slab 3060 x 1440 x 20) was approximately $790. In 2013, that price was approximately $850. In 2016, that price was $970.

260    In cross-examination, Mr Dixon agreed that, as at 2004-2005, 300 by 300mm was considered to be a “large tile” format. He also agreed that, as at 2004-2005, times had changed and floor and wall tile formats were becoming larger, 400mm fast becoming the norm. Further, while 600 x 600mm was the largest square format produced by many manufacturers, it was not uncommon to come across 1.2m x 600mm and 500mm x 1m floor tiles.

261    He agreed with the further statements by Anthony Stock in Tile Today, December 2004 to February 2005:

Not only have tiles become larger, there has also been a change in terms of product type. Monocottura still exists and will probably never go away. However glazed porcelain, fully body porcelain, polished and natural, are now the most popular types of floor tile.

These products are generally denser and harder, however they also have a degree of brittleness that can make them difficult to cut.

A certain percentage (possibly quite high) of the nation’s 15,000 plus tilers, do not possess the equipment required to cut a 400x400 mm glazed or full body porcelain tile, in a manner that leaves a smooth, clean edge, that is straight and unchittered.

If the trend to large, dense floor tiles is set to continue, then tilers who want to maximise their opportunities need to think seriously about investing in adequate state-of-the-art cutting equipment. Many tilers own wet saws which will cut 300 mm products diagonally. The popularity of large format porcelain and natural stone products would appear to suggest that the time is right to upgrade.

262    Mr Dixon also agreed with the following statement by Mr Fred Gray, published in Tile Today, March to May 2013:

Today, tile is available in formats ranging from 5 x 5mm mosaics to greater than 1220 x 1220mm porcelain ... and even larger models such as the 1 x 3m thin porcelain panels which some plan to install with the direct adhesive method.

Mr Dixon agreed that the natural and ordinary meaning of the statement was that tile was available in 1m x 3m thin porcelain panels.

263    Mr Dixon had prepared, and annexed, a table detailing the annual volume of the Caesarstone slabs sold and the average sale price of the Caesarstone slabs in the standard colour range from 2002 to April 2016. The table also included the average square metre price for the Caesarstone slabs in the standard colour range from 2002 to April 2016.

264    Mr Dixon gave evidence of the total worldwide sales of the Caesarstone slabs during the period 2003 to 2015 and said they had steadily increased year on year. He also deposed that total sales in Australia during that period had steadily increased year on year.

265    Mr Dixon gave evidence of a program in place, since at least 2002, whereby employees of Caesarstone Australia and Caesarstone’s former Australian distributors had contacted a range of kitchen companies (including Harvey Norman Kitchen and Bathroom Showrooms) and project home builders offering complimentary Caesarstone slabs for use in their kitchen displays in their businesses and project homes.

266    He deposed that the main purpose for supplying the Caesarstone slabs at no cost was to have the Caesarstone slabs displayed in store and to show to consumers the different looks of the Caesarstone slabs when installed. It also encouraged project homes builders to include the Caesarstone slabs as a standard feature in their project homes or to at least have the Caesarstone slabs listed as a feature which could be selected by consumers when building the particular project homes in which the Caesarstone slabs were displayed.

267    While in those circumstances the Caesarstone slabs were supplied at no cost, the kitchen company and project home builder needed to engage their own stonemason to install the Caesarstone slabs. Mr Dixon deposed that he was aware that there were approximately 6,000 displays throughout Australia that featured Caesarstone slabs that had been provided by Caesarstone Australia and Caesarstone’s former Australian distributors at no charge.

268    Mr Dixon deposed to the advertising and marketing of the Caesarstone slabs. He said that the marketing strategy was designed to target both individual consumers and the key professionals involved in the supply of these products, such as architects, designers and stonemasons so as to build demand in all segments of the market for the Caesarstone slabs.

269    One of the ways to market the product was through Caesarstone Australia’s and Caesarstone’s former Australian distributors’ brochures and catalogues. The brochures were distributed directly to individual consumers, including consumers who had visited Caesarstone showrooms, and also to customers such as architects, interior designers, kitchen companies and bathroom product companies both for their own use and for use with their individual consumers. Also advertisements were published in a range of different Australian publications including: Inside Out magazine; House & Garden magazine; Vogue Living magazine; Belle magazine; and a range of publications targeted at designers and architects, such as Indesign, Architectural Review Asia Pacific and Monument.

270    Mr Dixon also deposed to the production of a sample folder containing sample chips of the colours in the Caesarstone range. Those sample books had been and were provided to kitchen companies, bathroom companies, architects and interior designers for consumers to view the Caesarstone slabs and the various colours that they came in. Those sample books were also used by consumers to match other products (such as wood grains, floor tiles, wall tiles, cabinetry) which they intended to use in the area where they were going to use the Caesarstone slabs. Mr Dixon was aware that since at least 2001/2002, at least 40,000 sample folders had been distributed in the market and employees of Caesarstone Australia currently knew the whereabouts of approximately 18,000 sample folders.

271    Mr Dixon deposed that Caesarstone slabs were installed as interior furniture and kitchens for the showcase of a future housing project sponsored by Multiplex in 2004 which Carsilstone took part in and he attended. He annexed a Powerpoint presentation titled “Houses of the Future” which he created in November 2004. Pages 11 and 12 showed the installation of the Caesarstone slabs as a kitchen splash back, wall panel and freestanding bathroom wall panel/partition with suspended wash basin on one side and shower area on the reverse.

272    Mr Dixon deposed that during the period from 2004 to 2010, Caesarstone Australia and Caesarstone’s former Australian distributors had a display most years at the annual DesignEx show. DesignEx was Australia’s largest interiors, design and architecture event. In 2004, Caesarstone’s former Australian distributors used Caesarstone on the floor of the stand. He annexed to his affidavit copies of photographs and drawings of the Caesarstone stand at DesignEx 2004, which was held in Sydney from 22 to 24 April 2004. The photographs also showed examples of the Caesarstone slabs cut into panels for installation. For example, the floor panels measured 1200mm x 1700mm x 20mm.

273    Mr Dixon said that the Caesarstone brand was often referred to as a premium fixture in real estate sale and rental advertisement listings in the Australian market. He annexed a selection of such advertisements.

274    Mr Dixon annexed to his affidavit a printout from the “Applications” page of an archive version of Caesarstone’s website from November 2002: the applications depicted included benchtops, splashbacks, walls and flooring.

275    Mr Dixon also gave evidence of various sales conferences. He deposed to Caesarstone Australia’s and Caesarstone’s former Australian distributors’ dedicated sales and marketing team, which included: architectural consultants, who marketed Caesarstones products to architects; new homes consultants, who marketed Caesarstones products to home building companies; retail consultants, who marketed Caesarstones products to business such as kitchen companies, bathroom companies and commercial interior fit-out companies; and stonemason consultants, who sold the Caesarstone slabs to stone fabricating businesses. Mr Dixon deposed that these consultants had marketed and still actively marketed to their target constituency, principally by conducting visits to them, discussing the Caesarstone slabs directly with them, and providing them with relevant product information.

276    Mr Dixon deposed to the training program, since at least 2004, of members of the sales and marketing team. Similarly, since at least 2004, members of the Caesarstone showroom team had also received an induction training program when they commenced employment. The training spanned from a couple of days to one week depending on the experience of the relevant staff member.

277    Mr Dixon deposed that, during that induction program, employees had been and still were trained on the following matters: the various applications of the Caesarstone slabs including benchtops, splashbacks, table tops, commercial counters, wall panelling, and flooring, amongst other things; the colours of the slabs; how the slabs were made, where they were made and their manufacturing process; key technical characteristics of the Caesarstone slabs and the features and benefits of the slabs; and the various tests and documentation/certification available to help answer technical questions about the Caesarstone slabs.

278    In cross-examination, Mr Dixon agreed that he could not recall now whether he did or did not train employees of Carsilstone that Caesarstone slabs were suitable for use as flooring. Similarly, he accepted that he did not have a recollection of providing training to staff prior to June 2005 that Caesarstone slabs were suitable for use as wall panelling, putting splashbacks to one side. He did have a recollection of training employees before June 2005 that splashbacks were a suitable application for Caesarstone slabs.

279    Mr Dixon deposed that further training was provided at monthly sales meetings in each State. He annexed to his affidavit a presentation given internally to staff in 2005. He said that he recalled that at that time the business was trying to expand sales to project home builders beyond bench tops and splashbacks to include use of the Caesarstone slabs for bathrooms (including walls) and vanities.

280    He deposed that since at least 2004 Caesarstone Australia and Caesarstone’s former Australian distributors had had technical consultants whose role had been and still was: to assist stonemasons to understand the suggested procedures to fabricate the Caesarstone slabs; to provide troubleshooting advice; dealing with warranty claims including attending consumer's homes to deal with warranty claims and to resolve them; and conducting on-site repairs (if possible).

281    Mr Dixon also gave evidence of his awareness of Ceramiche Caesar and its activities in Australia. He said that the sales and marketing representatives provided him with information about other companies supplying products that competed with the Caesarstone slabs and he regularly reviewed a range of publications relating to interior design and home renovations including Australian tile magazines and other Australian industry literature.

282    In cross-examination, Mr Dixon agreed that that there would be tile products advertised in those Australian tile magazines being sold in competition to a Caesarstone flooring offering that involved slabs cut to size.

283    Mr Dixon accepted that Tile Today was in 2016 and had been since at least 2004 a reliable and accurate source of information about the tile industry. It featured a buyer’s guide and Mr Dixon accepted that the purpose of that guide was to enable manufacturers of tile products to list their details so that persons in Australia who wished to acquire those tile products could contact them. He agreed that the magazine was more on the industry side rather than the consumer side, being a buyer-to-buyer publication. It was more for wholesalers and specifiers and designers.

284    He agreed it was common for Italian companies featuring the word “ceramiche” to list themselves in the buyer’s guide of Tile Today and to do so to enable persons in Australia to purchase their tile products. Mr Dixon accepted that “ceramiche” was a word that Italian tile manufacturers trading in Australia were likely to want to use in their company name, to educate the market that their tile products were made of ceramics.

285    He deposed that he had never seen Ceramiche Caesar or its products in the Australian marketplace. While he became aware of Ceramiche Caesar’s business in Europe in about 2010, but for the evidence submitted in the opposition proceedings filed against the Caesarstone Goods Word mark and the CAESARSTONE Device mark, he was not aware that Ceramiche Caesar was conducting business or supplying its products in Australia. It was his understanding that, at the time Caesarstone began using its name in Australia, that company was not aware that Ceramiche Caesar had conducted business in Australia or was supplying tile products in Australia by reference to the CAESAR trade mark.

286    Mr Dixon deposed that he was not aware of any instance of confusion in the Australian market place between goods or services offered by Caesarstone or its Australian distributors under the Caesarstone name for any application, including flooring, or the CAESARSTONE Device mark for any application, including flooring and ceramic tiles sold by Ceramiche Caesar under its CAESAR name and/or CAESAR name and logo, whether before, at or after the filing date of the Caesarstone Goods Word mark, the CAESARSTONE Device mark or the Caesarstone Services Word mark.

287    Mr Dixon said he was aware that the use of the Caesarstone Goods Word mark, the CAESARSTONE Device mark and the Caesarstone Services Word mark by Caesarstone Australia and Caesarstone’s former Australian distributors had been under the direction and control of Caesarstone. It was his understanding that since at least 2004, Caesarstone Australia and Caesarstone’s former Australian distributors had reported back to Caesarstone at regular intervals regarding: sales made of the Caesarstone slabs; marketing efforts relating to sales of the Caesarstone slabs; and marketing and advertising materials which had been created and used to promote and offer for sale the Caesarstone slabs. From reviewing the books and records of Caesarstone Australia and Caesarstone, Mr Dixon understood that Caesarstone’s former Australian distributors reported back to Caesarstone at regular intervals regarding these matters and had done so since at least 2001. I accept this evidence.

288    In relation to the inconvenience to Caesarstone, Mr Dixon deposed that if the Caesarstone Goods Word mark and the CAESARSTONE Device mark did not proceed to registration and if the Caesarstone Services Word mark was cancelled, then: Caesarstone and Caesarstone Australia would not have protection of a registered trade mark to enjoin third parties from using these trade marks or marks which were substantially identical with and/or deceptively similar to these trade marks for:

(i)    the same goods claimed in the applications for the CAESARSTONE Trade Mark and the CAESARSTONE Device trade mark.

(ii)    similar goods or closely related services to the goods claimed in the CAESARSTONE Trade Mark and the CAESARSTONE Device trade mark.

(iii)    the same services claimed in the applications for the Second CAESARSTONE Trade Mark and the CAESARSTONE Device trade mark.

(iv)    similar services or closely related goods to the services claimed in the Second CAESARSTONE Trade Mark and the CAESARSTONE Device trade mark.

Mr Dixon also deposed that Caesarstone would lose the enormous goodwill that it had built up in the Caesarstone Goods Word mark by reference to the Class 19 goods which it had been using for over 15 years and which were of the same nature as its slabs in Class 20.

289    Mr Dixon deposed that he did not believe that Ceramiche Caesar would suffer any inconvenience should the Caesarstone Goods Word mark and the CAESARSTONE Device mark proceed to registration and should the Caesarstone Services Word mark remain on the Australian Trade Mark Register because:

(a)    the Caesar Trade Mark had co-existed in Australia with the use of the Caesarstone Goods Word mark for the Class 19 goods claimed in this application since at least 2001 and there had been no actual confusion between the two marks;

(b)    the Caesar Trade Mark had co-existed in Australia with the use of the CAESARSTONE Device mark for the Class 19 and Class 20 goods claimed in the application and the Class 35 and Class 37 services claimed in the application since at least 2007 and there had been no actual confusion between the two marks; and

(c)    the Caesar Trade Mark had co-existed in Australia with the use of the Caesarstone Services Word mark for the Class 35 and Class 37 services claimed in the application since at least 2001 and there had been no actual confusion between the two marks. Furthermore, the registration of the Caesarstone Services Word mark had co-existed with the Caesar Trade Mark on the Australian Trade Mark Register since at least 2007 with no objection from Ceramiche Caesar until it filed an application and statement of claim seeking the removal of the Caesarstone Services Word mark on 22 December 2015.

290    Mr Dixon deposed that Caesarstone had obtained trade mark protection for the CAESARSTONE trade mark and the mark shown in the CAESARSTONE Device mark around the world.

291    Mr Dixon deposed to a trade mark application for the CAESARSTONE Device mark in Singapore (Singapore Trade Mark). The Singapore Trade Mark had been filed for goods in Classes 19 and 20 and services in Classes 35 and 37.

292    Mr Dixon deposed that the Caesarstone trade mark had co-existed with the Ceramiche Caesar trade mark in the United State since 1997 for Class 19 goods. He deposed that Caesarstone was the owner of the following trade marks in the United States:

(a)    US trade mark registration no. 2227517 CAESARSTONE in class 19 for slabs and tiles formed of composite stone for building panels, counter tops, vanity tops, floors, stairs, and walls filed on 7 August 1997; and

(b)    US trade mark registration no. 2930061 CAESARSTONE filed on 10 February 2003 for the following goods in classes 11 and 20:

Class 11:     Sinks tops formed of composite stone.

Class 20:     Furniture parts formed of composite stone, namely, work surfaces and surrounds for kitchens, bathrooms, vanity units and offices; furniture parts formed of composite stone, namely, countertops, tabletops, bar tops, and worktops; furniture parts formed of composite stone, namely, reception desks and countertops in reception areas.

293    Mr Dixon’s evidence was that Ceramiche Caesar was the owner of US trade mark No. 2120721 CÆSAR Device in Class 19 for:

non-metallic building materials and floor coverings, namely, non-metallic floor tiles, angle beads, baseboard covers, angle irons (not metal), stop ends, raised floor tiles, step-treads, mosaics, bull-nose tiles, skirting blocks and cove base tiles

filed on 13 February 1995.

294    Mr Dixon deposed that he did not consider Caesarstone slabs to be “tiles” or “in the nature of tiles” due to their large size, considerable weight, and fact that they required post manufacturing fabrication before installation. In his experience, tiles were smaller, easily handled pieces of material, typically, although not always, ceramic, which were manufactured into a specific size and shape. They were designed to be used without further cutting or finishing, in the size and shape in which they were supplied. Caesarstone slabs were commonly marketed as an alternative to tiles, and had benefits over tiles including allowing for a seamless finish and fewer grout lines across a surface.

295    Mr Dixon deposed that the purchase and installation of tile products differed considerably to the Caesarstone slabs. Tile wholesalers sold directly to the end consumer and tilers for installation which Caesarstone did not do. The Caesarstone slabs were purchased, cut, fabricated and installed by stonemasons and consumers must engage a stonemason to cut and fit the Caesarstone slabs. He said this was a key point of difference between the Caesarstone slabs and typical ceramic tiles.

296    Mr Dixon deposed that in his experience approximately one third of the fees typically charged by a stonemason was the cost relating to the purchase of the Caesarstone slabs themselves and two thirds the cost relating to the cutting and installation of the Caesarstone slabs. The cost of cutting and fabricating the Caesarstone slabs was a further cost that did not generally need to be incurred when a consumer purchased and had tiles laid.

297    In cross-examination, Mr Dixon accepted that Caesarstone slabs when fabricated and installed for flooring were goods in the nature of tiles. He himself did not regard a raw 1m x 3m quartz slab to be a tile but accepted that there would be room for debate about whether or not a slab of those dimensions could be characterised as a tile. He said that there had been a lot of evolution in the tiling industry over the last 10 years

298    In cross-examination, Mr Dixon accepted that as at June 2005 Caesarstone’s intentions for the Australian marketplace were to market Caesarstone slabs and it had no intention to market products other than Caesarstone slabs. He did not agree that some people would regard a 1m x 3m x 13mm thick Caesarstone unprocessed slab to be in the nature of a tile, but accepted there was a possibility that some may so regard it. He accepted that there was a debate in the current industry climate about whether a 1m x 3m was a tile or a slab. He accepted that it was increasingly not the case that tiles were easily handled pieces of material. He accepted it was very common for tilers to further cut and finish tiles prior to installation but added that what they were essentially doing was taking a finished tile shape and size and cutting it to more specifically fit into a room or cutting out a hole through a finished tile for a pipe to go through. He accepted that Caesarstone slabs were marketed by Caesarstone Australia as tiles: the word “tiles” was used but he said predominantly the word “panels” was used to describe the nature and the size of the application. Mr Dixon said that what he said about the scope of the word “tile” reflected his personal understanding of what he believed a tile was, versus another description of a shape, and accepted that that was a matter about which minds may reasonably differ.

299    He also accepted that the presenter from Caesarstone to the “CaesarStone National Conference” on 12 July 2005 regarded the words “floor tiles” to be a natural and ordinary use of the English language to describe the product applications for Caesarstone slabs.

300    I turn now to consider the evidence of the stonemasons called by Caesarstone.

301    Mr Pantalione Galea was a stonemason, employed since December 2005 as the managing director of GMG Stone Pty Ltd in Queensland. He swore an affidavit dated 12 May 2016. He first started working with Caesarstone slabs in or about 2000/2001 when he commenced his business. The products were distributed and sold by Tessera and Carsilstone; it was still a new product in the industry and he had not worked with engineered stone before. At that time, he was mostly working with natural stone such as marble and granite. The Caesarstone slabs in the early 2000s were dearer than natural stone and retailed for above AUD1,000 per slab.

302    Mr Galea deposed that, in the early 2000s, the Caesarstone slabs were introduced to the market as a high-end premium product. They were very expensive. After a couple of years, the price reduced by at least 40%.

303    Mr Galea deposed that he was one of the first stonemasons in Australia to promote the Caesarstone slabs to residential builders, being builders that would build up to 500 or 800 homes a year. He negotiated with Tessera and Carsilstone to have the price of the Caesarstone slabs reduced. As a result of the lower price, the popularity of the Caesarstone slabs increased and his business sold substantial volumes of them. Over time, he noticed that his customers started using Caesarstone slabs in preference to laminex for a kitchen benchtop or countertop and the Caesarstone slabs were now more popular than laminex.

304    By 2004, Mr Galea deposed, his customers were purchasing the Caesarstone slabs mainly for kitchen benchtops and vanity benchtops. Some customers also used the Caesarstone slabs as a splashback in their kitchens. Some customers were also using the Caesarstone slabs for wall cladding and flooring. Over time, the use of the Caesarstone slabs as a wall covering and for flooring had been increasing. About one in 20 customers in 2004/05 used the Caesarstone slabs for a wall or floor application. In his experience, the reason why a large number of customers were not using the Caesarstone on floors and for walls at that time was because the product was expensive and covering a floor or wall with the Caesarstone slabs was costly.

305    In cross-examination, Mr Galea said that he considered a splashback to be a wall application. The vast majority of the one in 20 customers using Caesarstone slabs were for splashback applications. Of those one in 20 customers, the majority used Caesarstone slabs for splashbacks and walls, not floors. He agreed it was rare for Caesarstone to be used for a floor application.

306    Mr Galea deposed that a customer wanting to order Caesarstone would usually: visit a stonemason to inspect sample pieces of the Caesarstone slabs; the stonemason would then review the customers plans and provide a quote; the stonemason would then order the necessary quantity of the Caesarstone slabs and cut the slabs to the customers specifications and then install them. Mr Galea agreed in cross-examination that the customer always made the payment to him. His business usually held multiple Caesarstone slabs in its yard. His business also stocked a variety of engineered stone products from suppliers in addition to the Caesarstone. In relation to Quantum Quartz, he was aware that it sold reconstituted stone in a slab size and also reconstituted stone in a tile size but he did not use the tile size.

307    In cross-examination, Mr Galea agreed that his company undertook whole bathroom and kitchen renovations and some of those kitchens and bathrooms had used tiles. He said that his company did not use ceramic tiles on walls.

308    He deposed that he was aware that Caesarstone had been installed in McDonalds restaurants as tables and had also been used in commercial buildings on countertops.

309    Mr Galea deposed that he was familiar with the Ceramiche Caesar business. He was aware that Ceramiche Caesar sold ceramic tiles, however, he had never sourced tiles from Ceramiche Caesar and he had never heard of CAESAR branded tiles until he was contacted about this proceeding.

310    Mr Galea was taken in cross-examination to the Caesarstone Fabrication Manual effective May 2005. He agreed it was his practice as a stonemason supplying Caesarstone goods to comply with the Fabrication Manual. As at 2005, he was familiar with the statements:

If using CaesarStone® as a splashback/wall lining you must follow the appropriate Australian Standards with respect to clearances, especially behind cooktops.

and:

CaesarStone® is not suitable for exterior use, flooring or any areas that are exposed to UV radiation or excessive heat (eg. Fireplace surrounds).

and:

This limited warranty shall only apply if the Goods are used for interior use. The Goods must not be used for any external use or flooring.

and:

This limited warranty shall only apply if the Goods are properly fabricated, installed and maintained according to CaesarStone's fabrication manual and Care and maintenance Instructions.

311    Mr Galea agreed that save for the reference to the safety standards, there were no specific instructions for splashbacks at all in the Fabrication Manual but he said that a splashback was like a benchtop and had the same requirements. He said it was just a vertical hanging, not a horizontal hanging. He agreed that there were no installation instructions specific to wall applications in the document and said that would be for the expertise of the stonemason. Mr Galea agreed, that putting splashbacks to one side, there were no installation instructions for flooring in the Fabrication Manual.

312    As to whether Caesarstone was suitable for flooring in around 2005, Mr Galea said he would not say it was not suitable but that it was a new product and “it had to be experimented with and so forth going forward”. But the material was the same, it was the application, again, “we were doing it in marble and granites and there was no reason why we couldnt do it in the quartz product”. He agreed that Caesarstone was not suitable for external flooring, but did not agree that it was not suitable for internal flooring. He said he saw the statement in the Fabrication Manual:CaesarStone® is not suitable for exterior use, flooring or any areas that are exposed to UV radiation or excessive heat (eg. Fireplace surrounds).” as meaning that Caesarstone could not be used for anything outside with UV rays on it.

313    Mr Brendan Harrop was also a stonemason, and had been since 1988. He affirmed an affidavit dated 3 June 2016. His evidence was that he was employed by Tessera in June 2004 in the role of National Technical Manager.

314    Mr Harrop deposed that he understood that in 2006 Caesarstone Australia was incorporated and in 2008 that company purchased the assets of Tessera and Carsilstone. He continued on in the role of National Technical Manager. He ceased his employment with Caesarstone Australia in August 2010.

315    Mr Harrop deposed that as the National Technical Manager he was responsible for inspecting, investigating and repairing Caesarstone slabs which were installed in both commercial and private residential premises. Consumers would call the Caesarstone head office if they had concerns with their Caesarstone slabs. Where possible, he would repair the fault on-site and if he could not conduct the repairs on-site then Caesarstones Australian distributors would replace the faulty product. The types of faults that he investigated included cracks, chips or staining of the Caesarstone slabs.

316    Since commencing his role in 2004, he saw that the Caesarstone slabs were installed as benchtops, vanities, splashbacks, wall claddings and for flooring.

317    He deposed that, in his role as the National Technical Manager, he visited an average of eight to ten homes per day to investigate concerns raised by customers with their Caesarstone slabs. Therefore, he visited at least 40-50 homes per week which had Caesarstone slabs installed. Based on these visits which he conducted from 2004, he estimated that 50% of customers who had installed a Caesarstone benchtop also had a Caesarstone splashback.

318    He deposed that he did not carry out the initial installation of the Caesarstone slabs as they were typically installed by third party stonemasons. Furthermore, if any Caesarstone slabs needed to be removed and replaced due to faults which he could not fix on-site, then the replacement slabs would be installed by a third party stonemason, even though he was a trained stonemason.

319    Prior to commencing his employment with Tessera, Mr Harrop worked as a stonemason and measured, cut, fabricated and installed numerous quartz stone products including Caesarstone slabs. Between 2000 and 2004, he measured, cut, fabricated and installed Caesarstone slabs for benchtops, splashbacks as wall claddings and as flooring. In 2004, he completed the installation of the Caesarstone slabs which were used as flooring for the Caesarstone display at the DesignEx Trade Show in Sydney.

320    Mr Harrop’s evidence was that customers purchased Caesarstone slabs for use as benchtops, vanities, splashbacks, wall cladding and flooring; the Caesarstone slabs were primarily used as a benchtop, however, customers would often enquire about its application for flooring and for walls. The Caesarstone slabs could be and were purchased for those applications before 2005; approximately 50% of customers who had installed the Caesarstone slabs as a benchtop also used the product as a splashback; the warranty for the Caesarstone slabs did not cover the application of the product on floors; and the application of the Caesarstone slabs would very much depend on the customer.

321    An example Mr Harrop gave was if a high end designer was involved and loved the product then there would be multiple applications of the product on floors, walls, benchtops and vanities. This was the case for homes typically in the Eastern suburbs of Sydney. However, generally speaking, kitchen companies would not promote the Caesarstone slabs for use as flooring as kitchen companies were more interested in simply installing kitchens and using the Caesarstone slabs as splashbacks and benchtops.

322    Mr Harrop said that as Caesarstone’s Australian distributors increased its advertising of the Caesarstone slabs, the use of the product on floors and walls also increased over time. He said he witnessed the increased use of Caesarstone slabs for floors and walls over the years in his role as National Technical Manager.

323    Mr Harrop said that Caesarstone slabs needed to be installed with a flexible adhesive to allow for thermal expansion. There was also an additional cost having the Caesarstone slabs being cut to size as the product needed to be cut by a stonemason in a factory, unlike a tile that could be cut on site. The Caesarstone slabs also differed from typical ceramic tiles in that if the product was being installed in a large space, an entire slab (generally 3,060mm x 1,440mm) could be installed and there were no grouting issues. Generally speaking, stonemasons would try to install as big a slab as possible when using Caesarstone, for that very reason.

324    As a stonemason, Mr Harrop did not have experience installing tiles.

325    In cross-examination, Mr Harrop said that in 2005 the primary application of Caesarstone slabs was benchtops. The second most common was vanities and the third most common splashbacks. He said the fourth most common was wall cladding and flooring. He agreed that as a National Technical Manager in 2005 it was rare to see Caesarstone used as flooring.

326    As to the nomenclature, Mr Harrop said that, on paper, splashbacks, wall cladding and flooring were three separate applications but to him a splashback was a wall covering. A splashback in a kitchen was a wall. He agreed that there could be wall cladding (gyprock) underneath a splashback. Gyprock was a form of wall cladding.

327    Mr Harrop was taken in cross-examination to the Caesarstone Fabrication and Installation Manual effective as at May 2005. He agreed that the statement “CaesarStone® is not suitable for exterior use” was a direction to a stonemason that the physical properties of the product were not appropriate for use outside. He also agreed that the Manual contained a direction to stonemasons given by Caesarstone saying that the Caesarstone slabs were not suitable for use in interior or exterior flooring.

328    Mr Harrop agreed that the manual did not provide any instructions for how to install a Caesarstone slab on the floor. He also agreed that, putting splashbacks to one side, the Manual did not provide any instructions for how to install Caesarstone slabs as a wall application. He agreed that if a stonemason was provided with only the Manual, he would have to draw on his own experience to fabricate a Caesarstone slab for the floor or the wall. Mr Harrop said that if stonemasons wanted to go and put Caesarstone slabs on the floor, that was up to them not Caesarstone. It was not covered by the Caesarstone warranty.

329    Mr Mario Calicetto was also a stonemason, being the CEO of a business named OneStone. He affirmed an affidavit dated 6 June 2016. He had had over 25 years experience in the stone industry. He deposed that he was employed by either Tessera or Carsilstone in 2003 as a Technical Manager. He left this position in 2005.

330    As Technical Manager, he was required to travel around Australia and educate stonemasons on the Caesarstone slabs, how to cut them and how to apply them for various uses. In his role he also visited various homes where Caesarstone slabs had been installed. While it was difficult to remember, he estimated that he visited approximately five to ten homes per week to inspect complaints made by customers regarding the Caesarstone slabs that had been installed. Generally, the complaints were in relation to the fabrication of the Caesarstone slabs, for example, how it was cut or polished. Occasionally, there were also complaints arising from the cleaning methods used by customers to clean the Caesarstone slabs. He did not conduct any repairs of the Caesarstone slabs as Mr Harrop was responsible for that.

331    Mr Calicetto deposed that between 2003 to 2005 customers used the Caesarstone slabs for various applications including benchtops, vanities, staircases as well as for flooring, walls and splashbacks. Caesarstone slabs were very popular for benchtops. However, Caesarstone slabs were also used on floors and walls. In cross-examination, Mr Calicetto agreed that that use was less than 1% on floors and, without the splashbacks, perhaps 2.5% for a wall or floor. The reason why he believed that the Caesarstone was used less on floors and walls as compared to benchtops was because it was not warranted if used for flooring.

332    Mr Calicetto deposed that the applications for the Caesarstone slabs at June 2016 remained the same as before 2005 when he worked for Tessera or Carsilstone, being benchtops, vanities, staircases as well as walls and splashbacks. Based on his knowledge of the engineered stone industry, Caesarstone was a very popular product amongst consumers of quartz stone products.

333    In 2005, Mr Calicetto estimated, 95% of the applications of the Caesarstone slabs that he fabricated related to the use of the slab for benchtops and approximately 5% were for floors and walls including splashbacks. Mr Calicetto was speaking of his experience after he left Tessera in early 2005 and returned to working as a stonemason. Of the 5%, most of that would have been splashbacks, because the vanities were included in the benchtops. The figure was a rough estimate and Mr Calicetto had not gone back to his records. He was comfortable in saying that over half of the remaining 5% was for splashbacks. Of the remaining 2.5%, over half of that would be for a wall rather than flooring. The flooring would be less than 1%.

334    Mr Calicetto said, in cross-examination, that when he used Caesarstone on the floor, the company would tell the customer that it was not recommended for the floor and left the decision to them.

335    Mr Calicetto deposed that Caesarstone slabs had changed the Australian stone market. When the Caesarstone slabs were first introduced into the Australian market, the product was considered a high end and expensive product. Over time, the product had become more accessible and cheaper for consumers while still retaining the same look as natural stone products such as marble and granite, as well as and being a less porous surface than marble.

336    Mr Glenn Baltissen was also a stonemason. He affirmed an affidavit dated 2 June 2016. He had had over 25 years’ experience in the stone industry. Since 2012, he had been the general manager of Moorabbin Marble & Granite Pty Ltd. From 1996 to 2004, Mr Baltissen was employed as a stonemason by Classique Stone Pty Ltd (Classique). During his employment with Classique he performed installation work, as well as cutting, polishing and edging stone for various applications including benchtops, wall panelling, floors and splashbacks. He deposed that during his employment with Classique, he fabricated and installed Caesarstone slabs. From 2004 to 2008, he was employed by Tessera as a Technical and Warranty Consultant for Victoria.

337    Mr Baltissen deposed that, in 2008, Caesarstone Australia commenced the distribution of the Caesarstone slabs in Australia and from 2008 to 2012, he was employed by that company as a Technical and Warranty Consultant for Victoria. During that employment he assisted clients with after care service. There was also a Technical and Warranty Consultant for New South Wales during his employment in Victoria.

338    During his employment with Tessera and later Caesarstone Australia, Mr Baltissen deposed, he managed the technical department in Victoria and his responsibilities included: investigating warranty claims made by customers; undertaking repairs such as chip repairs; and advising customers on the installation of the Caesarstone slabs. During his employment, he would visit the premises of customers who had installed Caesarstone slabs. He would visit an average of 20-30 premises of customers per week.

339    Mr Baltissen deposed that he first started using the Caesarstone slabs during his employment with Classique in or about 1996 or 1997.

340    He deposed that the things that made the Caesarstone slabs different to typical ceramic tiles were: there was no issue of grouting with the Caesarstone slabs as they were usually applied as two or three big slabs which ran floor to ceiling; Caesarstone slabs were an expandable product and therefore the slabs needed to be applied with an adhesive, such as silicone, that was flexible; and it was more expensive to lay Caesarstone slabs as compared to typical ceramic tiles as a stonemason needed to be engaged to measure, cut, fabricate and install the slabs. Typical ceramic tiles were not cut and could be laid by a tiler as delivered.

341    Mr Baltissen deposed that the Caesarstone slabs could be used for various applications including splashbacks, benchtops, vanities and wall applications. He deposed that he was aware of hundreds of applications of the Caesarstone slabs for those different uses. He estimated that the Caesarstone slabs had been installed over the years for the following applications and in the following proportions: 60% for benchtops; 30% for splashbacks; and 10% for wall panels. In cross-examination, Mr Baltissen agreed that these estimates were for the entire period from 1996 to 2016 and reflected the increase after 2013 when Caesarstone released a 13mm slabs specifically for walls. He added that the figures were for him personally and other people might be more or less.

342    Commercial applications of the Caesarstone slabs that Mr Baltissen was aware of included reception desks and lift surrounds. An example of the commercial use of Caesarstone slabs that he was involved with and saw was at the Borders store at Chadstone Shopping Centre where Caesarstone slabs were installed on the shop surround in about 2006.

343    Mr Baltissen deposed that Moorabbin Marble and Tiles currently installed approximately 10 kitchens and bathrooms per week using Caesarstone slabs. The Caesarstone slabs were commonly used for benchtops, vanities, splashbacks and for wall claddings.

344    Mr Baltissen deposed that the normal process for ordering and arranging the installation of Caesarstone slabs was, and had been since the late 1990s: a customer saw pictures of the Caesarstone slabs and placed an order through a kitchen company, a bathroom company or an architect who then ordered the product from a stonemason; the stonemason provided a quote for the job and placed an order with Caesarstones Australian distributor for the Caesarstone slab(s); once the order had been placed and the slab(s) had been picked up or delivered, the stonemason worked with the kitchen company, the bathroom company or architect to measure, cut and install the slabs for the relevant application. The stonemason cut the slab(s) according to the required size for the application. For example, for a wall application, the stonemason would measure the wall and cut the slab according to those requirements. Stonemasons generally used the entire slab and they did not cut the slabs into smaller tile like pieces, because it was the large ungrouted slab that was what customers were generally after. Depending on access and the internal measurements of rooms, there may have been two or three Caesarstone slabs installed against a wall.

345    Mr Baltissen deposed that Caesarstone was a very well­known brand for quartz products and it was the most popular brand of engineered stone sold by Moorabbin Marble and Tiles.

346    In cross-examination, Mr Baltissen agreed that each raw slab, in the form that it was delivered to Moorabbin Marble and Tiles, was a material that was capable of being fabricated into any of a benchtop, splashback or wall panel. He agreed that the raw slab was not yet a benchtop, splashback or wall panel and that it was the craftsmanship of the stonemason during fabrication that transformed the raw slab into a benchtop, splashback or wall panel.

347    Mr Baltissen agreed that there had been an increase in usage of Caesarstone slabs on wall panels in recent years and that increase had occurred after 2013 when the 13mm slab was released. He said the primary objective of the thinner material was to use as wall panelling.

348    Mr Baltissen accepted that large Caesarstone slabs could also be cut into smaller panels and an example of a smaller panel was something like 60cm x 60cm. He said you could cut it into whatever size your design required and you could go to 30cm x 30cm but would end up with more lines, which was why you were using a panel: to reduce those lines. It would depend upon the customers own preferences as to whether they would be content with those lines or not. He agreed that some customers might like the tiled look with smaller pieces. He agreed that a large panel would be understood in the trade as a panel having a height of perhaps 1.5 metres and a width of 1 or 1.2 metres or possibly more. Mr Baltissen agreed that another term for large panels used in the trade was large tile or, more commonly, large format or, interchangeably, a large format tile or a large format panel.

349    Mr Baltissen accepted that the process of fabricating a slab for a benchtop, on the one hand, and a wall panel on the other hand, was different. He agreed that there were separate guidelines for bathrooms because the wall panels were in a different category.

350    Mr Baltissen said that the Caesarstone Fabrication Instructions effective May 2005 did not include instructions for wall panels because the wall panelling came out after that.

351    Mr Baltissen agreed that ceramic tiles could be cut to size and that was something that routinely happened and that stone tiles could also be cut to size and that was something that routinely happened.

352    Mr Hisham Janabi, contractor and qualified civil engineer, affirmed an affidavit dated 31 May 2016. He had been, since 2000, the managing director of Baron Forge (NSW) Pty Ltd trading as Stone-Tech Australia (Stone-Tech). He was now the general manager. He had been employed by Stone-Tech since 1993.

353    He deposed that Stone-Tech commenced using the Caesarstone slabs in 2001. Since 2001, Stone-Tech had cut the Caesarstone slabs for various applications including benchtops, floor panels, wall panels and vanities.

354    The company traded in reconstituted stone, engineered stone and in ceramic and stone tiles.

355    Mr Janabi gave an estimate that between 2001 and 2005, Stone-Tech cut and installed Caesarstone slabs for the following applications and in the following proportions: benchtops and splashbacks (it was very common for customers who purchased Caesarstone slabs for a benchtop to also install a splashback made using the same Caesarstone slabs) - 50%; vanities - 45%; wall panels and floors - no more than 5%. Mr Janabi said the estimate was very close to the correct figures of the sales at the time.

356    Mr Janabi estimated that the value of the Caesarstone slabs purchased by Stone-Tech from Caesarstones Australian distributors of the Caesarstone slabs: in 2005 for use on wall panels and floors the value was approximately $25,000. This estimate was on the basis that Stone-Tech purchased approximately $500,000 worth of Caesarstone slabs per year between 2001-2005 and about 5% of those Caesarstone slabs were used for wall panels and floors; in 2015, the value for use on wall panels and floors was approximately $1.4 million. This estimate was on the basis that Stone-Tech purchased approximately $7 million worth of Caesarstone slabs from Caesarstone Australia in 2015 and approximately 20% of those Caesarstone slabs were used for wall panels and floors.

357    In cross-examination, Mr Janabi said that by June 2005 the trend of putting larger size panels, either on the wall or the floor, was a trend that was known in the trade; it started to be more popular. The 5% was mainly floors and walls, but the splashbacks were already there and they had been there for many years. People would put big panels on the splashback of the kitchen itself. In the trade it was natural to think of a splashback as one thing and a wall panel as another thing. Mr Janabi also combined benchtops together with splashbacks because the two went together hand in hand in the sense that if one had a Caesarstone kitchen top then one had a Caesarstone splashback with it. And one used the same material, the same batch. As to the 5%, it was a mix of both wall panels and flooring rather than the majority being wall panels.

358    Mr Janabi deposed that the increase in the application of the Caesarstone slabs for wall panels and floors has been incremental over the past 10 years.

359    He estimated that in 2005, the average square meterage of Caesarstone slabs used by Stone-Tech for a job involving wall panels and floors was approximately 20 to 25 square metres. Prior to 2005, he estimated that Stone-Tech had installed Caesarstone slabs for wall panels and floors in approximately two bathrooms per month and about 25 bathrooms per year; in 2015, the average square meterage of Caesarstone slabs used by Stone-Tech for a job involving wall panels and floors was approximately 80-100 square metres. In 2015, he estimated that Stone-Tech installed the Caesarstone slabs for wall panels and floors in approximately eight bathrooms per month and about 100 bathrooms per year.

360    Mr Janabi accepted that in 2005, something like nine out of ten of his business’ installations would have been bathrooms as opposed to a lobby for a wall panel or floor.

361    Mr Janabi deposed that Stone-Tech has purchased and still purchased the Caesarstone slabs from Caesarstones Australian distributors on a wholesale basis. Stone-Tech then charged the cost of the Caesarstone slab to the end consumer and the total price charged to the consumer also included Stone-Techs service fees for measuring the area for which the Caesarstone slabs would be used, taking delivery of the Caesarstone slabs, fabricating the Caesarstone slabs to size and installing the Caesarstone slabs.

362    Mr Janabi estimated that for a private kitchen job involving the installation of Caesarstone slabs as a benchtop and splashback, the cost charged to the end consumer for the slabs would be approximately 35% to 40% of the total cost of the job, with the remaining 60% to 65% of the total cost of the job being Stone-Techs service fees; and for the installation of Caesarstone slabs for use as wall panels and flooring, the cost charged to the end consumer for the slabs would be approximately 60% to 65% of the total cost of the job, with the remaining 35% to 40% of the total cost of the job being Stone-Techs service fees.

363    Mr Janabi deposed that more slabs were required for the installation of Caesarstone slabs for wall panels and flooring when compared to benchtops, given that wall panels and flooring generally involved large surface areas. The service fee charged by Stone-Tech for the fabrication and installation of the Caesarstone slabs for wall panels and flooring was cheaper per square metre as compared to the service fee for benchtops. This was because there was less factory work involved in fabricating and installing the slabs for wall panels and flooring when compared to a benchtop.

364    He deposed that the reasons for Caesarstone slabs having been used less for wall panels and floors as compared to benchtops were: the Caesarstone slabs were generally more expensive than traditional ceramic tiles (which were traditionally used for covering floors and walls); the installation of the Caesarstone slabs was also more expensive than the installation of traditional ceramic tiles as a stonemasons rate was generally higher than a tilers rate; and the Caesarstone slabs needed to be cut and fabricated by a stonemason in a factory whereas tilers could generally buy pre-cut tiles and install them.

365    Mr Janabi deposed that in 2005, Caesarstone slabs were the most commonly used product cut and installed by Stone-Tech. Since the release of the Caesarstone slabs, the Caesarstone brand had quickly established itself in the market place and this had resulted in the steep decline of the laminate market.

366    Mr Dominic Arciuli, also a stonemason, was not available for cross-examination due to a sudden illness in his family. It was agreed between the parties that his unavailability for cross-examination went to the weight to be given to his affidavit evidence, except that Ceramiche Caesar objected to the admissibility of two paragraphs, [15] and [17], of his affidavit, affirmed on 30 May 2016.

367    Caesarstone relied on the Court’s discretion under r 1.34 of the Federal Court Rules 2011 (Cth) to dispense with compliance with any of the Court’s rules under r 29.09.

368    At [15], Mr Arciuli estimated that, prior to 2005, the Caesarstone slabs which were cut and installed by his company were installed for the following purposes and in the following proportions:

(a)    kitchen benchtops and splashbacks – approximately 80%;

(b)    vanities – approximately 15%;

(c)    wall cladding and flooring – approximately 5%.

369    At [17], Mr Arciuli deposed that, as at May 2016, the Caesarstone slabs which were being cut and installed by his company were cut and installed for the following purposes and in the following proportions:

(a)    kitchen benchtops and splashbacks – 60%;

(b)    bathrooms – including wall cladding and flooring for bathrooms – 30%;

(c)    flooring, stairs and wall cladding other than bathrooms – 10%.

370    Caesarstone submitted that the evidence given by Mr Arciuli in those paragraphs was a matter that should go to weight because evidence of this kind had been given by each of the stonemasons called and cross-examined in the proceedings. In making an assessment as to the proportionate use of Caesarstone slabs up to 2005 and in the current market, the Court should have regard to all available evidence on this topic. Caesarstone submitted that having heard the evidence given by stonemasons in these proceedings, the Court was well-placed to make an assessment as to the weight to be attributed to Mr Arciuli’s evidence.

371    In my opinion, [15] and [17] of Mr Arciuli’s affidavit should be rejected for the reason that, absent cross-examination, the percentages Mr Arciuli deposed to remain untested and it is not possible to know with any certainty what those percentage figures would be if they were tested. The circumstance that other stonemasons gave similar evidence which was tested and qualified in cross-examination seems to me to support the rejection of Mr Arciuli’s corresponding paragraphs. I reject those paragraphs.

372    I now turn to consider the balance of Mr Arciuli’s affidavit.

373    Mr Arciuli deposed that he had been a stonemason since 1994, when he completed an apprenticeship in stonemasonry. From 1994 to 2002, he worked as a stonemason employed by Arciuli, his family’s business. In January 2003, he was employed by Carsilstone and worked for Carsilstone until January 2004 as the National Technical Manager. He then recommenced his employment with Arciuli in January 2004 and purchased the Arciuli business in 2006.

374    In his role as the National Technical Manager at Carsilstone, Mr Arciuli initially dealt with queries from stonemasons and customers in New South Wales. In about 2003/2004, Carsilstone opened a factory in Victoria and he provided training to the Technical Manager in Victoria with respect to the Caesarstone slabs. He provided that training at the Harvey Norman Renovation Showroom in Preston, Victoria because the showroom was fitted out with a number of kitchens featuring Caesarstone benchtops and splashbacks. The training that he gave to the Technical Manager in Victoria included: matters relating to the various uses and applications of the Caesarstone slabs; the way in which the Caesarstone slabs should be fabricated; and the common problems that stonemasons faced with fabricating the Caesarstone slabs. He deposed that in about October 2003, Carsilstone opened a factory in Queensland and he provided the same training to the Technical Manager in Queensland.

375    Mr Arciuli deposed that Arciuli was the first Australian company to purchase the Caesarstone slabs in bulk in the Australian market. In or about 1998, Arciuli bought four or five containers of the Caesarstone slabs. Since that time, Arciuli had consistently cut and installed the Caesarstone slabs for its customers.

376    After the Caesarstone slabs were introduced into the Australian market, Mr Arciuli deposed, they increased in popularity very quickly. He estimated that in 2000, the Caesarstone slabs accounted for approximately 10% of orders placed with Arciuli. The market share for the slabs then increased by about 10% every year, such that by 2005, 50% to 60% of orders placed with Arciuli were for Caesarstone slabs. Between 2000 and 2005, Arciuli was one of the major stonemasons ordering, cutting and installing Caesarstone slabs.

377    Mr Arciuli deposed that, in 2005, Arciuli had a contract with the Harvey Norman retail stores to install all Caesarstone slabs for customers who placed orders for that product through the Harvey Norman Renovation showrooms throughout New South Wales. This contract also provided that Arciuli install all Caesarstone slabs used in the displays at the Harvey Norman Renovation showrooms throughout New South Wales. Since at least 2002, Mr Arciuli visited the Harvey Norman Renovation showrooms throughout Australia on many occasions and these showrooms would have 25-30 kitchens on display with many of them using Caesarstone slabs for benchtops and splashbacks.

378    Mr Arciuli deposed to fabricating and installing the Caesarstone slabs for a new kitchen display at the Harvey Norman Renovation showroom in Auburn, New South Wales in October 2005. He also referred to Caesarstone slabs being required for a benchtop and splashback at the Cappell kitchen and bathroom design studio in Chatswood, New South Wales in September 2004.

379    Mr Arciulis evidence was that prior to 2005, the Caesarstone slabs were being used predominantly for kitchen benchtops, vanity benchtops for bathrooms as well as for flooring and wall cladding.

380    He deposed that in 2004/05 the price of a Caesarstone slab was approximately $900 per slab or $200 per square metre. As a general rule, there was about 4.4 square metres to each Caesarstone slab. The cost of the materials (including the Caesarstone slab) was about one third of the total job with the remaining cost being labour costs. The total amount he charged in 2004/05 was about $600 per square metre or about $2,640 per Caesarstone slab. Those amounts included his labour costs. In the current market, the price of a Caesarstone slab had come down to about $550 to $600 per slab or about $120 to $130 per square metre. However, the labour costs for cutting and installing the Caesarstone slabs had not increased since 2004/2005.

381    In his experience at Arciuli, the use of the Caesarstone slabs for floors and walls had increased in the current market because the product was being so advertised and marketed by Caesarstone and its Australian distributors to the public in advertisements and on websites. No such advertisements existed in 2004/2005. In addition, in or about 2011 or 2012, Caesarstone Australia released a slab in 13mm thickness which was specifically designed for floors and wall applications as it was much thinner and lighter than the previous Caesarstone slabs, making them easier to apply as floors and walls.

382    He believed there had been less use of the Caesarstone slabs for wall cladding and flooring as compared to benchtops and splashbacks for the following reasons: the cost of the Caesarstone slabs was higher than most ceramic tiles; in the early 2000s, it was more common to use natural products such as marble or stone for wall claddings and flooring; and Caesarstone and Caesarstone Australia did not actively advertise to consumers the use of the Caesarstone slabs for wall claddings and flooring in advertisements until about 2010.

383    During his employment with Carsilstone, Mr Arciuli deposed, he received calls from consumers querying whether the Caesarstone slabs could be used on floors and walls. On each occasion, he would tell the consumers that the Caesarstone slabs could be used for flooring and wall claddings, however, he also told the consumers that the use of the Caesarstone slabs for flooring would void the warranty offered and that he was not aware of any suitable adhesives on the market which could guarantee adhesion of the Caesarstone slabs for flooring. Since he recommenced working at Arciuli, Mr Arciuli had also received similar calls from consumers querying whether the Caesarstone slabs could be used on floors and walls and had given similar information to the customers. He deposed that as at 2016, Arciuli cut and fitted Caesarstone slabs for about 20 jobs per week.

384    Mr Arciuli deposed that a stonemason would need to: measure the space where the customer wanted to install the Caesarstone slabs; quote for the job; if engaged, purchase the necessary quantity of slabs; cut the slabs to size; and install them.

385    While Mr Arciuli was employed at Carsilstone, customers would call the head office and the consumers would explain that they wanted to use the Caesarstone slabs for a building project. The head office would advise the consumers that they needed to engage a stonemason, and a list of stonemasons would be sent to the customers. In most cases, the stonemason was engaged by a builder, architect, interior designer, kitchen company or bathroom company and not by the end consumer.

386    Mr Arciuli deposed that in or about late 2002, Caesarstone slabs were installed at the Harvey Norman Renovation Showroom in Auburn, New South Wales under his supervision. The Caesarstone slabs were used as wall cladding and flooring in the store, and also in a kitchen display on benchtops and splashbacks.

387    Ms Vanessa Camenzuli was the New Homes Representative at Caesarstone Australia. She affirmed an affidavit on 3 June 2016. In 2004, she was employed by Tessera as a sales (retail) representative. In the sales (retail) representative role, she was required to call on kitchen companies, including showrooms, joiners and tile stores, to promote the Caesarstone slabs and their uses. Each of these was a trade channel for Caesarstone products. She also provided samples of the Caesarstone slabs and supplied brochures advertising and promoting them. In about 2008, she commenced a new role as the New Homes Representative at Caesarstone Australia. As the New Homes Representative, she was (and continued to be) responsible for: servicing existing customers; cold calling new potential customers; educating customers on the Caesarstone slabs and their various uses; and delivering samples and brochures to customers.

388    Ms Camenzuli deposed that, from the various training sessions that she attended which were offered by Caesarstone’s Australian distributors, she became aware of the various applications of the Caesarstone slabs including benchtops, splashbacks and bathroom vanities. She did not receive training for Caesarstone products in respect of flooring or wall applications when she commenced her employment. She deposed that the Caesarstone slabs could also be used for wall cladding. This use had become more popular in recent years. She could not recall when she was first told that the Caesarstone slabs could be used for wall cladding. She was also aware of the use of the Caesarstone slabs for the surrounds of lifts.

389    Ms Camenzuli deposed that Caesarstone did not warrant the use of the Caesarstone slabs for flooring. She was made aware of this in the course of her training when she commenced her employment. She deposed that it was possible that the Caesarstone slabs were being used for floors and walls, however, neither she nor her colleagues were informed about the use of the Caesarstone slabs after they had been sold. Therefore she had no records which showed where consumers had used the slabs that they had purchased.

390    When Ms Camenzuli started dealing with the Caesarstone slabs in 2004, there were Caesarstone branded “tiles” being sold. The Caesarstone branded “tiles” were not on any price lists but she saw them in the warehouse. She did not personally sell these products. She did not see Caesarstone branded tiles in the warehouse in 2005.

391    Ms Camenzuli deposed that if a consumer wanted to purchase Caesarstone slabs for use in the home, then they would need to engage a stonemason. The stonemason would measure, quote and purchase the slabs from Caesarstone Australia and then cut and install them for the consumer. An exception was where the consumer placed the order through a kitchen company.

392    In some cases, she would call kitchen companies and suggest that they install Caesarstone in place of the existing materials used for the kitchen display. In other cases, kitchen companies would approach her and ask if they could install Caesarstone in their kitchen displays. The measuring, cutting and fabricating of the Caesarstone for the kitchen displays needed to be undertaken by a stonemason and the kitchen companies would pay for that cost. If a kitchen company requested the Caesarstone slabs for use in their display kitchen(s) in their showroom(s), Ms Camenzuli would complete a “Free Slab Requisition Form” which would need to be authorised by a senior member of staff. In most of the requests that she dealt with, the Caesarstone slabs were used for benchtops and splashbacks. In the copies of the forms she annexed to her affidavit, all were benchtops and splashbacks.

393    From the various training sessions that Ms Camenzuli attended which were offered by Caesarstones Australian distributors, she was aware that the main differences between Caesarstone slabs and ceramic tiles were as follows: Caesarstone slabs needed to be wet cut. This meant that the Caesarstone slabs could not be cut on site but needed to be cut by a stonemason in a factory. In contrast, tiles could generally be cut on site (if the tiles needed to be cut); and due to the size of the Caesarstone slabs, they did not need grouting like tiles. As to this, if Caesarstone were to offer a new product, she would defer to Ms Hannah’s opinion on whether grout was required.

394    She deposed that the Caesarstone slabs came in one size (3060mm x 1440mm) and 20mm thickness. Some Caesarstone slabs were available in 13mm and some in 30mm thickness.

395    Mr Craig Christie was the Victorian Sales Manager at Caesarstone Australia. He affirmed an affidavit dated 6 June 2016. In October 2004, he was employed by Carsilstone as a Business Development Manager within the Domestic Builder Segment. In his role as Business Development Manager, he was responsible for meeting with small to medium sized builders and he was also responsible for entering into supply contracts with major domestic project home builders such as Metricon and Henley Properties. By entering into supply contracts with major home builders, the Caesarstone slabs were then used in display homes and in the specification details for new homes built by those project home builders.

396    In about 2011, he was promoted to Sales Manager for Victoria for Caesarstone Australia. In his role as Sales Manager, he was responsible for handling domestic related sales with kitchen companies, retail outlets, domestic builders and stonemasons.

397    Mr Christie deposed that when he commenced employment with Carsilstone, the primary use of the Caesarstone slabs was for kitchen and laundry benchtops as well as bathroom vanities. At the time, there had been a shift from the use of laminate surfaces to Caesarstone slabs.

398    He deposed that the Caesarstone slabs could and had also been used for wall cladding since October 2004. When he met with builders, he discussed the use of the Caesarstone slabs for that application. However, the reality was that due to cost constraints, the Caesarstone slabs were not often used for wall cladding as it was an expensive product for that type of application given the quantity of stone needed to cover a wall. The Caesarstone slabs were also expensive with the average slab costing $800.

399    Mr Christie deposed that the Caesarstone slabs could and had also been used for flooring since he commenced employment with Carsilstone. When he met with builders, he had discussed the application of the slabs for flooring. The main issue was that the warranty offered by Caesarstones Australian distributors became void. It was also expensive to use the Caesarstone slabs for flooring given the quantity of stone needed to cover a floor and given the cost of the slabs.

400    Mr Christie deposed that in 2004, high end builders with a build cost of over $500,000 had the budgets to use the Caesarstone slabs for flooring and wall cladding. Those builders would use the Caesarstone slabs for wall and floors as they could then match the colour and materials used for the floor to the wall to the vanity. In cross-examination, Mr Christie said a particular case did not come to mind in relation to the possibility that in 2004 builders with a build cost under $500,000 used Caesarstone slabs for flooring and wall cladding. Mr Christie also accepted that many of the high-end builders at that time would have only used the Caesarstone slabs at the time on benchtops.

401    Mr Christie deposed that the Caesarstone slabs could and had also been used for splashbacks since he commenced employment with Carsilstone. He estimated that in 2004, the percentage of customers that used Caesarstone slabs as a benchtop and a splashback would be about 5% of all sales made of Caesarstone slabs at the time. Over time, the use of Caesarstone slabs for splashbacks had increased and the percentage of customers that used Caesarstone slabs as a benchtop and also as a splashback would now be close to 10% of all sales made of Caesarstone slabs. Mr Christie deposed that he was able to give those estimates as he had been informed by stonemasons over the years of the various applications of the Caesarstone slabs by end consumers.

402    In cross-examination, Mr Christie said that his understanding was that splashbacks formed part of Caesarstones product used in vertical applications. He did accept that the splashback was in form connected with the benchtop.

403    Mr Christie deposed that when he commenced his employment with Carsilstone, he met with builders to educate them about the Caesarstone slabs, its uses and applications; and he worked with stonemasons to educate them on the technical application of the Caesarstone slabs including how to install them and the techniques involved. There was no real difference between fabricating the Caesarstone slabs and fabricating a natural stone product. For that reason, stonemasons generally had used the Caesarstone slabs for the same applications as natural stone which included benchtops, splashbacks, vanities, floors and walls.

404    Mr Christie deposed that, in his opinion, the popularity of the Caesarstone slabs could be attributed to: the colour range available had a point of difference from natural stones in the market; the colour consistency of the Caesarstone slabs; the Caesarstone slabs were non-porous which meant that they did not need to be re-sealed and the slabs could be easily maintained; the Caesarstone slabs shared similar characteristics to natural benchtops; there was a cost-saving in comparison to natural stone products when using the Caesarstone slabs for benchtops and vanities; and stonemasons usually found that the Caesarstone slabs were more predictable to work with and less risky than working with natural stone. Natural stone cost more to fabricate due to the additional work involved in ensuring the structure of the stone remained intact when being fabricated.

405    Mr Christie deposed that when he commenced employment with Carsilstone, he received technical training for about one to two weeks from Mr Andrew Dixon and Mr Alex Skentzos on the Caesarstone slabs, their various uses and applications, as well as training relating to their sale. He was also told about the various applications of the slabs including kitchen benchtops, vanities, any wet areas (horizontal or vertical) and flooring. He was told by Mr Dixon and Mr Skentzos to promote the Caesarstone slabs for those applications and he had done so since he commenced his employment. He was also told by Mr Dixon and Mr Skentzos to promote the Caesarstone slabs for floors and walls as that presented a volume opportunity as more Caesarstone slabs needed to be used to cover these areas and the business also wanted to convert to Caesarstone slabs a portion of the market that used natural stone for those areas.

406    In cross-examination, Mr Christie said his recollection was that, as at May 2005, Carsilstone and/or Tessera had already satisfied themselves that the relevant slip resistance requirements had been met for using Caesarstone slabs for flooring in domestic applications, not necessarily some commercial applications. His understanding was that from 2004 the product was appropriate for flooring in a domestic situation. He said he clearly remembered conversations that he had had within the marketplace, with customers, since he had started with Caesarstone where he had said the product technically could be used as flooring within domestic applications. He could not recall saying in May 2005 or June 2005 that Caesarstone was suitable for use as flooring.

407    He said he was given information to push Caesarstone into possible use as flooring, however because it was not covered by warranty, that it was up to the builder in question to feel comfortable with its application. He said the conversation was clear with the customer that if it fell within the building codes and the regulations that it had to be constructed by, then the customer or the client would be comfortable with something constructed to those standards. The Fabrication Manual was a trade-related document that went to trade-related areas. So the communication back to the end consumer, for example a builder, would be that if it conformed to the build within the building codes, Caesarstone did not necessarily decide for them what materials would be used if it conformed. Mr Christie said the conversation with the customer was that the product by definition within the building codes could be used. He had multiple conversations with many clients outlining the product could be used in a horizontal, vertical or in a flooring application if the client so desired. The building code determined what materials were approved for use as flooring.

408    Mr Christie deposed that during regular meetings for internal staff, which were held about every one to two months, staff discussed the Caesarstone slabs and new colours. There was an emphasis in those meetings to take the information they had learned to market and drive the educational process to Caesarstone Australias clients. Staff had also regularly discussed the various applications of the Caesarstone slabs and the need to continue to increase use of the Caesarstone slabs for those applications which included floors and wall cladding.

409    Mr Christie deposed that the Caesarstone slabs could not be ordered directly by consumers from Caesarstone Australia. Customers needed to engage a stonemason to order the Caesarstone slabs, which the stonemason then cut to size and installed. In the case of the project home industry, the customer selected the Caesarstone finish and advised their builder, for example Metricon, who would in turn place an order with a stonemason. The stonemason then ordered the required Caesarstone slabs and cut the slabs to size and installed them.

410    Mr Christie deposed that the Harvey Norman kitchen and bathroom showroom in South Oakleigh (which had now closed) had used the Caesarstone slabs on floors and walls. The Harvey Norman kitchen and bathroom showroom in South Oakleigh had various display kitchens on site which featured Caesarstone slabs including as benchtops and splashbacks.

411    From speaking with stonemasons and visiting various homes where the Caesarstone slabs had been used, Mr Christie was aware that use of the Caesarstone slabs had increased over time and it was becoming more common to see them being used in certain areas of the home in which the product had not been traditionally used, for example, floors and walls. The Caesarstone slabs were increasingly being used for these applications for the following reasons: consumers had greater expectations regarding the finishes on certain areas of the house, such as bathrooms and laundries; the cost of the Caesarstone slabs was becoming cheaper; there had been a trend away from glass towards the natural stone look. Caesarstone Australia had developed a colour palette that had worked well with the market and which had been popular with consumers and which was driving a demand for the product in that regard; and from an aesthetic point of view, because of the size of Caesarstone slabs, there were no grouting issues and therefore the finish of the product looked much cleaner and more beautiful than other products on the market such as traditional ceramic tiles.

412    Ms Julie Stojsic was the New South Wales Operations Manager at Caesarstone Australia, having been promoted to that position in 2013. She affirmed an affidavit dated 26 May 2016.

413    In August 2004, she was employed by Tessera as a Customer Service Clerk, responsible for dealing with stonemasons and taking orders for the Caesarstone slabs. A stonemason would order the quantity of Caesarstone slabs and silicone that they required for a project. She would process the order, take payment, make sure the order was correct and was loaded from the warehouse.

414    She deposed that stonemasons were then required to install the Caesarstone slabs in accordance with the Caesarstone Australia Fabrication Manual. Caesarstone Australias practice was that before an account was opened for a stonemason, the stonemason must sign off on the Fabrication Manual and return the signed Fabrication Manual to Caesarstone Australia. That process was in place so as to confirm that the stonemason would install the Caesarstone slabs in accordance with those instructions. In cross-examination, Ms Stojsic said that practice was in place as at June 2005. She said this was an important practice and that in her experience no account was opened before that signed form was returned. She agreed that the contents of the Fabrication Manual were the means by which Tessera or Carsilstone, the relevant entity as at June 2005, exercised control over how stonemasons fabricated and installed the slabs.

415    Ms Stojsic deposed that, while she was responsible for taking orders for the Caesarstone slabs, she was not usually told where they would be installed. For that reason, there were no records at Caesarstone Australia which detailed where the Caesarstone slabs were installed and in what rooms the Caesarstone slabs were installed.

416    She deposed that from her training and attending company meetings, she was aware that from 2004 the Caesarstone slabs were generally promoted for use for kitchen benchtops and splashbacks and from 2006 Caesarstone slabs were promoted for use for bathroom walls and vanities.

417    She deposed that the Fabrication Manual provided that if the Caesarstone slabs were used for flooring then the warranty was void. She advised stonemasons of that fact.

418    During her employment with Tessera and later with Caesarstone Australia, Ms Stojsic reviewed the care and maintenance brochures which were produced by these companies which instructed customers how to clean and maintain the Caesarstone slabs. She became aware of the ways in which the Caesarstone slabs should be cleaned and maintained from reading those brochures. Those brochures were given to kitchen companies and stonemasons to provide to the end consumer so that they were all aware of the ways in which the Caesarstone slabs should be cleaned and maintained. These brochures later became available online.

419    Ms Stojsic deposed that she was not involved in performing any maintenance for the Caesarstone slabs following customer complaints. There were technical managers who were responsible for conducting service calls and working with stonemasons to answer any queries.

420    In cross-examination, Ms Stojsic agreed that the statement in the Fabrication Manual that Caesarstone was not suitable for use for flooring as at May 2005 was a direction to stonemasons and referred to both interior and exterior flooring. She said that if anybody wanted to install Caesarstone on the floor, the company would say that it would void the warranty because it could scratch easily.

421    Ms Stojsic also agreed that she regarded as accurate and correct at the time the statement in the FAQs section of the company’s website stating that Caesarstone could not be used as flooring.

422    Mr Paul Wendell had been, since April 2016, the Business Development Manager at Caesarstone Australia. He swore an affidavit dated 6 June 2016. Between January 2003 and June 2004, he was employed by Tessera as a TENAX Sales Representative. TENAX was a polymassive glue that stonemasons used to laminate benchtops and to join slabs. Between July 2004 and December 2004, he was employed by Arciuli as a Production Manager. During that time he was responsible for overseeing the Arciuli stone factory and for supervising staff.

423    Mr Wendell deposed that during the time that he worked for Arciuli, Caesarstone slabs were becoming very popular within the housing market. From his role at Arciuli he was aware that most stonemasons were working with Caesarstone slabs every day.

424    In his role at Arciuli, he would receive plans from kitchen companies, builders, developers and anyone else ordering stone products (including Caesarstone slabs) who were seeking to have those products fabricated and installed. The plans would specify the particular stone products to be used and the plans would show the intended application of the stone. He also assisted in delivering the finished stone in a number of cases to the required site and he also assisted the installers. He was aware of the various applications of the Caesarstone slabs at the time and those applications included benchtops, wall claddings, splashbacks and flooring.

425    From January 2005 to July 2007, Mr Wendell was employed by Carsilstone in the position of NSW Stonemason Account Manager. In that role he was responsible for: taking orders for and distributing Caesarstone slabs to all stonemason customers and establishing client accounts; and promoting the Caesarstone slabs. He was responsible for promoting the Caesarstone slabs for the same applications for which one would use natural stone such as benchtops, flooring and walls. The only application that he did not promote the Caesarstone slabs was for external use. Mr Wendell was also responsible for liaising with every facet of the Caesarstone business, including architectural staff and warehouse staff.

426    In most cases, when he sold the Caesarstone slabs to stonemasons, Mr Wendell would not be told where the Caesarstone slabs were being installed. Carsilstone did not have records regarding the applications of the Caesarstone slabs which were purchased, except if the consumer completed their warranty card and specified the specific application.

427    From July 2007 to 2014, Mr Wendell was not employed in any roles within the stone business.

428    In 2014, he was employed by Smartstone, a major competitor of Caesarstone’s Australian distributors. He worked for Smartstone in 2014 until the end of 2015.

429    In April 2016, he was employed by Caesarstone Australia in the position of Business Development Manager. In that role he was responsible for ensuring that if the Caesarstone slabs were specified in architectural specifications for major projects that Caesarstone slabs were installed as specified. He was responsible for keeping a record of all projects which had Caesarstone slabs specified by an architect and which have been costed by Caesarstone Australia and to make sure that the builder used the Caesarstone slabs in those projects. He was also responsible for responding to technical queries and dealing with warranty claims.

430    Mr Wendell deposed that the Caesarstone slabs were warranted for internal use only (except flooring) but not for external use.

431    Due to its composition, Mr Wendell deposed, the Caesarstone slab expanded and contracted, even over the period of one day, which meant that the slabs needed to be installed with an adhesive that also expanded and contracted with the slabs.

432    The Caesarstone slabs could also react around intense heat. Therefore, when the Caesarstone slabs were used as a splashback, the backburner of the cooktop must be located approximately 250mm to 300mm from the centre of the cooktop otherwise the heat could potentially crack the slabs. He was not aware of any instances of the Caesarstone cracking when being used as a splashback.

433    Mr Wendell deposed that Caesarstone’s Australian distributors sold Caesarstone mosaic quartz tiles that came in a range of sizes being 300 x 300mm and 600 x 600mm. Those tiles were available in polished, mosaic rumbled or honed finishes and they were manufactured by Cimstone. Those tiles were available for purchase when he commenced his employment at Tessera in 2003 and they were discontinued in around 2007. These tiles were not popular with customers.

434    In about 2005, Mr Wendell deposed, the Caesarstone slabs were used extensively for a residential apartment and restaurant development at Cronulla in New South Wales. This site was developed by Mr Kon Kalpou, a director of Carsilstone. The Caesarstone slabs were used on staircases as well as for benchtops in the apartments and throughout the bathrooms in the apartments including on the walls, on the floors, for the shower bases, on window sills and for the vanities.

435    Mr Wendell deposed that, when the Caesarstone slabs were first released onto the Australian market, it was a very expensive product and was priced more expensively than most marble and granite. Mr Wendell recalled that when the Caesarstone slabs were first released, a Caesarstone slab (in the standard range of 3060mm x 1320mm) was sold for approximately AUD1,149 per slab + GST. As at June 2016, the Caesarstone slabs were much more affordable and were sold at a much cheaper price. The dimensions of the Caesarstone slabs had changed over the years and, as at June 2016, the Caesarstone slabs measured 3060mm x 1440mm.

436    In cross-examination, Mr Wendell agreed that one reason why a Caesarstone slab was not a benchtop was because the benchtop was, for example, two slabs that had been laminated together to produce the benchtop. And in addition to lamination, to produce a benchtop, there were a number of other steps that the fabricator must undertake, for example, polishing the edges and the like. And that took considerable skill and knowledge on the part of the fabricator. The slab was not a benchtop, splashback, floor panel or wall panel when delivered to the stonemason because at that point it had not yet been manufactured. He agreed it was the craftsmanship of the stonemason that produced the benchtop, splashback, floor panel or wall panel from the slab and if the craftsmanship was poor the quality of the product would suffer as a result.

437    Mr Wendell agreed that if the stonemasons did not follow Caesarstone’s installation instructions, Caesarstone had no control over what the final product would look like. It was critical to him for marketing that the products the consumers were buying looked like the finished product they saw on the website. Otherwise his business model would be effectively ruined.

438    Mr Wendell was shown pages representing the content on Caesarstone Australia’s website in the five-year period between November 2010 and February 2015. He regarded as accurate and correct the statement that Caesarstone could not be used as flooring as it was not covered by the Caesarstone ten year limited warranty. He said that nevertheless in the period between January 2005 and July 2007 he told his stonemason customers that the product was suitable for flooring but that it was not warranted for safe flooring. He did not specifically recommend Caesarstone for flooring but said it was substitutable for natural stone.

439    Ms Shirley Gal was a partner in the firm of Eitan, Mehulal & Sadot. She was the intellectual property attorney for Caesarstone and managed its trade mark matters globally. She had acted for Caesarstone since 2005. Her affidavit was dated 8 June 2016.

440    Ms Gal deposed that Caesarstone filed the Caesar Mosaic mark application in Class 20 on 26 June 2002. The Caesar Mosaic mark was opposed by Ceramiche Caesar on 26 September 2003 (Opposition).

441    Commencing in 2005, in her capacity as Caesarstone’s external legal counsel, Ms Gal acted for Caesarstone in relation to the Opposition, instructing Chrysiliou IP, who were Caesarstones Australian legal counsel for the Caesar Mosaic mark at the time. During 2005 and 2006, Caesarstone and Ceramiche Caesar attempted to negotiate a settlement agreement in relation to the Opposition, through Ceramiche Caesar’s local external legal counsel. She received her instructions from Esther Ben-Malki at Caesarstone, who no longer worked for Caesarstone.

442    Ms Gal deposed that she had also acted for Caesarstone in relation to the opposition which Ceramiche Caesar filed against the Caesarstone Goods Word mark. The filing of Ceramiche Caesar’s evidence in support in relation to its opposition to the trade mark in 2009 was the first time that she received or was aware of any information concerning the nature and scope of Ceramiche Caesar’s presence and sales in Australia. She believed that this was also the first time that Caesarstone obtained any information about the nature and scope of Ceramiche Caesars presence and sales in Australia.

443    In cross-examination, Ms Gal was taken to an Australian trade mark application by Caesarstone dated 2 June 2005 to register the trade mark CAESARSTONE in Class 19. The class read: “Tiles, panels for floors, floor coverings, wall cladding, flooring and ceilings; non-metallic covers for use with floors and parts thereof; profiles and floor skirting boards.” She agreed that the drafter had not listed the goods in alphabetical order. She said that generally in her own drafting practice the order of the listing of the goods had a particular meaning but it was not always that the specific goods came first and the broader description came after, sometimes it was the other way around. She did not think there was a particular order that was made consistently in each and every country. With the Class 19 specification she understood that the specific items were drafted first and then the broader description was the second and third part of it. She was asked whether it was the intention of the trade mark applicant to use the trade mark Caesarstone for tiles and answered that she believed it was there to cover any option of future uses or intended uses of the trade mark. She said there was no requirement to actually use each and every item of the list of goods upon filing an application. She did not know what the intention of the drafter was. She could not assist the Court in relation to this document one way or the other as to whether the drafter regarded the word “tiles” to be an apt description for the Caesarstone slabs at the time the trade mark application was filed.

444    Ms Gal was taken to the Australian Trade Marks Register for trade mark No. 861751 for goods and services in Class 20: see [4] above. She agreed that Caesarstone had registered throughout the world for kitchen benchtops in Class 20 and that was because it had very much used the Caesarstone trade mark in connection with kitchen benchtops. Ms Gal agreed that kitchen benchtops and splashbacks were often sold together with one another and that one reason Caesarstone had registered this trade mark in Class 20 for surrounds for kitchens was to obtain registered trade mark protection for splashbacks.

445    Jonathan Feder, solicitor, affirmed an affidavit dated 8 June 2016. To his affidavit Mr Feder annexed the following: print-outs of dictionary definitions for the word “Caesar” from the Oxford English Dictionary and the Macquarie Dictionary; a print-out of the first page of results (being 10 hits) from Google searches for the term “Caesar”; print-outs from the Wikipedia website for the entries “Caesar (title)” and “Caesar (disambiguation)”; print-outs of dictionary definitions for the word “Caesarea” from the Oxford English Dictionary and the Macquarie Dictionary; a print-out of the first page of results (being 10 hits) from Google searches for the term “Caesarea” and print-outs from some of the websites included in the first page of results; print-outs from the Wikipedia website for the entry “Caesarea”; photocopies of dictionary definitions for the word “tile” from the Australian Oxford English Dictionary and the Macquarie Dictionary; print-outs from the Australian Trade Marks Online Classification Search System for goods specified in Classes 19 and 20 as well as the class headings for Classes 19 and 20; print-outs from the Australian Trade Marks Online Classification Search System for Australian trade mark Nos. 1031251 and 1110341; an ASIC current and historical extract for The Nuns Pool Pty Limited, having premises in Cronulla, New South Wales; an ASIC current and historical extract for The Nuns Pool Pty Limited; and a print-out from The Nun’s Pool Pty Limited website located at domain name www.thenunspool.com.

446    Mr Feder was not required for cross-examination.

The parties’ submissions

Ceramiche Caesar’s submissions

447    In the first appeal, Ceramiche Caesar pressed three grounds of opposition against the Caesarstone Goods Word mark, which I will also refer to as the first disputed mark, trade mark No. 1058321, the priority date by reference to which the claims were to be assessed being 2 June 2005.

448    Those grounds were:

(a)    prior conflicting mark – Trade Marks Act, ss 44(1) and (2);

(b)    if Caesarstone succeeded under s 44(4), showing prior use, then Ceramiche Caesar relied in answer on its earlier use of a similar trade mark – s 58A; and

(c)    Caesarstone not intending to use trade mark – s 59.

449    It may be recalled that the relevant class, Class 19, was as follows:

Class 19: Panels for floors, floor coverings, wall cladding, ceilings; non-metallic covers for use with floors and parts thereof; profiles and floor skirting boards; none of the foregoing being in the nature of tiles

450    Ceramiche Caesar submitted that Caesarstone accepted the priority date of the CÆSAR Device mark was earlier and the goods were similar.

451    In the second appeal, Ceramiche Caesar pressed two grounds of opposition against the CAESARSTONE Device mark, which I will also refer to as the second disputed mark, trade mark No. 1211153, the priority date by reference to which the claims were to be assessed being 26 August 2007. This mark is shown at [2(b)] above.

452    Those grounds were:

(a)    prior conflicting mark - ss 44(1) and (2); and

(b)    Caesarstone not intending to use trade mark - s 59.

Caesarstone did not allege prior use under s 44(4) of that second disputed trade mark.

453    It may be recalled that the relevant classes, Class 19, Class 20, Class 35 and Class 37 were as follows:

Class: 19 Panels for floors, floor coverings not in the nature of tiles, wall cladding, flooring not in the nature of tiles, and ceilings; non-metallic covers for use with floors and parts thereof not in the nature of tiles; profiles and floor skirting boards; slabs formed of composite stone for building panels, counter tops, vanity tops, floors, stairs, and walls

Class: 20 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

Class: 35 Wholesale and retail services; wholesale and retail stores and wholesale and retail showrooms featuring 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; offering consulting, support, marketing, promotional and technical assistance in the establishment and operation of distributorship, dealership, franchising, wholesale and retail stores 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 underlining indicated the services of concern to Ceramiche Caesar.

454    The third proceedings was the rectification action in which Ceramiche Caesar applied for the cancellation of the Caesarstone Services Word mark, which I will also call the third disputed mark, under s 88(1). The three grounds of opposition were the same as for the first disputed trade mark, s 88(2)(a), with the priority date being 26 August 2007 and with a further ground for cancellation under s 88(2)(c), being that “because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion”: s 88(2)(c). The time when the application for rectification was filed was 21 December 2015.

455    The services for which the third disputed mark was registered were only those in Class 35 and Class 37, as follows:

Class 35: Wholesale and retail services; wholesale and retail stores and wholesale and retail showrooms featuring 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; offering consulting, support, marketing, promotional and technical assistance in the establishment and operation of distributorship, dealership, franchising, wholesale and retail stores 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

Again, the underlining indicated the services of concern to Ceramiche Caesar.

456    In essence, Ceramiche Caesar’s case was that the disputed trade marks would interfere with the scope of its pre-existing statutory rights in the CÆSAR Device mark for Class 19 goods, by reason of their deceptive similarity. In the two appeals, the Registrar’s delegates had agreed, finding the likelihood of confusion was “very high”, having regard to the similarity between the relevant trade marks; the Class 19 goods/related services; and the common trade channels to the market. Ceramiche Caesar submitted that those conclusions were correct and should be given weight and that there was additional evidence reinforcing how closely the relevant trade channels were intertwined.

457    Ceramiche Caesar submitted it was also important to recognise that the raw, unprocessed 1.4 x 3m slab that Caesarstone Australia distributed to stonemasons was not a benchtop, splashback, floor panel or piece of wall cladding. Upon delivery to the stonemason, it was a piece of raw building material, capable of being fabricated into a variety of different goods. It was the craftsmanship of the stonemason that transformed the raw slab into a benchtop, splashback, floor panel or wall panel.

458    Ceramiche Caesar submitted that Caesarstone already owned an unchallenged registration for CAESARSTONE in Class 20: see [4] above. This Class 20 registration already covered splashbacks. At issue was Caesarstone’s wish to extend the scope of its registered trade mark protection into Class 19 flooring and (non-splashback) walling goods, and related services. Caesarstone’s submission that there was a need to obtain a registration in Class 19 for splashbacks should not be accepted, when the pre-existing Class 20 registration plainly already covered splashbacks.

459    All of the Class 19 goods specified in the first disputed trade mark application were finished goods – e.g., a floor panel. A raw slab was not a floor or wall panel. The word “slab” did not appear anywhere in the Class 19 designation of the first disputed trade mark.

460    This may be compared, Ceramiche Caesar submitted, with the Class 19 goods the subject of the second disputed mark. In that instance, the drafter had specified both finished goods (e.g. “Panels for floors”) and “slabs formed of composite stone”:

Panels for floors, floor coverings not in the nature of tiles, wall cladding, flooring not in the nature of tiles, and ceilings; non-metallic covers for use with floors and parts thereof not in the nature of tiles; profiles and floor skirting boards; slabs formed of composite stone for building panels, counter tops, vanity tops, floors, stairs, and walls (Underlining added)

The underlined words, Ceramiche Caesar accepted, encompassed a raw slab prior to it being fabricated into a countertop, a vanity top, a floor, stair or wall by a stonemason.

461    Ceramiche Caesar submitted that that although Caesarstone and Caesarstone Australia did not themselves sell the fabricated goods, but only raw slabs, the reasons why Caesarstone sought registration for fabricated Class 19 goods included:

(a)    To generate consumer demand for goods that had been fabricated from Caesarstone slabs, Caesarstone and Caesarstone Australia promoted the fabricated goods on their website, in their advertising and brochures, and in showrooms. Their customers also promoted the fabricated goods to the consumer, for example in display kitchens.

(b)    It was necessary to promote the fabricated goods to generate consumer demand, because it was the fabricated benchtop, splashback, floor or wall panel (not a raw slab) that consumers needed to visualise in order to decide whether or not to purchase the product. The marketing brochures depicted fabricated panels or tiles or benchtops because pictures of raw slabs would not drive consumer demand.

(c)    Each promotional use of the CAESARSTONE trade mark in Australia in connection with the fabricated goods was a trade mark use within the meaning of the Trade Marks Act for those goods: s 17.

462    In relation to what it referred to as the “tile disclaimer”, Ceramiche Caesar submitted that when the first disputed mark was filed on 2 June 2005, “Tiles” headed the list in the Class 19 specification. This was deliberately done because the word “tile” was apt to describe a floor or wall panel that had been fabricated from a Caesarstone slab. That was so whether or not it was apt to describe a raw, unprocessed slab that had not yet had its use determined to be a benchtop or splashback or a floor or wall panel. In the presentation held on 12 July 2005 at the Carsilstone/Tessera national conference the presenter from Caesarstone used the word “floor tiles” to describe the future flooring application of Caesarstone that was being presented. That could be taken as reflecting Caesarstone’s intention at about June 2005.

463    During the prosecution of the first disputed mark, Caesarstone sought to address this by deleting the word “Tiles” and by adding the disclaimer “none of the foregoing in the nature of tiles” to the Class 19 goods. But Caesarstone now conceded that the goods were similar goods within the meaning of s 44(1) even with the disclaimer, which was what the Registrar’s delegates found as well. The effect of the disclaimer, Ceramiche Caesar submitted, was to disclaim the very goods that Caesarstone wished to use the first disputed trade mark for as at June 2005, being goods that it continued to wish to use the trade mark in connection with and also goods that it asserted were prior used.

464    Ceramiche Caesar submitted that having regard to Caesarstone’s clear intention at the priority date, and now, to market tiles in Class 19, Caesarstone had to explain how the semantic distinction between a floor panel that was “in the nature of a tile” and a floor panel that was “not in the nature of tiles” was workable in the marketplace, but Caesarstone had not done so. The disclaimer was unworkable and ineffective in avoiding the likelihood of confusion.

465    Ceramiche Caesar submitted that in assessing deceptive similarity under s 44(1) it was the statutory rights of use, all legitimate or proper uses to which each mark might be put, rather than actual use, that must be considered: Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; 294 ALR 661 at [114]; Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; 129 CLR 353 at 362 per Mason J.

466    In this case, the scope of the “normal, fair use” under comparison included the following: first, the promotion and/or sale of a fabricated CAESARSTONE branded fabricated wall and floor panel directly to a suburban family by a tile retailer, kitchen company, bathroom company or stonemason, which or who also sold tiles; second, a sale by a tile retailer, kitchen company or bathroom company in which the consumer never met a stonemason until after the deposit for the CAESARSTONE branded floor or wall panel was paid and where the stonemason whom the consumer dealt with was also a tiler, or worked for a tiling business, where the consumer may have no knowledge or understanding of the distinction between a stonemason and a tiler; third, a sale in which the CAESARSTONE branded floor or wall panel was a ceramic floor or wall panel, with no stonemason involved in its installation. This was within the scope of normal and fair use under the first and second disputed marks, because the goods as specified in those trade marks were not limited to engineered stone surfaces. They included within their scope ceramic floor or wall panels. Caesarstone had stated in its 2015 and 2017 annual reports that it was interested in the possibility of acquiring a ceramics business. There was no evidence this was not of interest to it at June 2005. Fourth, was a sale through one of the above trade channels in which the Caesarstone branded floor or wall panel was sold alongside a CÆSAR Device branded ceramic tile that was marketed as having been made from stoneware. This was within the notional use under comparison because stoneware was a type of ceramic. Indeed, “porcelain stoneware” was the type of ceramic that Ceramiche Caesar used for its own tiles. Fifth, a sale in which the parties’ respective products were marketed at the same or a comparable price. Sixth, a sale in which both the goods and the manner in which they were promoted had the same or a very similar “look and feel”. Other examples of notional fair use through overlapping trade channels included sales to the end consumer by architects, interior designers and builders. There was no dispute such persons offered to their clientele a range of different tiles and floor and wall panels.

467    If registration were granted, Caesarstone would be given statutory rights to sell floor or wall cladding (including made out of ceramics) in stores that sold tiles, at the same price as tiles, the panels or cladding in question being installed by a tiler rather than a stonemason; or alternatively, by a stonemason who was also a tiler.

468    Ceramiche Caesar submitted that the s 44 ground was established for the first disputed mark because it was the owner of the prior registered CÆSAR Device mark; that prior mark was registered in respect of similar goods to the Class 19 goods covered by the first disputed mark, and the first disputed mark was deceptively similar. Caesarstone accepted that the priority date of the CÆSAR Device mark was earlier and the goods were similar, so that confined the scope of the dispute.

469    Ceramiche Caesar submitted that this was a clear case of deceptive similarity. It cited Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; 275 ALR 526 at [100] and [111] per Yates J.

470    There was a “very high” likelihood of confusion, as the Registrar’s delegates held. The essential or most memorable and distinctive feature of the prior registered CÆSAR Device mark that fixed in the consumer’s recollection was the word CAESAR. It brought to mind the idea of the Roman Caesars and their associated connotations of supremacy, power and authority. The stylisation of the word “CAESAR (the first “A” and the adjacent “E” were a Latin ligature) was less memorable and of secondary significance. Some consumers of imperfect recollection were unlikely to recall it. To the extent that it was recalled, it served only to reinforce the idea of the word CAESAR – it being widely known that Latin language was used in the age of the Roman Caesars.

471    Ceramiche Caesar submitted that the Caesarstone trade mark incorporated the same distinctive and memorable feature: the word CAESAR. As such, it brought to mind the same idea of the Roman Caesars. That gave rise to a high likelihood of confusion. There was no escaping that the word CAESAR in the Caesarstone trade mark was recognised as such and conveyed the same idea of the Roman Caesars. Reference was made to the evidence of Mr Dixon.

472    The ligature in the CÆSAR Device mark merely illustrated and reinforced the same idea of the Roman Caesars that the Caesarstone trade mark conveyed. Nor, Ceramiche Caesar submitted, did the presence of the word STONE in Caesarstone avoid confusion: the word stone was directly descriptive of a characteristic of Class 19 goods (they were made from stone) including ceramic goods (stoneware was a type of ceramic). Reference was made to the evidence of Ms Hannah that the word STONE was commonly used in trade marks for the Class 19 goods to signify to the consumer that the product was made from stone. The evidence included various examples of other traders using the word STONE for Class 19 goods in this way (including, Tessera Stone and Tiles, Carsilstone, Smartstone, Essastone, Stone Italiana, Silestone and Quarella Industrial Stone Composite).

473    Ceramiche Caesar submitted it did not matter whether the confusion proceeded to the point of actual deception: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 959 per Kitto J, cited in Optical 88 at [114]. It was enough if the ordinary person entertained a reasonable doubt. This was a relatively low threshold. It was well-satisfied here.

474    Ceramiche Caesar submitted: “It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale”: Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [105]; affirmed (on this point of principle) by the Full Court in Vivo at [115]. It was enough that confusion occurred at some point during the course of trade. This included the point in time of the consumer being exposed to promotion of the Caesarstone branded flooring or walling in the showroom of a tile retailer, kitchen or bathroom company. It also included confusion in the course of a consumer viewing Caesarstone branded flooring or walling in online or print copy advertising materials.

475    Further, it was to be remembered that stoneware was a type of ceramics. As it happened, Ceramiche Caesar’s ceramic tiles were made from a stoneware material. As such, they had been described by Ceramiche Caesar in its marketing materials, since at least 2003, as “Caesar porcelain stoneware” or “Caesar stoneware”. The confusion that was likely to result when the consumer asked a sales representative for “Caesar stoneware flooring” or “Caesar stoneware tiles” (and the like) was obvious.

476    The additional common trade channels (consumers also purchased floor and wall panels from architects, interior designers, builders etc) similarly presented a likelihood of confusion.

477    Ceramiche Caesar submitted that when assessing the distinctiveness of a trade mark, the Courts had for many years drawn a distinction between: words which “convey an allusive or metaphorical meaning” in respect of goods; and words which directly describe the character or quality of the goods. The former category of word was prima facie treated as distinctive for the purposes of the Trade Marks Act. On the other hand, words which directly described the character or quality of the goods were treated under the Trade Marks Act as being non-distinctive: see Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, 254 CLR 337 at [71], [73].

478    The word CAESAR did not directly describe the quality or a characteristic of a tile/floor/wall panel or cladding. When used for those goods, it conveyed an allusive or metaphorical meaning. The circumstance that the metaphor was simple, clever and effective for the marketing of Class 19 goods could not deprive the word CAESAR of distinctiveness. Nor did the circumstance that CAESAR was the surname of the Roman Caesars deprive that word of distinctiveness when used for tiles/floor/wall panels or cladding: Shanahan’s Australian Law of Trade Marks and Passing Off (6th ed) (Shanahan) at [20.675]. Of course, none of the Roman Caesars were known in Australia for having manufactured tiles/floor panels/wall panels or cladding.

479    When assessing the distinctiveness of a word (foreign or English), Ceramiche Caesar submitted, it was also relevant to consider whether or not rival traders in fact use that word in connection with their goods: Cantarella at [75]-[76]. Here, there was no evidence that any other trader in tiles/floor/wall panels or wall cladding had ever used the word CAESAR, before or after the priority date. Ceramiche Caesar referred in this respect to the evidence of Mr Ryan.

480    Ceramiche Caesar submitted that the absence of evidence of any marketplace confusion to date did not avoid a finding of deceptive similarity. First, the parties here had traded predominantly in different corners of the market: Caesarstone fabricated goods, benchtops and splashbacks and Ceramiche Caesar tiles for floor and wall panels. Second, Ceramiche Caesar’s trading activity in Australia (particularly in the pre-priority date period) had been relatively modest. Ceramiche Caesar conceded the scope of its trading activity was insufficient to generate a reputation for the purposes of s 60 of the Trade Marks Act as at June 2005. Third, Caesarstone had not established any reputation itself in floor or wall panels as at June 2005 (or today). Rather, it was known for benchtops and splashbacks whereas Ceramiche Caesar had been known for tiles for floor and wall panels. All of the witnesses who were asked about this agreed that benchtops and splashbacks were the predominant Caesarstone market usage. Fourth, in so far as tiles could be used as splashbacks: the Caesarstone splashbacks were sold together with Caesarstone fabricated benchtops (the two goods fitting together like “hand and glove). Given Caesarstone’s market reputation for benchtops, this mitigated against the risk of confusion for those goods (the same could be said for floor and wall panels – which were not integrally or conceptually connected with a benchtop). Ceramiche Caesar had never specifically promoted its tiles for use as a splashback. It had stayed out of promoting in Caesarstone’s market space. Fifth, as a result of the foregoing considerations, the marketplace had never encountered the notional scenario of CÆSAR Device branded tiles being sold in substantial quantities in the same market as Caesarstone branded floor or wall panels. That was where the deceptive similarity arose. Sixth, Ceramiche Caesar referred to the remarks of Mason J in Berlei Hestia Industries Limited v Bali Co Inc at 363 when finding the trade mark Bali-Bra deceptively similar to Berlei:

A factor to be taken into account is that no case of actual deception was established. Its significance is diminished by the circumstance that there has been a marked difference in the price and character of the goods manufactured by the parties. It was suggested also that the likelihood of deception would decrease as the respondent expanded its Australian business and as its mark became more widely known. However, even if the respondent’s mark becomes more widely known the opportunity for confusion will remain; there can be, as I see it, no assurance that the prospect of confusion will be eliminated.

Finally, ss 10 and 44 of the Trade Marks Act did not require any actual confusion or deception to be shown before they were engaged. The inquiry under s 10 and s 44 was directed towards the scope of statutory rights, not actual market usage. Where, as here, there was a conflict in the scope of the statutory rights, the section was engaged, irrespective of whether any actual marketplace deception or confusion was shown.

481    As to Caesarstone’s claim that it was entitled to rely on the exception under s 44(4) by reason of it having used the Caesarstone trade mark in Australia for the fabricated floor and walling Class 19 goods continuously between: 2001 (a date earlier than the 23 November 2004 priority date of the CÆSAR Device mark); and June 2005 (the priority date of the first disputed trade mark), Ceramiche Caesar submitted that Caesarstone, which accepted that it bore the onus of establishing any such prior use, had not established prior continuous use for the fabricated Class 19 floor and walling goods, for at least the following reasons:

(a)    The Class 19 specification included goods for which no evidence of any trade mark use by any entity had been shown.

(b)    The evidence did not establish any continuous use by Caesarstone itself of the Caesarstone trade mark in Australia for the fabricated flooring and walling Class 19 goods.

(c)    Any use by Tessera and/or Carsilstone and/or stonemasons of the Caesarstone trade mark for fabricated flooring and (non-splashback) walling goods had not been shown to be authorised use under the control of Caesarstone during the relevant period: s 8.

(d)    Any use by Tessera and/or Carsilstone by Tessera and/or stonemasons of the Caesarstone trade mark for fabricated flooring and (non-splashback) walling goods was unauthorised use where:

(i)    the May 2005 Fabrication Manual specifically stated Caesarstone was not suitable for flooring;

(ii)    the May 2005 Fabrication Manual did not include any fabrication or installation instructions for (non-splashback) walling applications.

(e)    Irrespective of the issue of authorisation, continuous pre-priority date trade mark use by Tessera and/or Carsilstone and/or stonemasons on fabricated flooring and walling goods had not been sufficiently proved.

(f)    Any prior use on splashbacks did not assist Caesarstone. Such use was either irrelevant, because splashbacks were covered by Caesarstones existing registration in Class 20; unauthorised, for the same reasons as above; or if authorised, could not support a claim to prior use for flooring and walling applications that were not a splashback.

482    As to (a), Ceramiche Caesar submitted there was no evidence of any use of the Caesarstone trade mark for ceilings or skirting boards, by any person or entity. The exception under s 44(4) was not engaged in respect of at least those goods.

483    As to (b), no witness was called from Caesarstone to prove any use by that entity in its own right of the Caesarstone trade mark for the fabricated flooring and walling goods in Australia during the relevant period before June 2005. Absent any continuous use in Australia by Caesarstone for the relevant flooring or walling goods, the prior use exception under s 44(4) could only be engaged if Caesarstone was able to establish that there was trade mark use by entities located in Australia under its direction and control.

484    However, Ceramiche Caesar submitted, any use by Tessera and/or Carsilstone and/or stonemasons for flooring and (non-splashback) walling was not under Caesarstone’s control: s 8.

485    The operation of these provisions was the subject of close consideration by a Full Court comprised of five judges in Lodestar Anstalt v Campari America LLC [2016] FCAFC 92; 244 FCR 557 at [95], [97] and [105]. There must be actual control, as a matter of substance.

486    Ceramiche Caesar submitted that Caesarstone had not called any witness employed by itself at the relevant time to prove that it ever exercised any actual control over Tessera and/or Carsilstone’s use of the Caesarstone trade mark. It may be inferred that any evidence persons employed by Caesarstone could have given would not have assisted to establish the Caesarstone trade mark was used on the fabricated floor and walling goods in Australia under Caesarstone’s control.

487    Notwithstanding the terms of the Distribution Agreement, Ceramiche Caesar submitted the evidence did not support a finding that any use of the Caesarstone trade mark for fabricated flooring and walling goods by Tessera and/or Carsilstone and/or stonemasons pre-June 2005 was under Caesarstone’s control, for at least the following reasons. First, this was not a case where the contractual arrangements set out in detail any quality control standard to be achieved: cf s 8(3) and Lodestar at [98].

488    In respect of fabricated goods, it was the craftsmanship of the stonemason that transformed the raw Caesarstone slab into a fabricated benchtop, splashback, floor or wall panel. Where the craftsmanship was poor, the quality of the product suffered accordingly. The only fabrication quality control mechanism in the trade mark licence was an obligation upon Tessera to ensure its employees and contractors complied with Caesarstone’s fabrication and installation instructions and technical manuals under cl 4(7). Those manuals were supposed to be provided by Caesarstone to Tessera from time to time. Yet, the evidence did not establish that Caesarstone ever provided fabrication or technical manuals to Tessera and/or Carsilstone for the purpose of securing obedience with cl 4(7).

489    Mr Dixon’s generalised assertion that Caesarstone Australia reported back to [Caesarstone] at regular intervals” regarding “sales” and “marketing effortsfell well short of establishing that Caesarstone exercised quality, financial or other control of the use of the Caesarstone trade mark for fabricated flooring or walling applications in Australia.

490    Tessera and/or Carsilstone’s use of the Caesarstone trade mark was so disconnected from Caesarstone’s control that Tessera and/or Carsilstone appeared to have used the Caesarstone trade mark to market a tile product manufactured by one of Caesarstone’s Turkish competitors, Cimstone, in the period between 2001/2002 and 2005/2006. The Turkish tile product was of poor quality. Yet Caesarstone apparently took no step, over a period of six years, to prevent Tessera and/or Carsilstone from using the Caesarstone trade mark to market the Cimstone tile product.

491    Further and in any case, Ceramiche Caesar submitted, the May 2005 Fabrication Manual stated Caesarstone was not suitable for flooring. The Caesarstone slabs were not suitable for flooring because: they were not scratch resistant to foot and furniture traffic; and/or it was not yet known whether they complied with slip resistance standards. Irrespective of from whom the not suitable” statement originated, any use by a stonemason to fabricate a floor or wall panel, as at June 2005, was not authorised by the fabrication and installation manual.

492    In turn, Ceramiche Caesar submitted, any use of the Caesarstone trade mark as at June 2005 on fabricated flooring goods was unauthorised by Caesarstone under the terms of the Distribution Agreement because cl 4(7) required Tessera to instruct its employees and contractors to follow the applicable fabrication manual. It could not be said that Ceramiche Caesar continuously used the Caesarstone trade mark on fabricated flooring goods up until the June 2005 priority date, when the Fabrication Manual stated the product was not suitable for flooring.

493    As to (non-splashback) walling: Mr Baltissen agreed the May 2005 Fabrication Manual contained no instructions for how to fabricate a wall panel. Instructions of that kind were not given until publication of the Wall Panelling Fabrication Guidelines in the 2013 Bathroom Design Fabrication Manual. Mr Galea and Mr Harrop agreed that there were no installation instructions for walling applications in the May 2005 Fabrication Manual, but rather, that will be the expertise of the stonemason. Mr Dixon agreed that Tessera and/or Carsilstone exercised no control within the Fabrication Manual as to how the slabs were installed for walling. He also agreed that Caesarstone did not warrant walling applications (excluding splashbacks) because there was no guidance in the Fabrication Manual about the installation of those applications.

494    In the result, any use of the Caesarstone trade mark as at June 2005 on fabricated (non-splashback) walling goods was also unauthorised by Caesarstone, according to the terms of the Distribution Agreement.

495    In any case, Ceramiche Caesar submitted, pre-priority date use of the Caesarstone trade mark by Tessera and/or Carsilstone for fabricated floor or (non-splashback) walling goods had not been sufficiently proved to support a case of prior continuous use.

496    Between November 2010 and February 2015, the FAQ section of the Caesarstone Australia website stated, in clear and unequivocal terms, that Caesarstone could not be used for flooring.

497    Ceramiche Caesar submitted none of the witnesses gave cogent or probative evidence of promotion pre-June 2005 for walling or (non-splashback) application using the Caesarstone trade mark.

498    The evidence did not establish the volume of Caesarstone slab fabricated by stonemasons into flooring applications before June 2005 was more than de minimis: Mr Baltissen did not fabricate any flooring from Caesarstone slabs before June 2005 (or indeed, at all). He only referred to benchtops, splashbacks and walling in his affidavit. Mr Harrop agreed that as a National Technical Managerit was rare as at 2005 to see CaesarStone slabs used as flooring. So too did Mr Galea. Mr Calicetto gave evidence that less than 1% of the Caesarstone he fabricated in 2005 was for a flooring application. His practice was to tell customers that Caesarstone was not recommended for the floor. Mr Janabi’s evidence was to the effect that 5% of his company’s fabricated goods were a mix of flooring and walling. None of the stonemason witnesses went back to primary documents to verify the accuracy of their records. Each was giving evidence of their recollection of practices over 12 years ago, in a market where flooring and walling applications had since increased. The evidence did not provide any basis for finding the above “sample” of stonemasons was properly representative of the practices of all of the stonemasons before June 2005 who fabricated Caesarstone slabs.

499    The pre-priority images of Caesarstone flooring showed goods that were in the nature of tiles. None of the stonemasons annexed photographs or other documents to prove that their own flooring or walling installations were not also in the nature of a tile.

500    Ceramiche Caesar submitted that any prior use on splashbacks did not assist Caesarstone. First, splashbacks were not Class 19 wall cladding: Ms Gal confirmed that splashbacks were properly registered as “surrounds” for benchtops in Class 20. Caesarstone fabricated splashbacks were properly registered as surrounds for benchtops in Class 20, because they were integrally connected with the benchtop. The determinative consideration was that Caesarstone’s own (expert) global trade mark attorney, Ms Gal, regarded splashbacks to be properly registered as a benchtop “surround” in Class 20, despite the submissions Caesarstone advanced on that issue. Ms Gal was not re-examined on her evidence on that topic. Second, if splashbacks were Class 19 goods, then the evidence did not support a finding that any pre-priority date use by Tessera and/or Carsilstone was authorised by Caesarstone. Finally, s 44(4) required the applicant to have continuously used its mark during the relevant period on each of the similar goods for which registration was sought. If there were any authorised prior use for splashbacks, such use could not support a claim to prior use for the other Class 19 goods, including floor panels and wall cladding that was not a splashback. If the Court was satisfied there was prior continuous use in relation to a wall panel, but not a floor panel, the wall panel could not drag the floor panel across the line. Ceramiche Caesar submitted there must be prior continuous use for each similar good before that similar good could be permitted to proceed to registration under s 44(4).

501    For all of the above reasons, Ceramiche Caesar submitted prior continuous use had not been shown.

502    Turning to the exceptions under s 44(3) in relation to the first disputed trade mark, Ceramiche Caesar submitted the factors relevant to assessing honest concurrent use were:

(a)    the honesty of any concurrent use;

(b)    the extent of the use in terms of time, geographic area and volume of sales;

(c)    the degree of confusion likely to ensue between the marks in question;

(d)    whether any instances of confusion have been proved; and

(e)    the inconvenience that would ensue to the parties if registration were to be permitted.

See McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102 at [30]-[33] per Kenny J.

503    Applying the above factors, Ceramiche Caesar, the evidence did not support a finding of honest concurrent use, for at least the following reasons. First, to establish a case of honest concurrent use, the relevant use must be in respect of the designated Class 19 goods. Use on benchtops and splashbacks could not assist. Caesarstone had not established prior concurrent use in respect of the fabricated flooring and walling goods that were covered by the first disputed mark.

504    Second, if there had been prior use, such use had not been of sufficient scope, nature or scale to found a claim to honest concurrent use. To the contrary, it had been uncertain and unequivocal in nature, the use occurring in circumstances where the May 2005 Fabrication Manual stated Caesarstone was not suitable for flooring and provided no wall or floor fabrication or installation instructions. Any use also took place against the background of the serious slipping, and also scratching, concerns.

505    In assessing whether there had been more than de minimis concurrent market usage, it was also relevant to appreciate that Ceramiche Caesar’s own use before June 2005 was insufficient to generate any market reputation. In the circumstances, the position was as delegate Lyons found in Decision 1 at [55]: there is little on which I can base any finding that the trade marks have been used side by side on the parties’ relevant goods”.

506    Third, Caesarstone had not discharged its onus of demonstrating honesty in the relevant sense: the standard of honesty required was commercial honesty, which differs not from common honesty”: see McCormick & Co Inc v McCormick at [32]; the criterion of honesty extended to the honesty with which the applicant presented its case to the Registrar’s delegates, including the initial trade mark examiners: Shanahan at [40.2015]; having regard to Caesarstone’s clear intention at the priority date (and now) to market tiles in Class 19, it was incumbent on it to explain by evidence in these proceedings why the word tile was deleted and how the semantic distinction between a floor panel that is “in the nature of a tile” and a floor panel that is “not in the nature of a tile was workable in the marketplace. Caesarstone has not done so.

507    Ceramiche Caesar submitted that Caesarstone was on notice of Ceramiche Caesar’s use of the CÆSAR Device mark in Australia for tiles in Australia from at least 28 May 2003. The evidence showed that Caesarstone was aware of Ceramiche Caesar’s market presence at least by reason of its opposition to Caesarstone’s application for registration of the Caesar Mosaic mark.

508    Ceramiche Caesar submitted a brief chronology of events in relation to that application by Caesarstone and Ceramiche Caesar’s opposition to that application.

509    Fourth, Ceramiche Caesar submitted it would suffer prejudice if registration was allowed: it would be put in the difficult or impossible position of trying to assess whether or not individual uses by Caesarstone, Caesarstone Australia and/or stonemasons of the Caesarstone trade mark were in connection with a “tile” on the one hand (and thereby an infringement of Ceramiche Caesar’s exclusive rights) or a “floor panel” or “wall cladding” that was “not in the nature of a tile” on the other (and thereby not an infringement, on account of Caesarstone enjoying the statutory rights to do so – s 122(1)(e)).

510    Because trade mark rights operated in rem, Ceramiche Caesar submitted, the same difficulty may affect other traders wishing to know whether their own activities would infringe upon the first disputed trade mark. Members of the Australian public who had seen Ceramiche Caesar’s CÆSAR Device mark were very likely to be confused by the Caesarstone trade mark, prejudicing Ceramiche Caesar’s dealings with its customers and its capacity to expand its business in the future in Australia. The purported disclaimer of tiles would not assist consumers to avoid confusion.

511    The distinctiveness of Ceramiche Caesar’s CÆSAR Device mark for flooring and walling goods would be diluted in the Australian marketplace by another company using a deceptively similar trade mark for flooring and walling goods. If registered, the first disputed mark would restrict Ceramiche Caesar’s freedom to modernise or adapt its existing CÆSAR Device branding. More particularly, Ceramiche Caesar may have difficulty registering further trade mark applications for its products and new or adapted logos that incorporated the word Caesar, because the first disputed trade mark would have an earlier priority date than any future trade mark applications that Ceramiche Caesar made. Caesarstone itself had sought to modernise its branding in recent times as demonstrated by e.g. the evolution of the roman pillar in the second disputed trade mark.

512    There was no evidence that Caesarstone would not use the first disputed trade mark, if registered, on goods made from ceramics. The scope of the notional usage rights permitted this. Caesarstone had in fact recently indicated to the market its potential interest in acquiring other ceramic interests. By comparison, Caesarstone’s market space had predominantly been bench top surfaces for kitchens and bathrooms and splashbacks. It already enjoyed registered trade mark protection for the Caesarstone trade mark in connection with such goods. Caesarstone’s eyes were “wide open” as to Ceramiche Caesar’s use of the CÆSAR Device mark in Australia when it filed the first disputed trade mark. Its product was not suitable for flooring when it applied for trade mark registration. Caesarstone was the architect of any prejudice that it may now suffer as a result of refusal of the first disputed trade mark.

513    Ceramiche Caesar submitted that having regard to these considerations there were no other circumstancesthat would warrant the Court exercising its discretion to permit registration of the first disputed mark.

514    Ceramiche Caesar submitted that if Caesarstone established any entitlement to rely on the exception under s 44(4) by reason of its alleged prior use since 2001, then Ceramiche Caesar relied upon its continuous use of the CÆSAR Device mark between 1988 and the priority date of the first disputed trade mark (June 2005) to establish the ground of opposition under s 58A.

515    Ceramiche Caesar relied upon three categories of continuous use for this purpose: prior continuous use of the CÆSAR Device mark without the word “Ceramiche”; prior continuous use of the CÆSAR Device mark with the word “Ceramiche”, on the basis that the word was an addition or alteration that did not substantially affect the CÆSAR Device mark: s 7(1); and prior continuous use of the Caesar word mark (without stylisation), on the basis that absence of the ligature (and diamond/dots) in the CÆSAR Device mark was an alteration that did not substantially affect the identity of the CÆSAR Device mark.

516    Under s 58A, the period of prior use that Ceramiche Caesar must show was use: commencing before Caesarstone’s alleged first use in 2001; and ending on the priority date of the first disputed mark (i.e. June 2005, the date when the opposition was to be determined). If Ceramiche Caesar succeeded in establishing any one of the three categories of prior use, the ground under s 58A would be established.

517    As to prior continuous use of the CÆSAR Device mark without the word “Ceramiche”, Ceramiche Caesar submitted that in each year between 1998 and 2005, Ceramiche Caesar’s annual general catalogue featured at least one use of the CÆSAR Device mark without the word Ceramiche. Distribution and use of the catalogues in Australia to promote Ceramiche Caesar’s tiles was proved by: invoices for shipments addressed to Australian tile companies for the years 1998, 1999, 2000, 2001, 2003, 2004 and 2005 (as well as 2006-7), which recorded the annual catalogues in those years having been included within the shipment; the records kept by Ceramiche Caesar of the number of catalogues distributed in each year since 2001; Mr Malavasi’s evidence that, in each year between 1996 and 2001 (the period when he was Ceramiche Caesar’s Australian sales agent), he took his copies of the annual general catalogue for that year with him to meetings with Ceramiche Caesar’s Australian wholesale customers and used them to promote Ceramiche Caesar’s tile products; and Mr Ryan’s evidence that he received a copy of the annual general catalogue (together with other promotional material) in each year from at least 2000. Mr Ryan kept the catalogues in an architectural library for the purpose of using them to promote Ceramiche Caesar’s tiles to architects and interior designers of both commercial and domestic industries.

518    Section 58A did not require any particular volume of trade mark usage. The words of the statute required only that there be “continuous” trade mark usage. The single use of the CÆSAR Device mark in each annual general catalogue between 1998 and 2005 was a continuous trade mark usage within the meaning of s 58A, because each annual catalogue served to catalogue and promote Ceramiche Caesar’s tile collection for the entire year.

519    Further, there were additional examples of usage of the CÆSAR Device mark, without the word “Ceramiche” in the period between 1998 and 2005: reference was made to photographs of the CÆSAR Device mark at the CERSAIE exhibition held in Italy in 2000, 2001 and 2003, which featured the CÆSAR Device mark without the word Ceramiche”. Each such use was a trade mark use within s 17, because the usage was directed at Australian delegates in attendance, such as Mr Ryan. Also, between 1998 and 2000, at least some of Ceramiche Caesar’s tiles were stamped without the word “Ceramiche” appearing above the CÆSAR Device mark. While Mr Bianco accepted in cross-examination that he could not remember whether the stamp without the word Ceramiche was used more often than the stamp with that word, all things being equal, it was at least possible (Ceramiche Caesar submitted it was likely that) some tiles impressed without the word Ceramiche made their way into Australia. Ceramiche Caesar’s continuous use of the CÆSAR Device mark in each year between 1998 and 2005 without the word Ceramiche was a complete answer to Caesarstone’s prior use case brought under s 44(4).

520    As to prior continuous use of the CÆSAR Device mark with the word “Ceramiche”, Ceramiche Caesar submitted there was no dispute that it had continuously used the CÆSAR Device mark with the word Ceramiche appearing above it in each year since 1988, continuing until the June 2005 priority date.

521    Ceramiche Caesar referred to s 7(1), providing: “If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the Court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.”

522    Ceramiche Caesar submitted that the word “Ceramiche was an addition or alteration that did not substantially affect the identity of the CÆSAR Device mark, for the following reasons: the word Ceramiche” was the Italian word for “Ceramics”; the registered Class 19 goods were Ceramic tiles; the addition was therefore directly descriptive of a characteristic of the registered Class 19 goods (i.e., they were made of ceramics). It did not affect (let alone substantially affect) the identity of the CÆSAR Device mark. Ceramiche Caesar referred to QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553 at 558 and Shanahan at [65.582].

523    Unlike the words “Oro” and “Cinque Stelle” (held to be distinctive foreign words when used for coffee) in Cantarella, the word Ceramiche was: likely to recognised readily by ordinary Australians as meaning Ceramics, when used for an Italian manufactured ceramic tile; and commonly used by Italian tile manufacturers who traded in Australia to indicate that their tiles were made out of ceramics. The Buyers Guide listed 15 Italian tile manufacturers with the word Ceramiche in their name or branding. Mr Dixon candidly accepted that Ceramiche was in common, descriptive trade use as at each of 2004, 2005 and 2007. Against the background of the common market usage, the word Ceramiche had no capacity to distinguish and thereby did not substantially affect the identity of the CÆSAR Device mark.

524    As to prior continuous use of the Caesar word mark without stylisation, Ceramiche Caesar submitted that in each year between at least 1998 and 2005, it had used the word CAESAR or caesar in plain (unstylised) text, without the word “Ceramiche”, in Australia for its ceramic tiles. Examples of this appeared on pages of the annual general catalogues in each of those years.

525    Ceramiche Caesar submitted the position was analogous to E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144 at 170. In Gallo, the question was whether the addition of a representation of a foot to a trade mark substantially affected the identity of the registered trade mark, which was for the word BAREFOOT. The High Court held, at [69], that the presence or absence of the representation of the foot was an addition that did not substantially affect the identity of the trade mark within the meaning of s 7(1).

526    As to the s 59 ground, Ceramiche Caesar submitted it was determined by assessing the intention that existed at the priority date of each disputed trade mark. The question was did Caesarstone have an intention to use, or authorise the use of, the relevant disputed trade mark in Australia (or assign it) in relation to the particular goods that were specified in the application. The existence of an intention to use the trade mark in connection with e.g. kitchen or bathroom bench tops was irrelevant. The intention must be to use the mark with the goods identified in Class 19.

527    Ceramiche Caesar submitted that at least in respect of flooring, Caesarstone’s intention as at June 2005 plainly was to obtain registered trade mark protection for fabricated floor tiles. The July 2005 National Conference described fabricated Caesarstone slabs for “floor tiles”. Mr Dixon confirmed that Caesarstone held no intention to market any product other than Caesarstone slabs at that time. It could not be said that Caesarstone held any intention to use the first disputed trade mark for floor panels that were not in the nature of tiles when the fabricated goods of interest were floor tiles. The ground under s 59 was therefore established.

528    Further, Ceramiche Caesar submitted, there was no evidence that Caesarstone slabs had ever been fabricated into a ceiling panel or a skirting board. The Court may infer that these goods were listed in the application “defensively”, and without any intention to use. Ms Gal could not be cross-examined about this, because she had not determined before giving evidence whether she was the drafter of the first disputed mark.

529    Turning to the second disputed mark, in relation to s 44(1) (similar goods) Caesarstone had conceded that the second disputed mark also covered similar goods to Ceramiche Caesar’s prior registered CÆSAR Device mark. As with the first disputed trade mark, the disclaimer “not in the nature of tiles” was used, however not all of the goods were so qualified. For example, the first goods listed in Class 19 was “Panels for floors” and this was not qualified by the words “not in the nature of tiles”. For goods both with and without the tile disclaimer, deceptive similarity was established.

530    In relation to s 44(2) (closely related goods): Caesarstone conceded in opening that the wholesale, retail, installation, maintenance and repair services in Classes 35 and 37 were “closely related” to the goods covered by the CÆSAR Device mark, because they included such services in respect of tiles. Ceramiche Caesar submitted the same analysis applied to the other flooring and walling goods that were the subject of the Class 35 and Class 37 services (as underlined at [453] and [455] above). Hence, there was no dispute that the requirement of closely related goods was satisfied.

531    In relation to s 44 and deceptive similarity, Ceramiche Caesar submitted the second disputed trade mark included the additional features of (a) lower case script and (b) a small circular element positioned to the left of the word caesarstone. Neither of those differences was sufficient to avoid the high likelihood of confusion. The circular element was too small, plain and devoid of meaning to differentiate the trade origin; alternatively, if it was recognised as being part of a roman pillar, it served only to reinforce the idea of the Roman Caesars.

532    In the case of the Class 35 and Class 37 services, Ceramiche Caesar submitted the notional use included a tile retailer selling ceramic tiles and using the CAESARSTONE Device mark to identify the origin of the retail services. Such a use would be likely to cause consumers knowing of the CÆSAR Device mark to wonder whether or not the retailer was Ceramiche Caesar or somehow connected with Ceramiche Caesar, bearing in mind the retail environment included tile showrooms. As the delegate put it in Decision 2, the difficulty here was that “the retail and display of the goods and their manufacture are intertwined” (at [32]). For the reasons the delegate identified in Decision 2 at [33], a likelihood of confusion also existed for the installation, manufacture and repair services.

533    As to honest concurrent use under ss 44(3)(a) and prior continuous use under s 44(4), Ceramiche Caesar submitted that Caesarstone did not rely on either of these exceptions for the second disputed trade mark. As such, Ceramiche Caesar did not rely on s 58A.

534    As to intention to use under s 59, Ceramiche Caesar submitted that the Class 19 goods of the second disputed trade mark included “flooring not in the nature of tiles”. As such, the Court should similarly find that Caesarstone held no intention to use its mark for all goods identified in the specification – Caesarstone’s intention, at least with respect to flooring, being to use its trade mark for flooring “in the nature of tiles”.

535    As to “other circumstances” under s 44(3)(b), Ceramiche Caesar submitted that if it succeeded in its opposition to the first disputed mark, there were no other circumstances that would warrant permitting the second disputed mark proceeding to registration.

536    Turning to the action to cancel the third disputed trade mark, Ceramiche Caesar submitted that an application may be made by an “aggrieved person” to rectify the Register to remove a trade mark on “any of the grounds on which the registration of the trade mark could have been opposed under the Act”: s 88(2)(a). As the owner and user of the prior conflicting CÆSAR Device and Caesar word marks, Ceramiche Caesar was a person aggrieved: Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590 at [45].

537    The third disputed trade mark was (a) the same trade mark as the first disputed mark, i.e. the word Caesarstone; (b) registered in respect of the same services as the Class 35 and Class 37 services that were specified in the second disputed mark (which included services in respect of “tiles”) and (c) had the same (26 August 2007) priority date as the second disputed mark. Ceramiche Caesar repeated its submissions on grounds s 44, s 58A and s 59 as applicable, which were subject to the following points of difference.

538    First, as at the priority date of 26 August 2007, Caesarstone had not, and in any case did not, provide retail or installation services in respect of the Class 35 and Class 37 “tiles” covered by the registration.

539    In the result, the evidence did not support any finding of prior continuous use for retail services in respect of tiles, or other flooring or walling goods, for the purposes of s 44(4).

540    As to installation, Ceramiche Caesar submitted that Mr Dixon gave evidence that Tessera and/or Carsilstone and/or Caesarstone Australia were not installing fabricated Caesarstone surfaces between 2005 and 2007. Instead, the installation service was performed by the stonemasons, under their own name and branding. Again, it could not be said that there was prior continuous use, within the meaning of s 44(4), for installation services for tiles or other flooring or walling goods.

541    Second, to the extent that prior use for maintenance or repair services had been shown, in respect of s 58A, Ceramiche Caesar relied on prior use for: the CÆSAR Device without Ceramiche, as above for 1998-2005 in annual general catalogues together with the 2006 general catalogue; the CÆSAR Device with Ceramiche, as above; and the Caesar word mark in plain text, as above for 1998-2005 in annual general catalogues together with the 2006 and 2007 annual general catalogues.

542    Further, the s 59 ground was only pressed for the third disputed mark if Caesarstone advanced a position that its intention as at August 2007 was not to market “tiles” (the relevant Class 35 and Class 37 services covered “tiles”, in addition to other flooring and walling goods). Ceramiche Caesar submitted that any such position would be contrary to the evidence.

543    In the result: on ss 44(1) and (2), if the opposition against the first and second disputed marks were successful, it would follow as a matter of course that the third disputed trade mark could have been successfully opposed on the same grounds; on the ss 44(3) and (4) exceptions: Caesarstone had not made good either exception, for the same reasons submitted on the first disputed mark and because it had not used the Caesarstone trade mark for the relevant services, and in particular, had not proved prior continuous use for at least repair and installation services.

544    If, contrary to the above, Caesarstone made out a case under s 44(4), Ceramiche Caesar in any event made prior use of its CÆSAR Device mark in Australia continuously between 1998 and August 2007.

545    Ceramiche Caesar submitted it was also a ground of rectification that, because of the circumstances applying at the time when the application for rectification was filed, the use of the trade mark would be likely to deceive or cause confusion: s 88(2)(c). Any use by Caesarstone of the third disputed mark for wholesaling, retail, installation, maintenance or repair of “tiles” would be very likely to deceive or cause confusion, considered as at 2015 (when the rectification action was filed). This was for the same reasons submitted concerning the trade mark comparison and concerning the notional trade channels for e.g. retail services for the first and second disputed marks.

546    In addition, as at 2015, Caesarstone had foreshadowed to the market an interest in acquiring a ceramics business. This was a factor that reinforced the likelihood of confusion. Moreover, while the large format tile trend was already underway by June 2005, it was relevant to consider that the usage of large formats increased further between then and 2015.

547    Ceramiche Caesar submitted that Caesarstone accepted that it bore the burden of convincing the Court that the Court should not exercise its discretion to cancel the third dispute mark, in the above circumstances. Where Caesarstone Australia was not a tile retailer or installer and the first and second disputed marks were not registrable by operation of s 44, there was no good reason why Caesarstone should be permitted to retain the third disputed mark. Ceramiche Caesar submitted it was in the public interest that this trade mark be cancelled, so that those statutory rights were not exercised in a way that led to confusion.

Caesarstone’s submissions

548    Turning to Caesarstone’s case, Caesarstone submitted the underside of all Caesarstone slabs were, and had been since 1987, marked with and promoted by the Caesarstone Word Mark (that is, either with the Caesarstone Goods Word mark or the Caesarstone Services Word mark, being identical word marks). The Caesarstone slabs had been sold in Australia since approximately 1998.

549    Caesarstone submitted that Class 20 was concerned with “Furniture” and Class 19 was concerned with “Building materials (non-metallic)”. While there was no doubt that Caesarstone slabs were sold for the purpose of being used to build kitchen benchtops (among other things), Caesarstone slabs may also properly be described as being sold as building materials with no restriction on how they may be applied. Indeed, the Caesarstone slabs were not sold as furniture per se. Furthermore, while a benchtop might be considered furniture, it might equally be considered a fixture and part of a building, rather than furniture.

550    Caesarstone submitted it was not sufficient for it to have a registration in relation to furniture: while it promoted the use of its slabs for furniture, it in fact did not sell those goods itself or make those goods itself.

551    Caesarstone submitted that, while Ceramiche Caesar contended that a splashback was part of a benchtop, it was as much part of a benchtop as a wall was part of a floor, and was more properly described as simply a particular type of wall cladding. In light of the manner in which Caesarstone in fact sold and promoted its slabs, as being “for” various applications, the protection it sought in Class 19 (and relatedly Classes 35 and 37) was entirely appropriate.

552    Caesarstone submitted that the evidence indicated that Ceramiche Caesar’s ceramic tiles had been promoted and sold under the following mark (which Caesarstone referred to as the CERAMICHE CÆSAR Device Mark) over the relevant periods:

553    As to Ceramiche Caesar’s submission that “[t]o date, the focus of Caesarstone’s business has been manufacturing and distributing its large quartz slabs for use as kitchen countertops, bathroom countertops and “splashback” surfaces.”, Caesarstone submitted that contention was true in the sense that a majority of Caesarstone slabs had been used for those purposes in Australia. But Ceramiche Caesar’s contention paid insufficient regard to the fact that Caesarstone slabs also had been promoted and used for flooring and wall panelling (in addition to splashbacks) since at least 2001, referring to Mr Dixon’s evidence.

554    Caesarstone submitted that, contrary to Ceramiche Caesar’s contention, the status quo in the Australian market that had applied since at least 2001 was that:

(a)    Caesarstone slabs had been promoted and used for various purposes, including wall panelling and flooring under the Caesarstone Word mark; and

(b)    Ceramiche Caesar ceramic tiles had been promoted and used under the CERAMICHE CÆSAR Device Mark.

555    Therefore, at least three years before Ceramiche Caesar applied to register the CÆSAR Device mark in Class 19 for “Ceramic tiles for indoor and outdoor use”, Caesarstone slabs had been promoted and used under the Caesarstone Word mark for floors and walls in Australia.

556    Caesarstone’s primary contention was that the Caesarstone marks were not deceptively similar to the CÆSAR Device mark. Furthermore, in light of the above:

(a)    The CÆSAR Device mark could not stand as a ground of objection to registration of the Caesarstone Word marks under s 44 because the Caesarstone Word mark was used before 23 November 2004 (being the lodgement date of the CÆSAR Device mark) and so s 44(4) applied;

(b)    Ceramiche Caesar could not rely on s 58A to overcome s 44(4), because Ceramiche Caesar did not use the CÆSAR Device mark before 2001; and

(c)    Even if s 58A could apply, ss 44(3)(a) or (b) allowed registration of the CAESARSTONE Device mark and Word marks on the basis of Caesarstones honest concurrent use of the Caesarstone Word mark or other circumstances.

557    Ceramiche Caesar had also failed to establish that Caesarstone did not have the requisite intention to use the marks in respect of the designated goods and services, within the meaning of s 59.

558    Importantly, Ceramiche Caesar had been unable to point to any actual confusion in the market between Caesarstone slabs and Ceramiche Caesar’s tiles at any point in time, notwithstanding the use of Caesarstone slabs on wall panelling (including splashbacks) and floors for 16 years. In addition to providing support for the contention that the marks and the designated goods and services were relevantly distinguishable, that lack of confusion provided further support for the application of s 44(3) and the application of the discretion under s 88(1).

559    In the two appeals, Caesarstone submitted that only once Ceramiche Caesar had discharged its onus to establish a ground of opposition did any onus shift to Caesarstone.

560    In the s 88 matter, Caesarstone submitted that Ceramiche Caesar also bore the onus of proof to establish that the Caesarstone Services Word mark should be cancelled, on the balance of probabilities. Should Ceramiche Caesar make out its case, Caesarstone then bore the onus of establishing that the Court should not exercise its discretion under s 88(1) to cancel the registration of the Caesarstone Services Word mark. Caesarstone would also bear the onus of convincing the Court that the specific discretion under s 89(1) ought to be exercised in allowing the Caesarstone Services Word mark to remain on the Register.

561    In relation to deceptive similarity, Caesarstone submitted that in respect of ss 44(1) and (2), the Court must determine whether the Caesarstone Word marks and/or the CAESARSTONE Device mark were deceptively similar to the CÆSAR Device mark. If they were not, then strictly there was no need to deal with ss 44(3) or (4) or s 58A.

562    Caesarstone referred to s 10 and to Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407 at 415-416, submitting that, in assessing deceptive similarity, the comparison was between:

(a)    the impression, based on the recollection that persons of ordinary intelligence and memory would have, of the CÆSAR Device mark in respect of ceramic tiles for floors and walls, and

(b)    the impression those persons would have of the Caesarstone Word mark or the CAESARSTONE Device mark in respect of the relevant designated goods and services,

and whether, in light of that impression, those persons would be caused to wonder whether use of the Caesarstone Word mark or the CAESARSTONE Device mark in respect of the relevant designated goods or services was by the same owner.

563    Caesarstone referred to Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; 132 FCR 326 at [78], [80], [115] to [119] and [123] per Bennett J, in particular that:

mere possibility of confusion is not enough; there must be a real, tangible danger of it occurring. The court would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

and that the fact that two marks conveyed the same idea was not sufficient in itself to create a deceptive resemblance between them. Caesarstone also referred to Re Broadhead’s Application (1950) 67 RPC 209 at 215 and to Tivo Inc at first instance, citing Whitford J in Frigiking Trade Mark [1973] RPC 739 and to the finding in that case the word “King” incorporated in the mark “Frigiking” was not a highly distinctive word and, unless it bore a secondary meaning of special distinctiveness, people would not be likely to believe that there was a connection between the marks FRIGIKING and THERMO-KING, Whitford J explaining that “… the inherent distinctiveness of the part common to both marks was relevant.” Caesarstone submitted that the word “Caesar” in each mark had to be treated similarly.

564    In this respect, Caesarstone submitted that the CÆSAR Device mark was a composite mark, containing: the non-distinctive “Caesar” name; the ligature Æ device along with all capitals and stylised font; and the two diamond devices positioned on either side of the word CÆSAR.

565    “Caesar”, the submission went, was a very commonly understood name, attributed to the ancient Roman emperors of that name. When asked to put aside his knowledge of Ceramiche Caesar, Mr Ryan accepted that Caesar was an attractive name to use for a tile company because of its connotations to Julius Caesar and fine, ancient, quality things from Italy. It was a name that other traders would, without improper motive, want to use in respect of tiles sold in Australia.

566    Caesarstone submitted that because, as it contended, the word “Caesar” in the CÆSAR Device mark was non-distinctive (a matter crucially not addressed by the delegates below), it must be the combination of the features of the CÆSAR Device mark, including the ligature Æ, the font and the diamond shape on either side of the word CÆSAR that had primary importance. This was because the reasonable consumer would appreciate that other traders acting without improper motive may wish to use Caesar in respect of tiles and such consumers would take more care to consider the mark in detail and be more aware that any differences in usage would indicate a difference in origin of the goods. Neither delegate considered this issue as it seemed not have been put to them, but it was now before the Court.

567    Caesarstone submitted that the ligature in the CÆSAR Device mark maintained and strengthened the link to the Roman Caesars and ideas of strength and quality and fine ancient things.

568    As to the diamond devices, Caesarstone submitted, Mr Tancredi gave evidence to the effect that he did not consider use of the word CÆSAR without the two diamond devices on either side to be use of the CÆSAR Device mark. The diamonds were “part of the brand” and without them, the CÆSAR Device mark was not used.

569    The overall idea of the CÆSAR Device mark, that the reasonable consumer would have as a matter of impression when observing that mark, was a mark that had a strong identification to the Roman Caesars which was emphasised by the ligature, diamonds and font, in circumstances where the reasonable consumer would appreciate that other manufactures of ceramic tiles would wish to use the name “Caesar” without improper motive and so would pay particular attention to the visual identity of the mark.

570    Turning to the Caesarstone marks, Caesarstone submitted the word CAESARSTONE was a single, invented and distinctive word. Caesarstone accepted that the Caesarstone Word Mark allowed for Caesarstone with a capital C or a capital S, but submitted that did not diminish to any great extent the fact that it was a combined or single word and therefore would be understood as an invented word. The idea of the CAESARSTONE marks was of a new type of stone, in the vein of limestone, sandstone or the like, as opposed to the name of a manufacturer of ceramic tiles or reconstituted stone slabs. The manuals and other materials used by Caesarstone in the early years also referred to Caesarstone in that way. Other traders also sought to employ a similar device to describe their new artificial stone products, such as “Essastone”, “Smartstone” and “Cimstone”. The average consumer may be taken to be aware of these matters, it was submitted.

571    Given the first part of the invented word, “CAESAR”, plainly alluded to the Roman Caesars, and the second part of the name, “STONE”, was descriptive of natural or artificial stone, the reasonable consumer would pay particular regard to the invention of the combined new word and come to the natural view that it was the combination that made the trade mark distinctive and which gave the idea of a new type of stone.

572    When deciding deceptive similarity, it was important that the trade marks were considered in their entirety and in that regard “it is the whole of the mark as used or intended to be used which is the subject of the comparison with the registered mark”: Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390; 56 IPR 182. In Clark v Sharp (1898) 15 RPC 141 at 146, the Court said:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the effect of the respective wholes.

573    While the CÆSAR Device mark and the Caesarstone marks had an element of similarity in the name “Caesar”, the Court could not simply focus on that commonality and determine that the marks were deceptively similar. The differences in ideas of the marks and the non-distinctiveness of the word elements of the marks made it very unlikely that the reasonable consumer would be caused to wonder whether there was an association between the owners of those marks. Any such wonderment would be nothing more than mere speculation.

574    The device component of the CAESARSTONE Device mark served to further distinguish that mark from the CÆSAR Device mark. It adopted a modern font and appearance so as to further distinguish itself from the “ancient” connotations in the name “Caesar”, especially with the modern device appended to it.

575    Turning to the surrounding circumstances and the context of the purchase of the goods, Caesarstone submitted the Full Court in MID Sydney Pty Ltd v Australian Tourism Company Ltd (1998) 90 FCR 236 said it was appropriate to consider, as part of the surrounding circumstances, “the use, or proposed use, by the alleged infringer and also the character of the registered mark itself.”

576    Consumers of the Ceramiche Caesar goods or the Caesarstone goods were careful in making their selection of those goods. The purchase of wall and floor coverings was not impulsive. Consumers took particular care before purchasing and installing these goods and consulted with kitchen design professionals or architects or interior designers as part of the selection process in order to take in-depth advice from these professionals. That was because the goods would be permanently fixed in highly visible places in the home or office and they were expensive items.

577    Caesarstone referred to the evidence of Mr Malavasi, who explained that he would occasionally refer to Ceramiche Caesar as “Caesar” and would only do so once the retailer or customer was familiar with the company’s full name “Ceramiche Caesar”. Equally, that retailer or customer would have been exposed to the CÆSAR Device mark (with the name Ceramiche above it) on business cards and promotional materials.

578    It followed therefore, Caesarstone submitted, that when a retailer or consumer was first introduced to the use of those marks, they were invariably seen multiple times. They were also seen in circumstances where the retailer or consumer took great care to understand the product and its features and would pay careful attention to the branding. There was no evidence that those slabs or tiles were purchased over the phone and certainly not until the retailer or consumer had become very aware and comfortable with the visual depiction of the mark.

579    Caesarstone submitted that Ceramiche Caesar had sought to make the point that it had referred to its ceramic tiles as “Caesar Porcelain Stoneware”, in favour of a finding of deceptive similarity. The argument appeared to be that, consumers knowing the name Caesarstone in respect of wall panels and flooring would see the name Caesar for ceramic tiles and think that Caesarstone would come to mind and be confused. As to that argument, Caesarstone submitted it was not the correct approach since it was the imperfect recollection of the CÆSAR Device mark that was in issue, not some other usage; and even if relevant, such use had been rare and there was no evidence that Australian consumers or retailers would describe ceramic tiles as “porcelain stoneware” or “stoneware”.

580    Finally, the usage highlighted the difference between the marks again, with the impression of the CÆSAR Device mark when used with the term “porcelain stoneware” highlighting the name “Caesar” as the manufacturer’s name whereas the CAESARSTONE marks connoted a type of new stone.

581    Caesarstone submitted there was no actual confusion. When the Court had regard to the “effect of the respective wholes”, being the Caesarstone Word mark on the one hand and the CÆSAR Device mark on the other, it was clear that the marks were not deceptively similar. That objective conclusion was supported by the subjective facts, it was submitted. Ceramiche Caesar tiles and Caesarstone slabs had been sold in the same trade channels for many years. The customers of these goods were the same and the goods were used at the same time in building or when renovating kitchens, bathrooms and the like. Indeed, it did not appear to be in dispute that Caesarstone splashbacks were an appropriate and relatively common addition to a Caesarstone benchtop since 2001 and that Ceramiche Caesar tiles could also be used for that purpose.

582    In addition, Caesarstone submitted, the decision by Ceramiche Caesar to withdraw its claims pursuant to s 42(b) and s 60 were important concessions that should give comfort to the Court in finding that the marks were not deceptively similar. There was evidence given, which was not objected to, supporting the proposition that “Caesar’s tile products were well regarded in both the residential and commercial industries” in Australia from 1996. Accordingly, the Court may infer that Ceramiche Caesar took the view that there was no real likelihood of deception arising from the putative use of the Caesarstone marks for the designated goods or services, so as to engage either s 42(b) or s 60.

583    As to prior use, Caesarstone relied on s 44(4). In this respect Caesarstone submitted it was necessary for it to show prior and continuous use of its word mark in respect of the designated goods and services from a period before the date of the CÆSAR Device mark to the date of the application of the goods marks, which was June 2005 for the Caesarstone Goods Word mark and August 2007 for the Caesarstone Services Word mark. Caesarstone set out use of the Caesarstone marks in Australia and subsequently addressed the issue raised by Ceramiche Caesar as to whether that use had been authorised use by Caesarstone within the meaning of ss 7 and 8.

584    As to splashbacks, Caesarstone submitted that continuously from at least April 2001, the Caesarstone slabs have been used for splashback applications and offered for use as splashback applications as follows: quotes issued by employees of Tessera; price lists; specifications for Harvey Norman Renovation Centres; free slab requisition forms; and fabrication instructions.

585    As to wall cladding, it was Caesarstone’s primary contention that a splashback was a wall cladding and the witnesses (including witnesses called by Ceramiche Caesar) accepted that to be the case. Even if that was not the case, Caesarstone had shown the use and promotion of the Caesarstone Word mark for wall applications above. Continuously since 2001, the Caesarstone slabs had been used for wall cladding applications and offered for use as wall cladding applications (other than splashbacks) as follows: hard surfaces catalogue; quotes to consumers; Harvey Norman Renovations Centre, Auburn; product guides; at the Tessera showroom and for the promotion of Caesarstone slabs; and letters to builders.

586    As to flooring, continuously since 2001 the Caesarstone slabs had been used for flooring applications and offered for use as flooring as follows: in catalogues; at Gitani Stone in Sydney, New South Wales; letters to home builders; at DesignEx; at the Tessera showroom and for the promotion of Caesarstone slabs; and quotes issued by employees of Tessera.

587    As to services, Caesarstone submitted that from at least 2002, Tessera and/or Carsilstone (and later Caesarstone Australia) employed consultants to offer technical and warranty assistance to consumers and they also employed a National Technical Manager. On average, each consultant would visit at least 20 to 30 premises per week. These consultants: investigated and dealt with warranty claims made by customers; undertook repairs such as chip repairs; and advised customers on the installation of Caesarstone slabs. The technical and warranty consultants would wear Caesarstone branded shirts and would use Caesarstone branded vehicles.

588    Since at least 2001, Caesarstone submitted, its Australian licensees provided quotes to retail consumers regarding the supply and installation of Caesarstone slabs. Also, Caesarstone’s licensees had created and used price lists since at least July 2003 and those price lists had provided the costs for the supply and installation of Caesarstone slabs as surfaces and splashbacks to retail customers.

589    Since at least 2001, Caesarstone submitted, its Australian licensees had wholesaled the Caesarstone slabs to stonemasons throughout Australia. Those stonemasons then measured, fabricated and installed the Caesarstone slabs at the direction of the consumers or their architect, designer or kitchen company.

590    Since at least 2004, Caesarstone Australia (and Caesarstone’s former Australian distributors) had operated various showrooms. Those showrooms were visited by a range of professionals (including kitchen companies and architects) as well as individual consumers. Since at least 2001, Tessera also operated a showroom in Auburn which was used to promote the various applications of the Caesarstone slabs.

591    Caesarstone submitted it had exercised control, within ss 7 and 8 of the Trade Marks Act.

592    Importantly, s 8(5) stated that ss 8(3) and 8(4) were not exhaustive definitions of what may constitute control for the purposes of ss 8(1) and 8(2).

593    The question of what constituted “authorised use was considered by the Full Court in Lodestar. The Court found that there must be actual control. In that case, there was no involvement at all between the licensor and licensee and the quality control mechanisms in the licence agreement were not acted upon at all.

594    Caesarstone submitted that the evidence in this case demonstrated that, at all times, Caesarstone had exercised relevant control over the use of the Caesarstone Word mark in respect of the Caesarstone goods and services as used by Tessera, Carsilstone and stonemasons.

595    In one sense, in respect of the Caesarstone goods, it was sufficient for Caesarstone to be responsible for making the Caesarstone slabs and to give instructions as to how they should be carefully transported, so as to ensure their quality. This was unlike the Lodestar case in a crucial respect because, in that case, the licensee was making the product.

596    Any subsequent promotion or use of the Caesarstone slabs by Tessera, Carsilstone or stonemasons in respect of particular applications such as benchtops, splashbacks, walls other than splashbacks and floors was implicitly authorised by Caesarstone’s supply of the slabs to those persons with no restriction as to what they could use them for. The Caesarstone in its most simple form was a building product, which could be used by a stonemason as required by a client.

597    Similarly, by providing the slabs and giving instructions as to how the slab should be transported carefully, Caesarstone provided sufficient control over the wholesaling and retailing of the slabs in Australia by ensuring those services were provided in respect of a quality Caesarstone slab.

598    In any event, the evidence showed that the extent of control went well beyond the mere supply of the slabs to Australia. The control included an exclusive licence agreement between Caesarstone and Tessera which required Tessera to “actively and diligently promote the sale of the Products by among other things, personal solicitations of and calls upon, customers and prospective customers and by rendering such services as may be required to demonstrate the adaptability of the Product for intended use within the Territory”. The requirement that Tessera would instruct its employees and contractors to “follow Caesarstone’s fabrication and installation instructions and technical manuals” did not derogate from the general instruction to promote the slabs diligently for intended uses.

599    Furthermore, examples of Caesarstone exercising control in various ways were set out in the evidence, as follows: consumers were directed to Caesarstone’s website located at domain name www.caesarstone.com. That website showed the Caesarstone slabs being used for flooring (on stairs) and splashbacks. The website plainly also directed Caesarstone’s distributors in Australia as to the applications to which the slabs could be put; the Caesarstone Product Guide from 2002 provided that the initial 10 year limited warranty was offered to consumers by Caesarstone; enquiries were sent from Caesarstone’s Australian licensees (including representatives from Tessera) and advice was given by representatives from Caesarstone regarding technical questions involving the Caesarstone slabs; presentations were given by representatives of Caesarstone to employees of its licensees including the Caesarstone National Conference which was held in Sydney on 12 July 2005. Sessions at that conference were presented by employees of Caesarstone being Esta Ben-Malke (export manager for Caesarstone) and Amir Rotam (sales and marketing manager for Caesarstone). Those representatives presented on use of the Caesarstone slabs for floors, wall cladding and stairs; technical documents and instructions were provided by Caesarstone to its licensees; directions were given by representatives of Caesarstone to update the Caesarstone Australia website; employees of Caesarstone’s licensees in Australia worked closely with representatives of Caesarstone in relation to the technical elements of the Caesarstone slabs and what should and should not be said to consumers about the product; and Caesarstone would show the representatives of its licensees in Australia examples of the different applications of the Caesarstone slabs including during visits to Israel in 2005.

600    Caesarstone submitted that Ceramiche Caesar sought to make much during the trial of the statement in the May 2005 Fabrication Manual that the Caesarstone slabs were “not suitable for flooring”. However, that statement was not one that was given by or adopted by Caesarstone, as could be seen from the July 2005 slide show which specifically indicated the use of Caesarstone slabs on walls and floors. In any event, Caesarstone submitted, the statement in the May 2005 Fabrication Manual was plainly directed to the question whether the extended 10 year warranty would apply. The fact that the Caesarstone surface might be scratched, did not mean it could not be used for flooring. Therefore, the statement “not suitable for” did not mean “not able to be used or promoted for”.

601    Regardless of the Fabrication Manual of May 2005, the evidence was that the Caesarstone slabs were in fact promoted before and after May 2005 for use as floors, splashbacks and walls other than splashbacks in Australia. Caesarstone exercised sufficient control by itself manufacturing the product and telling its Australian distributors that the slabs could be used for that purpose on its website (via the photographs on the website) or in its direct discussions with Mr Dixon and at the Caesarstone National Conference.

602    In relation to s 58A, Caesarstone submitted it required more than mere common law ownership which might be established by a single prior use. For prior continuous use, the use of the cited mark (here the CÆSAR Device mark), must first be prior to the use of the trade mark applicant and also be “continuous”. By continuous, the mark should at least not have been abandoned. But Caesarstone contended that the word “continuous” required something more than mere non-abandonment – it also required there to be a “continuum” of use in the sense that it was not trifling, not de minimis and, in particular, not swamped or overborne by use of the device mark with an addition or alteration that substantially affected the identity of the mark, within the meaning of s 7(1).

603    Furthermore, the relevant prior continuous use under s 58A must be of the trade mark cited under s 44 (described in s 58(3) as the “similar mark”, namely the “the substantially identical or deceptively similar trade mark”). Here, that “similar mark” must be the CÆSAR Device mark and not some other mark.

604    Caesarstone repeated its earlier submissions as to the use of the CÆSAR Device mark being with the word CERAMICHE above it. While an Italian might understand what the term “Ceramiche” meant, it was apparent that the average Australian consumer would not know that to be the case. Even if the word Ceramiche was understood to mean “ceramic” by the average Australian consumer, that did not mean the addition of the word CERAMICHE to the CÆSAR Device mark did not substantially affect the identity of the mark. The word CERAMIC may be descriptive of the material which ceramic tiles are made of but was not directly descriptive of a tile. More importantly, however, the word CERAMIC was not another word for “CAESAR”. It had its own meaning which necessarily affected the identity of the mark which had connotations of the Roman Caesars.

605    Caesarstone submitted that the use of the CÆSAR Device mark outside Australia was not a relevant use. The use must be in Australia for s 58A.

606    Caesarstone submitted that such a de minimis use of the CÆSAR Device mark, even if it could be called trade mark usage, could not be considered to be continuous use for the purposes of s 58A.

607    If the prior use defence failed, Caesarstone relied on s 44(3): that is, if the Court found in favour of Ceramiche Caesar on the s 58A ground of opposition as overcoming s 44(4), the Court should allow registration of the Caesarstone marks under the provisions of either s 44(3)(a) or (b), for the following reasons. In this regard, Caesarstone adopted what was said in Australian Broadcasting Corporation v Commercial Radio Australia Ltd [2010] ATMO 46; 88 IPR 376 at [25].

608    Caesarstone submitted that s 58A could not be treated as an independent ground of opposition that operated even if s 44(3) was established. It only arose if s 44(4) was asserted and only to that extent. Sections 44(3) and (4) were alternative bases upon which the ground of opposition under s 44(1) or (2) could be defended. To construe the provision otherwise would be a nonsense since the trade mark applicant could simply not press s 44(4) then s 58A could not operate. Alternatively, the trade mark applicant could apply for the mark again and do the same. That is, given s 58A only applied if s 44(4) was argued by the trade mark applicant, the beneficial nature of s 44(3) meant that it could not be excluded by operation of s 58A.

609    Turning next to s 44(3)(a) - honest concurrent use – Caesarstone submitted that if the Court found that the CÆSAR Device mark could be cited against the Caesarstone marks pursuant to s 44, Caesarstone relied on the provisions of s 44(3)(a).

610    In assessing honest concurrent use, Caesarstone submitted, the Court should have regard to the following: the honesty of the concurrent use; the extent of the use in duration, area and volume; the degree of confusion likely to ensue; whether any instances of confusion had, in fact, been proved; and the relative inconvenience which would be caused to the parties by the allowance or denial of the registration. Caesarstone referred to Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd [2012] FCA 1022; 97 IPR 183 at [147] - [150]. At [150], Jacobson J said:

In my opinion, the rationale for the honest concurrent use provision to which Bowen CJ referred in Riv-Oland suggests that, in a global market, the expansion of the market from different parts of the world into Australia ought, in an appropriate case, to be accommodated under s 44(3) of the Act. That seems to me to be an important factor in the present case to be weighed in MCIL’s favour in the exercise of the discretion.

611    Caesarstone submitted that similar observations may be made in the present case where the protagonists were each part of global enterprises that had expanded honestly into the Australian market with names that, for the purposes of s 44(3)(a), were assumed to be deceptively similar and in respect of goods that were assumed to be similar.

612    Caesarstone submitted it was well established that use of a trade mark may be honest even though it commenced with knowledge of the prior trade mark: Alex Pirie & Sons Ltds Application (1933) 50 RPC 147 at 159.

613    This was not a case where Caesarstone has copied its name from Ceramiche Caesar, or adopted the mark with the knowledge that it was identical or very similar to an earlier mark. Nor was this a case where Caesarstone had adopted its name in the face of objections by Ceramiche Caesar. Caesarstone invented its name in Israel in 1987. The first trade mark application filed by Ceramiche Caesar came 6 years later in Italy in November 1993 and there was no evidence that Caesarstone knew of that at the time.

614    Caesarstone first sold its slabs in Australia in 1998, being 7 years before the priority date of the Caesarstone Goods Word mark of 2 June 2005. During that period, Caesarstone’s use of the Caesarstone Word mark and its sales had been extensive. Between 2002 and 2004, Caesarstones sales in Australia under the Caesarstone Word mark were AUD 55 million.

615    Caesarstone submitted that the delegate in Decision 1 appeared to be of the view that s 44(3) could only apply when the cited mark, here the CÆSAR Device mark was in fact used, or used extensively by the owner, here Ceramiche Caesar. Caesarstone submitted that the better view was that concurrency of use did not require actual use by both parties: Origins Natural Resources Inc v Origin Clothing Ltd [1995] FSR 280 at 287 per Jacob J.

616    Turning to honesty of use, Caesarstone submitted that it understood that Ceramiche Caesar invited the Court to infer that there had been dishonesty on the part of Caesarstone in relation to its application for the Caesarstone Word mark, as a result of information gained from Ceramiche Caesar’s opposition to a separate and unrelated trade mark filed by Caesarstone, being the Caesar Mosaic mark.

617    In answer, Caesarstone submitted, first, honest concurrent use was not concerned with the application for registration of a trade mark but the honesty of use of that trade mark. Accordingly, it was of no relevance what Caesarstone’s intentions were with respect to applying for the mark. That was a matter which was solely addressed by s 62A, which was not relied upon by Ceramiche Caesar. Second, honesty of use did not become dishonest simply because an applicant became aware of the existence of a similar mark. It was plain that Caesarstone adopted and used its Caesarstone trade mark in Australia in respect of the disputed goods and services well prior to learning anything from the Caesar Mosaic mark dispute. Third, the chronology of events arising from the Caesar Mosaic mark dispute showed that Caesarstone was never aware of the detail of any use by Ceramiche Caesar in Australia given that the confidential annexures to Ceramiche Caesar’s statutory declaration filed in opposition to the Caesar Mosaic mark were never sent to Caesarstone. Caesarstone only received the anodyne three page covering statutory declaration in April 2005.

618    Any attempt by Ceramiche Caesar, Caesarstone submitted, to have the Court draw an adverse inference in respect of the decision by Caesarstone to not call its former attorneys from 14 years ago, who acted in unrelated proceedings, was without foundation. Caesarstone gave discovery in September 2016 as required as to the first date that it became aware that Ceramiche Caesar was conducting business in Australia and of the evidence filed by Ceramiche Caesar in relation to the Caesar Mosaic mark application. The documents discovered and produced showed that only the declaration of Mr Annovi, not its annexures, were provided to Caesarstone in April 2005. It was not put to Mr Dixon, who had access to the books and records of Caesarstone, that the discovery was deficient.

619    Even if Caesarstone had any awareness of Ceramiche Caesar’s presence in Australia by April 2005 or even August 2004, that would not preclude it from having acted honestly, given that by that time, Caesarstone had been supplying the Caesarstone slabs for approximately seven years in Australia; had been promoting the Caesarstone slabs in Australia for a range of applications, including flooring and wall panelling, for at least three years; had obtained registration for the Caesarstone Word mark in relation to Class 20 goods from December 2000; and had no direct knowledge of the nature or extent of Ceramiche Caesar’s presence in Australia.

620    Caesarstone’s submissions then turned to the extent and duration of use by it of the trade marks. Caesarstone submitted that when considering the extent of use, consideration of the type and cost of the product should be taken into account. In the present case, each sale of a Caesarstone slab involved numerous parties including a consumer, architect, interior designer, builder and retailer. Furthermore, for each sale, there were likely to be numerous occasions when the mark was used because the products were not bought on a whim but after much consideration.

621    Caesarstone submitted that the type and duration of the use of the Caesarstone Word mark had been set out in detail in its earlier submissions concerning prior continuous use. While the use in relation to splashbacks, walls other than splashbacks and floors had been less than for benchtops, given the relative expense of the product, its use had been sufficiently extensive. In light of the evidence of the various stonemasons, Caesarstone contended that from 2001 to June 2005: between 5% and 40% of sales of Caesarstone slabs were for splashbacks; between 2.5% and 10% of sales of Caesarstone slabs were for walls other than splashbacks; and between 1% and 2.5% of sales of Caesarstone slabs were for flooring.

622    There was no suggestion, Caesarstone submitted, that those percentages changed significantly between 2005 and August 2007. Those percentages resulted in considerable dollar figures and were indicative of significant use of the mark in respect of the designated goods and wholesale services and maintenance services of those goods during the relevant periods.

623    Turning to the degree of confusion likely to ensue, Caesarstone submitted that s 44(3)(a) assumed that there was deceptive similarity between the marks and that the goods were similar goods or the services were closely related. Nevertheless, there were degrees of deceptive similarity. Here, on the basis of the submissions already made in relation to deceptive similarity, there was not a high likelihood of confusion likely to ensue. Even if there were, that did not discount the possibility of the marks being co-registered. Section 44(3)(a) proceeded on the assumption that it may operate where marks were “substantially identical”.

624    Caesarstone repeated its submissions that there were no instances of actual confusion: it would be extraordinary, the submission went, that, if the marks were likely to deceive or cause confusion, neither party was aware of, and that Ceramiche Caesar had not adduced any evidence of, actual confusion. That was especially so since Mr Ryan had apparently dealt with promotions for both parties products for at least 15 or so years. There was no reason to consider that the circumstance of no actual confusion would not continue, even though s 44(3)(a) plainly contemplated that confusion may occur.

625    Caesarstone’s submissions then turned to relative inconvenience. Since 2002, Caesarstone’s sales in Australia of the Caesarstone goods under the Caesarstone Word mark had been in the hundreds of millions of dollars. The sales had all been in respect of slabs that could be used in a range of applications such as bathroom, bench and kitchen countertops, splashbacks, wall claddings and flooring. While Caesarstone was already the owner of Australian trade mark No. 861751, that registration did not reflect the full range of applications for which the Caesarstone slabs were now, and had for many years, been promoted and sold. In fact, Class 19 was plainly better suited since Caesarstone did not sell furniture (Class 20) but materials for building (Class 19).

626    Caesarstone adopted the approach of the Assistant Registrar in K-Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149 at 159 where it was held that denial of registration after 17 years of use would be a considerable inconvenience.

627    Caesarstone submitted it would be a considerable inconvenience to it if its significant sales and presence in the Australian marketplace under the Caesarstone Word mark – being seven years as at the priority date and 19 years to date – were to go without proper recognition. Caesarstone referred to the evidence of Mr Dixon that if the Caesarstone Word mark did not proceed to registration then: it would not have the protection of a registered trade mark to enjoin third parties from using the mark (or a substantially identical or deceptively similar mark) for similar goods or closely related services to the Caesarstone goods (especially since Class 19 goods were not closely related goods to Class 20 goods, therefore its current Caesarstone word mark registration in Class 20 would not assist in that respect); and Caesarstone may risk the goodwill that it had built up in the Caesarstone Word Mark by reference to the Caesarstone Goods, which it had been using for almost 17 years and which were of the same nature as its slabs in Class 20.

628    At the same time, Caesarstone submitted, no inconvenience to Ceramiche Caesar was likely. It appeared that it had been able to continue to trade alongside Caesarstone for the last 16 years with no apparent difficulty. Ceramiche Caesar’s contention that consumers were likely to be confused and that registration of the Caesarstone Word mark would harm Ceramiche Caesar’s business and inconvenience its customers could not seriously be maintained in light of the fact that there had been no actual instances of consumer confusion ever reported.

629    To the contrary, the evidence indicated that since Caesarstone’s entry into the Australian marketplace in 1998, Ceramiche Caesar’s Australian sales had been at a higher level than its sales levels before 1998. There was no other evidence to suggest that Ceramiche Caesar would suffer any inconvenience as a result of the registration of the Caesarstone Word marks.

630    Caesarstone sought to secure trade mark protection for its key brand and trading name for the full range of applications for which it had long advertised and sold its slabs.

631    Caesarstone’s submissions then turned, in the alternative, to s 44(3)(b) – other circumstances. If the Court did not accept that Caesarstone had established honest concurrent use of the Caesarstone Word mark pursuant to s 44(3)(a), then Caesarstone relied on s 44(3)(b) and submitted that the Caesarstone Word mark ought to be accepted without any conditions or limitations.

632    Caesarstone submitted, with reference to Davison M, Johnston K, Kennedy P, Shanahan’s Australian Law of Trade Marks and Passing Off, (3rd ed, Lawbook Co, 2003) at [9.90], that other circumstances ought to be construed more broadly than special circumstances that were available under the Trade Marks Act 1955 (Cth) and may comprise any aspect of the applicant’s use tending to minimize the risk of confusion or showing particular hardship. The ultimate consideration was whether it was proper to do so.

633    Caesarstone submitted that the following matters ought to be taken into consideration in the exercise of the Court’s discretion to allow the registration of the Caesarstone Word mark pursuant to s 44(3)(b): Caesarstone’s registration of its Caesarstone mark in Class 20 with a priority date of 28 December 2000 (see [4] above) predated the priority date of the CÆSAR Device mark; there had been no evidence of any actual confusion between the Caesarstone trade mark and the CÆSAR Device mark in almost 20 years of concurrent trading (including seven years of concurrent trading as at the priority date of 2 June 2005); Caesarstone had a significant reputation in its CAESARSTONE name in Australia; there would be considerable inconvenience to Caesarstone, as earlier submitted; the trade mark was the name of the trade mark applicant, Caesarstone; and the Caesarstone Word mark had co-existed with the CÆSAR Device mark in other countries, including in the USA since 1997.

634    As to the CAESARSTONE Device mark, if the Caesarstone Word marks were to be registered without limitation, so too should the CAESARSTONE Device mark as it currently traded under that mark.

635    Caesarstone’s submissions then turned to s 59 and to Ceramiche Caesar’s contention that at the time of filing the various Caesarstone marks, Caesarstone did not have an intention to use each respective mark in relation to the designated goods or services.

636    Caesarstone submitted that regardless of what the position may be today, the question was whether Ceramiche Caesar had established a prima facie case as at June 2005 or August 2007 that Caesarstone had no intention to use the mark then or in future in respect of the relevant goods or services. Ceramiche Caesar’s case as pleaded rose no higher than speculation. The case Ceramiche Caesar took in its opening (which was not supported by its pleading) was also no higher than assertion. Ceramiche Caesar assertions in its opening submissions were no longer pressed.

637    In closing submissions the question was limited to whether or not there was an intent to use in relation to goods that were not tiles. Caesarstone accepted that the registration as originally formulated did say tiles and it was amended to exclude tiles, but that was not the limit of the original registration. The existing registration was for wall panels and for flooring, not in the nature of tiles, and they were plainly uses and goods to which the marks could be applied. There was nothing to suggest that by limiting the trade mark registration there was an indication of an intention no longer to use it for the very goods to which it was now applied.

638    Caesarstone’s submissions then turned to s 88. Caesarstone did not accept that Ceramiche Caesar was an aggrieved person for the purposes of s 88(1) because, objectively speaking, there could be no risk of confusion in the marketplace between the putative use of the marks complained of and Ceramiche Caesar’s use of its marks: the marks were not deceptively similar.

639    For s 88(2)(a), Caesarstone also submitted that Ceramiche Caesar would not have succeeded in opposing the registration of the Caesarstone Services Word mark, had it sought to do so, on the basis of ss 44, 58A (as arising only from s 44(4)) or 59, being the same grounds on which it sought to oppose the Caesarstone Goods Word mark and CAESARSTONE Device mark. Caesarstone relied on its earlier submissions for that purpose.

640    For s 88(2)(c), Caesarstone contended that there were no “circumstances applying at the time when the application for rectification is filed” by reason of which “the use of the trade mark is likely to deceive or cause confusion”. That was primarily because the marks were not deceptively similar, on the basis of its earlier submissions.

641    There was no risk of any deception or confusion arising as a result of the full notional use of the Caesarstone Services Word mark as at 21 December 2015 for the following reasons: the Caesarstone Services Word mark was not substantially identical with or deceptively similar to the CÆSAR Device mark; there had been no evidence of any actual confusion between the Caesarstone Services Word mark and the CÆSAR Device mark in over 17 years of concurrent trading; Caesarstone had developed a significant reputation in the Caesarstone Services Word mark in respect of the Caesarstone slabs and their sale, installation, maintenance and repair in Australia such that the public was well aware of it and its product.

642    Caesarstone submitted that as at December 2015, Ceramiche Caesar had not acquired any greater relevant reputation in Australia in the CÆSAR Device mark than existed as at 2005 or 2007. Its sales had been relatively static in Australia over time. Accordingly, given Ceramiche Caesar had not asserted ss 42(b) or 60 against the trade mark applications, there was no basis for it to assert those kinds of objections as at December 2015.

643    Caesarstone submitted that, in any event, the Court had a discretion not to cancel: even if the Court did not accept Caesarstone’s position that it would have successfully defended any opposition filed by Ceramiche Caesar against the Caesarstone Services Word mark, Caesarstone submitted that the Court should exercise its discretion to allow the mark to remain on the Register as it presently was and dismiss the application for rectification filed by Ceramiche Caesar.

644    Caesarstone submitted that the Court should exercise: its general discretion in s 88(1) and the specific discretion in s 89(1)(b) on the basis that the grounds relied upon by Ceramiche Caesar had not arisen through any act or fault of Caesarstone.

645    Regulation 8.2 of the Trade Marks Regulations 1995 (Cth) provided that the following matters must be taken into account, so far as they were relevant:

(a)    the extent to which the public interest will be affected if registration of the trade mark is not cancelled;

(b)    whether any circumstances that gave rise to the application have ceased to exist;

(c)    the extent to which the trade mark distinguished the relevant goods and/or services before the circumstances giving rise to the application arose;

(d)    whether there is any order or other remedy, other than an order for rectification, that would be adequate in the circumstances.

646    Caesarstone made the following submissions in support of the Court exercising its general discretion under either ss 88(1) or 89(1)(b) to reject the application for rectification filed by Ceramiche Caesar.

647    The public interest would not be adversely affected if the Caesarstone Services Word mark remained registered. There was no likelihood of the Caesarstone Services Word mark being used in any way detrimental to the public interest. Rather, the public interest would be adversely affected if Caesarstone could no longer use the Caesarstone Services Word mark, as it was the name of the company and the primary brand of the business and it would need to rebrand to a different name if it could no longer use the Caesarstone Services Word mark. Caesarstone enjoyed a significant market share in the Australian market and it would need to re-educate the Australian buying public that its goods and services were still available in Australia if a complete rebranding exercise was required.

648    Further, Caesarstone was a global company with subsidiaries in Israel, North America (USA and Canada) and South East Asia and distributors in South America, Europe, the Middle East and Africa. Any rebrand required in the Australian market may potentially require a rebranding exercise to be undertaken worldwide.

649    There had been no evidence of any actual confusion between the Caesarstone Services Word mark and Ceramiche Caesar in 17 years of concurrent trading in Australia (or elsewhere).

650    Caesarstone had developed a significant reputation in the Caesarstone Services Word mark in respect of reconstituted quartz surfaces and their sale, installation, maintenance and repair in Australia. Accordingly, the Caesarstone Services Word mark had come to distinguish the Caesarstone services well before the circumstances giving rise to Ceramiche Caesar’s application arose.

651    Ceramiche Caesar would have been aware of the Caesarstone Services Word mark when that trade mark was advertised for opposition. This fact could be inferred as Ceramiche Caesar had opposed the CAESARSTONE Device mark which was applied for on the same date. It seemed that Ceramiche Caesar made a conscious decision at the time not to oppose the Caesarstone Services Word mark.

652    Accordingly, an order for rectification was not appropriate in the circumstances and no other order or remedy was appropriate.

653    In reply, Ceramiche Caesar took issue with the submission on behalf of Caesarstone that evidence to the effect that no other Italian tile manufacturers used the name Caesar was irrelevant on the basis that inherent distinctiveness was a hypothetical question asked in the absence of actual usage. Ceramiche Caesar referred to s 219 of the Trade Marks Act, to Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; 180 FCR 60 and to Cantarella at [70]-[71], [73]-[77] in relation to s 41.

654    In relation to the issue of control, Ceramiche Caesar submitted there was no answer from Caesarstone to the Cimstone issue. What happened was the Australian entities, who were said to be authorised users, took the inferior Turkish tile of a competitor of Caesarstone and applied Caesarstone’s trade mark to that inferior Turkish tile and sold it to the Australian marketplace for five years. Control was a question of fact and degree and all relevant circumstances were to be taken into account. What happened with those Turkish tiles was that actual control was not exercised.

655    Ceramiche Caesar submitted that the evidence in relation to control by means of the Fabrication Manuals was Mr Harrop’s. His evidence was that between 2001and 2004 he was not provided with any Fabrication Manual at all and accordingly he fabricated the finished product by drawing on his own skill and experience as a stonemason. That evidence should be preferred to the general evidence of Mr Dixon who did not say that those early Fabrication Manuals were distributed to stonemasons.

656    One fabricated application of the Caesarstone slabs was as a floor or wall panel. That was the application for which registration was sought. If control was to be established, it had to be control over that good; that is, control over the fabrication of that floor or wall panel, because there were two trade dealings: one was a trade dealing in a slab and the second was a separate transaction, whereby a customer bought a finished floor or wall panel from a stonemason. Control must be exercised over that transformation between the raw slab after it was purchased by the stonemason, and it being sold to the customer, if Caesarstone was to succeed on that matter. In any case it was clear, Ceramiche Caesar submitted, having regard to the May 2005 Fabrication Manual, that there could not have been any authority in relation to flooring, because it was stated that the products were not suitable for flooring.

657    In relation to the doctrine of honest concurrent use, this recognised that a degree of confusion may be tolerable where two traders have traded together in the same marketplace in an honest way over a period of some time. Often it was two or three or four or even five years that was required. Here, any use by Caesarstone for flooring in particular but also walling was uncertain and equivocal.

658    Ceramiche Caesar did not advance the submission that Caesarstone had been dishonest but that it had not discharged its onus of being honest, and honesty involved a consideration of intent at the time of filing the trade mark application and dealings with the Trade Marks Office. Caesarstone wanted tiles at June 2005, it applied for tiles and then it deleted tiles to get the trade mark over the line. If Caesarstone had wanted tiles they should have pressed that registration and ran a case of honest concurrent use with the goods that they wanted. They did not do that. They deleted the word “tiles”. Ceramiche Caesar submitted that if that trade mark was permitted to proceed to registration in that form with that disclaimer, there would be real prejudice.

Consideration

General

659    It is convenient to first consider some general issues, which may be dealt with separately.

660    The first issue is to identify what mark was in fact used by Ceramiche Caesar in Australia. I find that in the overwhelming number of cases, in terms of promotional materials and invoices, the word “Ceramiche” sat above the word “CÆSAR”. As to which form of stamp was used on the underside of Ceramiche Caesar’s tiles in Australia in the relevant periods, I find that it is more probable than not that the word “Ceramiche” appeared with the word “CÆSAR”.

661    I next turn to whether that finding affects what trade mark was used by Ceramiche Caesar. In other words, I now consider whether the word “Ceramiche” was used as part of the registered CÆSAR Device mark, or whether it was a separate component to the use of that mark.

662    I do not accept the evidence that the word Ceramiche had little meaning in Australia to those in the market for Ceramiche Caesar’s tiles. The foreign word visually and aurally is almost identical to the English word. In particular, the first seven letters of the Italian word comprise the English word. Moreover, of the two letters added, they do not add any new syllable, but merely operate to change a hard “c” sound to a soft “s” sound, two related sounds in the English language. I find that the word would not require translation: compare, in relation to s 41, Cantarella at [49]. If the word Ceramiche as a foreign word did have meaning, then that meaning referred directly to the character or quality of the goods, being ceramic tiles. The same applies if, which is my finding, it did not require translation but had meaning in Australia to those in the market. It would therefore lack distinctiveness in either case.

663    This is in contrast to the word Caesar which, I find, did have a distinctive meaning. The meaning, I find, did not directly describe the character or quality of the goods which Ceramiche Caesar applied it to, but conveyed an allusive or metaphorical meaning by reference to the Roman Caesars of 2000 years ago and hence connotations of power, supremacy and tradition as well as connotations of the Italian origin of the goods. I therefore find that the word Caesar did not lack distinctiveness as a trade mark.

664    I also find not only that the word Ceramiche itself lacked meaning in terms of what it conveyed but also that it was relatively insignificant in terms of its size and prominence, both in the promotional material and when placed on the goods. In my opinion the word Ceramiche was not used as part of the trade mark.

665    Further, returning to the question of the CÆSAR Device mark, I find that the font was of no separate significance, by reference to the recollection of persons of ordinary intelligence and memory, in terms of the impression those persons would have of the CÆSAR Device mark. The font may have complemented the word “CÆSAR” in terms of its allusion to the Roman Caesars, but did no more.

666    Similarly, I find that what was referred to in submissions as the ligature in the word “CÆSAR” was of no separate significance. Again it may have complemented the word “CÆSAR” in terms of its allusion to the Roman Caesars, but did no more.

667    The two diamond devices on either side I find are also insignificant and unlikely to have been noticed or recollected by persons of ordinary intelligence and memory. Those devices have to be seen as part of the whole where the word CÆSAR is dominant. They are relatively small and do not detract from the word CÆSAR as a matter of its appearance or as a matter of the word’s connotations. The diamonds do not add any connotations. I do not accept Caesarstone’s submission that Mr Tancredi gave contrary evidence. If he did, I do not regard that evidence as persuasive in terms of the test that needs to be applied.

668    The capitalisation I find to be in the same position, that is, it has in itself no significance.

669    I reject the submission on behalf of Caesarstone that the CÆSAR Device mark is a composite mark containing a non-distinctive Caesar name, the ligature Æ device along with all capitals and stylised font; and the two diamond devices positioned on either side of the word CÆSAR.

670    I conclude that the CÆSAR Device mark was not a composite mark and I further conclude that the CÆSAR Device mark did not consist of a number of elements. I find that it is the word CÆSAR that had first importance as a matter of the imperfect recollection of the relevant customers.

671    I turn next to consider the question of the correct class for Caesarstone’s goods and the issue, on which much time was spent, of the nature or character of splashbacks.

672    I find by reference to the ordinary meaning of the word and by reference to the evidence that a splashback is a surface on a wall, is a vertical surface, and is a wall cladding. Mr Tancredi of Ceramiche Caesar accepted this, as did Mr Ryan and Mr Malavasi. The particular significance of the word “splashback” is that it is proof against splashes. The term “wall cladding” means no more than a covering for a wall. In my opinion, a splashback is commonly protective of a wall but that does not have the consequence, for which Ceramiche Caesar contended, that the splashback itself is not also wall cladding even when, as it often is, it is itself affixed to material, for example gyprock, which is itself also wall cladding. Mr Ryan’s evidence was to this effect, as was Mr Malavasi’s.

673    The main significance of the dispute about the nature of splashbacks was this. Caesarstone accepted that splashbacks were not identified by name in the Class 19 goods in respect of which it sought registration, but submitted that use of its product as a splashback was sufficient to give a registration in relation to wall cladding generally, goods which are specifically mentioned in Class 19.

674    A related dispute concerned the meaning of the word “tiles”. The particular significance of this issue was whether the Caesarstone slabs answered the description of “tiles”. I find that what is or is not a tile is largely to be answered by reference to the dimensions of the material in question. Whether or not it is shaped by a stonemason is also relevant. Notwithstanding the evidence, which I accept, of the trend towards larger tiles, while it is possible to consider a thick, say 30mm, unshaped slab three metres long as sold to stonemasons to be a “tile”, I do not consider that to be the ordinary meaning or the meaning which the witnesses generally accepted by way of usage. I accept the evidence that a slab is not a benchtop, splashback, floor panel or wall panel when delivered to the stonemason because at that point it has not yet been manufactured and that assists my conclusion that the unfabricated slab is not a tile.

675    Once a Caesarstone slab is shaped by a stonemason into panels for floors or wall cladding, it could not, in my opinion, be said that such panels for floors or wall cladding were not in the nature of tiles. Ordinary usage, and the evidence which I accept, show that a slab once shaped by a stonemason may be referred to as a floor panel or wall panel or as a large format tile or as a tile. I accept Ms Hannah’s and Mr Dixon’s evidence in this respect. I therefore find, in relation to Class 19, that the words “none of the foregoing being in the nature of tiles” with reference to the words which precede that phrase, make the meaning of the whole uncertain or meaningless. For example, to state “panels for floors” or “wall cladding” and then to say “none of the foregoing being in the nature of tiles” so qualifies the meaning of the former two expressions as to make the whole, at least, uncertain and, at worst, meaningless.

676    In light of these conclusions, I turn to consider briefly the classes. Class 20, which in the main covers furniture, is not the correct class for Caesarstone slabs as supplied by Caesarstone to stonemasons or to a similar trade channel. It could be apposite for the products fashioned by the stonemasons from the Caesarstone slabs and supplied by the stonemasons to end users, but that would depend on the particular use. For example, it would not be apposite where the particular use was for flooring or walling.

677    Class 19, which in the main covers building materials, is the correct class at least for Caesarstone slabs, being formed of composite stone, as supplied by Caesarstone to stonemasons or to a similar trade channel. In relation to services, Class 35 concerns commercial services and would be apt at least in relation to slabs formed of composite stone. Similarly, Class 37 extends to services relating to the construction of buildings and to repair services in the field of furniture and would be apt at least in relation to slabs formed of composite stone. I consider the question of classes more fully below.

678    Next, I turn to the question of deceptive similarity and the question whether the Caesarstone marks are deceptively similar to the Ceramiche Caesar mark. I apply Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd at 415-416 citing Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; 58 CLR 641 at 658 and the considerations referred to by Yates J in Optical 88 Ltd at [100] and [111]. Each mark must be compared as a whole. It is necessary to look at all the elements in their context. This will include the size, prominence and stylisation of words and device elements used in the mark and their relationship to each other. The impression created by the mark, considered as a whole, can only be determined by doing this. However, in this connection, it is recognised that deceptive similarity may be established when an impugned mark uses an “essential” or “distinguishing” feature of the mark as registered. The two marks are not to be compared side-by-side, the consumer being treated as having “imperfect recollection” of, here, the CÆSAR Device mark.

679    In Crazy Ron’s Communication Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196; 209 ALR 1 the Full Court, at [103], set aside the finding by the primary judge that the appellant’s mark was deceptively similar to the “1995 mark” because it rested on the finding that the phrase “Crazy John” constituted an essential element of the 1995 mark and that finding could not stand. The Full Court noted, at [93], that neither party suggested that the case should be decided without reference to the “essential feature” of the 1995 mark. In my opinion, their Honours reasoned that decisions relying on an “essential feature” generally appeared to involve much less elaborate marks than the 1995 mark and that, although everything depended on the particular circumstances of the case, some caution needed to be exercised before characterising words in a complex composite registered trade mark as an “essential feature” because, if such a characterisation was made too readily, it effectively converted a composite mark into something quite different: see at [93] and [100]. I have taken into account that cautionary observation in relation to what is essentially a factual question, but note that the present case does not involve a complex composite trade mark.

680    Overall, the question of deceptive similarity is one to be resolved in a given case by judicial estimation based on the visual and aural impression created by each mark and on the likely effect to be produced by each mark on the minds of likely customers of the goods and services in the course of the ordinary conduct of affairs.

681    I have already considered the SAR Device mark. I have found that the consumer’s imperfect recollection would be of the word “Caesar”.

682    In relation to the Caesarstone marks, having regard to the likely effect on the minds of likely customers, I reject the submission on behalf Caesarstone that the device component’s adoption of a modern font and appearance further distinguished it, or distinguished it at all, from the “ancient” connotations in the name “Caesar”.

683    I also take into account the observation of Sargent LJ in London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264 at 279 that the beginning of words is more important for the purpose of distinction: see also Johnson & Johnson v Kalnin [1993] FCA 279; 114 ALR 215 at 221 per Gummow J. In this connection I note that the word “caesarstone” begins with the very word and sounds that I have found to be the word recollected by the consumer when recalling the SAR Device mark.

684    Next, there is the word “stone”. I regard that word as no more than descriptive of the goods and so much the less a distinctive part of the overall impression. This conclusion is not affected by the composite, quartz nature of the Caesarstone slabs. The ordinary consumer would not consider that material as falling outside the ambit of the word ‘stone’. It is sold for use in place of natural stone.

685    There is also the occasional capitalisation of the seconds” in Caesarstone. The extent to which the prominence of the word Caesar is reduced by the addition of the word “stone” in the composite word Caesarstone is diminished by the occasional capitalisation of the second “s” which Caesarstone accepted was from time to time employed. This emphasises the two components of the word and tends away from the idea that distinctiveness is achieved by their combination.

686    Nevertheless, the word “caesarstone” must be considered as a whole. I find that it is not descriptive of the goods, as contended by Caesarstone by reference to other uses where the word “stone” is part of a name of manufacturers of similar goods. I find that the word Caesar is, in each of Caesarstone marks, distinctive and dominant.

687    Having taken into account the differences between the two marks, I find the differences to be insignificant such that they do not affect the overall impression that the word Caesar is dominant in the marks in issue. This applies both to visual and aural similarity. So far as concerns conceptual similarity, the word Caesar expresses the same concept in relation to each mark, it being the case that each refers to the Roman Caesars and the associated allusive or metaphorical connotations I have described above.

688    I find not only that there is similarity between the marks but also that the Caesarstone marks in issue are deceptively similar to the SAR Device mark. I reject the submission on behalf of Caesarstone that the differences in ideas of the marks and the non-distinctiveness of the word elements of the marks made it very unlikely that the reasonable consumer would be caused to wonder whether there was an association between the owners of those marks and that any such wonderment would be nothing more than mere speculation.

689    I find that the requirement of closely related goods is satisfied. I note that Caesarstone conceded that the goods claimed in Class 19 for Australian trade mark application Nos. 1058321 and 1211153 filed in the name of Caesarstone were similar goods to the goods claimed in Australian trade mark No. 1031251 registered to Ceramiche Caesar. I also find that wholesale, retail, installation, maintenance and repair services in Classes 35 and 37 are “closely related” to the goods covered by Ceramiche Caesar’s CÆSAR Device mark, because they include such services in respect of tiles. The same conclusion applies to the other flooring and walling goods that were the subject of the Class 35 and Class 37 services.

690    I take into account the nature of the goods, in each case the purchase decision not being made lightly, and also the matter emphasised by Caesarstone which was the involvement of stonemasons or other advisors, for example at display centres. However, although I accept the evidence of Mr Ryan that prospective clients attend showrooms to inspect and purchase floor and wall coverings and to review the Caesarstone sample book, I find that in most cases the stonemason would not be involved until after the decision to purchase by the end user. I also find that a consumer would refer to the respective goods as Caesar and Caesarstone respectively, thus increasing the likelihood of confusion.

691    I find that there has been no actual confusion in the market. I take this into account as a factor, but I accept the submission on behalf of Ceramiche Caesar that the essence of the enquiry is the scope of statutory rights rather than actual market usage. I find that thus far, in terms of the actual market, the overlap and thus the chance of actual confusion has been small. I find that the absence of actual confusion does not support the contention that the marks and the designated goods and services are relevantly distinguishable. I refer to what Mason J said in Berlei (referred to at [465] and [480] above) and to what was said by Lord Diplock in General Electric Co v The General Electric Co Ltd [1973] RPC 297 at 321, as follows:

Where the question of the likelihood of deception or confusion arises on an application to expunge a registered mark which has already been the subject of substantial use, the absence of evidence of actual confusion having occurred is a potent factor in determining whether or not the court should exercise its discretion to expunge the mark from the register. But it does not decide the relevant hypothetical question which must be answered in the affirmative before any question of discretion to expunge the mark arises: would any normal and fair future use of the mark in the course of trade be likely to cause deception or confusion? If actual confusion in the past is proved, this is a strong indication that continued confusion is likely; but the absence of evidence of past confusion may be accounted for by the small extent to which the mark has been used or by special circumstances affecting its past use which may not continue to operate to prevent confusion in the future.

692    I place no significance in this respect on the decision by Ceramiche Caesar to withdraw its claims pursuant to s 42(b) and s 60. The former provision relates to whether or not the use of a trade mark would be contrary to law and the latter provision concerns the reputation of the trade mark before the priority date.

693    I turn to consider the specific issues which arose in relation to the disputed marks.

First disputed mark, trade mark No. 1058321, the priority date by reference to which the claims were to be assessed being 2 June 2005

694    In relation to ss 44(1) and (2), Caesarstone accepted that the priority date of the CÆSAR Device mark was earlier and the goods were similar. I have already found that the Caesarstone trade marks were deceptively similar to the Ceramiche Caesar mark.

695    The question which arises under s 44(4) is whether Caesarstone has continuously used its trade mark(s) for a period beginning before the priority date for the registration of Ceramiche Caesar’s trade mark and ending on the priority date for the registration of Caesarstone’s trade mark(s), being June 2005 for the Caesarstone Goods Word mark and August 2007 for the Caesarstone Services Word mark. In such a case the application for the registration of the Caesarstone trade mark(s) may not be rejected because of the existence of the CAESAR Device mark.

696    I find that Caesarstone used its word mark in relation to splashbacks continuously from April 2001 by reference to quotes issued by employees of Tessera; price lists; specifications for Harvey Norman Renovation Centres; free slab requisition forms; and fabrication instructions. I have already considered and found that a splashback is a form of walling or wall cladding. For walling the continuous use of its word mark, in addition to splashbacks, also from 2001, was in hard surfaces catalogues; quotes to consumers; the Harvey Norman Renovations Centre, Auburn; product guides; at the Tessera showroom and for the promotion of Caesarstone slabs; and letters to builders. For flooring, the continuous use, also from 2001, of its word mark was the Caesarstone slabs had been used for flooring applications and offered for use as flooring as follows: in catalogues; at Gitani Stone in Sydney; letters to home builders; at DesignEx; at the Tessera showroom and for the promotion of Caesarstone slabs; and quotes issued by employees of Tessera. I accept Caesarstone’s submissions in this respect.

697    As to services, I find that from at least 2002, Caesarstone’s Australian licensees offered technical and warranty assistance to consumers. Those licensees employed consultants and also employed a National Technical Manager. I accept Caesarstone’s submissions that the consultants investigated and dealt with warranty claims, undertook repairs and advised customers on the installation of Caesarstone slabs. The consultants were identified with the Caesarstone brand.

698    A substantial part of this argument turned on the issue of control by Caesarstone.

699    To begin, it is appropriate to say something about the structure of ss 7 and 8 of the Trade Marks Act, having regard to what was said by the Full Court in Lodestar at [63] per Besanko J (Allsop CJ, Greenwood and Nicholas JJ agreeing) and recently by Nicholas J in Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company [2018] FCA 1014 at [72]-[75].

700    First, s 7(3) provides that an authorised use of a trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark. Section 8 then deals with an authorised use of the trade mark by a person.

701    Second, for a person to be an authorised user of the trade mark, the person must use the trade mark in relation to goods or services under the control of the owner of the trade mark: s 8(1).

702    Third, the use of a trade mark by an authorised user is an authorised use to the extent only that the user uses the trade mark under the control of the owner of the trade mark: s 8(2). Not all use of a trade mark by an authorised user is necessarily “authorised use”, as made clear by the words “to the extent only”. Some use of the mark by an authorised user may be under the control of the owner of the trade mark, and some use may not be.

703    Fourth, by s 8(3), where the owner of the trade mark exercises quality control over goods or services dealt with or provided in the course of trade by another person and in relation to which the trade mark is used, that second person is taken, for the purposes of s 8(1), to use the trade mark in relation to the goods or services under the control of the owner.

704    Fifth, by s 8(4), where the owner of the trade mark exercises financial control over another person’s relevant trading activities in dealing with or providing goods or services in relation to which a trade mark is used, the second person is taken, for the purposes of s 8(1), to use the trade mark in relation to the goods or services under the control of the owner.

705    Sixth, as Nicholas J observed at [75] and as I have said, because ss 8(3) and (4) are expressed to operate on the definition of “authorised user” in s 8(1), a person may be deemed to be an authorised user by reason of the matters referred to in either s 8(3) or s 8(4) but may also engage in use that is not “authorised use” for the purposes of s 8(2).

706    Seventh, ss 8(3) and (4) are deeming provisions which do not limit the meaning of the expression “under the control of” in either ss 8(1) and (2): see s 8(5).

707    Turning to Lodestar, the primary judge had held that there had been a use of the two trade marks, word marks, WILD GEESE WINES and WILD GEESE, during the relevant period and that that use was to be taken to be a use by the registered owner. The Full Court allowed the appeal.

708    The interests referred to as the Wild Turkey interests did not sell alcoholic beverages in Australia under the name WILD GEESE. The only person using that name in Australia in relation to alcoholic beverages was a company referred to as WGW, the company of a Mr O’Sullivan, and, in the relevant period, that company used the name in relation to merlot wine it produced.

709    The Wild Turkey interests had not directly used the trade marks during the relevant period. Nevertheless, they opposed an application for the removal of the trade marks on the ground that the use by WGW under a Licence Agreement was an authorised use within s 8 and therefore taken to be a use by the Wild Turkey interests by reason of s 7(3). The relevant issue was whether the use by WGW was an authorised use within s 8. The Full Court held that it was not.

710    The Licence Agreement, it was held at [103], in practical terms had no effect on the way in which Mr O’Sullivan conducted his business. The consideration of the facts was divided between the provisions of the Licence Agreement dealing with quality control and those dealing with the use of the trade marks.

711    As to the former, at [107], it was held that the existence of cl 3 in the Licence Agreement did not satisfy s 8(3): the quality standard in that clause had no effect on Mr O’Sullivan’s winemaking practices; Austin Nichols, the company representing the Wild Turkey interests, did not contact Mr O’Sullivan about the wine he was making or selling or both; there was never any request by Austin Nichols for samples under cl 3.1 or for the product to be supplied to the Australian Wine Research Institute under cl 3.2. There was no monitoring and nothing to suggest that Austin Nichols took steps to ascertain whether the terms in cl 3 were being complied with.

712    As to the latter, the use of the trade marks, at [108] it was held that the mere fact that WGW was licensed to use the trade marks was not sufficient to establish control. The restrictions permitting WGW to use the trade marks in relation to the manufacture and distribution of Australian wine sold in Australia were held not to be ones like controls on quality or manufacturing process which might suggest a connection between the registered owner and the use of the trade marks in connection with the provision or dealing with goods in the course of trade. There was no evidence that Austin Nichols monitored or informed itself as to whether WGW was only selling Australian wine in Australia. Mr O’Sullivan was never asked for any information about the use of the trade marks or his winemaking operations generally.

713    The central paragraphs in Besanko J’s judgment, Allsop CJ, Greenwood and Nicholas JJ agreeing, as to the meaning of s 8 were [95] and [97]-[98] as follows:

The meaning of “under the control of” in s 8 is informed by the principle stated by Aickin J in Pioneer [Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 at 683], that is to say, that the trade mark must indicate a connection in the course of trade with the registered owner. The connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. It is the connection which may be slight. Aickin J was not saying the selection or quality control or financial control which (sic) may be slight.

I think control in s 8 means actual control in relation to the use of the trade mark and it means actual control in relation to the trade mark from time to time. I think (as the primary judge did) that that is the primary meaning of the word, and the English cases, so far as they go, support that conclusion. Control involves questions of fact and degree as does the notion of a sufficient connection. There must be control as a matter of substance. For example, I do not think that it could be suggested that the mere fact that the registered owner granted a licence or revocable authority to use the trade mark would be sufficient without more established (sic) control within s 8. That would be inconsistent with the approach taken under the 1955 Act and the Trade Marks Act 1938 (UK). Had it been Parliament’s intention it could be effected by a much simpler provision than s 8.

As I have said, actual control will be a question of fact and degree. A licence agreement may contain a term that sets (sic) in detail a quality standard to be achieved. The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time. The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. The primary judge had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.

714    It is to be noted that in Lodestar the owner of the trade marks did not supply the goods to WGW: it was WGW which was making the wine.

715    Turning first to the Distribution Agreement between Tessera and Caesarstone, it had a commencement date of 1 January 2003 and a termination date of 31 December 2007. The obligations of each party were stated to continue indefinitely on the same terms and conditions after the expiry of the term unless at least six months prior written notice of a wish to terminate was given. There was also a Deed of Addendum to the Distribution Agreement dated 2 February 2004.

716    The relevant terms and conditions on which Caesarstone as manufacturer appointed Tessera as the exclusive distributor of Caesarstone for the Caesarstone slabs in Australia, defined as the Territory, were as follows. “Trade Marks” was defined to mean all trade marks used by Caesarstone in relation to the slabs embodying the word “CaesarStone” in any form and all derivative forms and whether or not the trade marks were registered or registrable. Among the duties of Tessera were the following:

(1)    to actively and diligently promote the sale of the slabs, including by rendering such services as may be required to demonstrate the adaptability of the slabs for intended use within the Territory;

(2)    to cooperate with Caesarstone and assist Caesarstone in promotional and merchandising campaigns;

(3)    to use reasonable efforts to protect and promote the interests, reputation and goodwill of Caesarstone, at the cost and expense of Caesarstone;

(4)    generally to comply with all reasonable requests of Caesarstone in relation to the slabs and offer Caesarstone all reasonable assistance in connection with the sale, promotion and distribution of the slabs;

(5)    to instruct its employees and contractors to follow Caesarstone’s fabrication and installation instructions and technical manuals, which will be provided by Caesarstone from time to time.

717    Clause 10 concerned trade marks and trade names and was in the following terms:

(1)    Subject to the terms of this deed, the Manufacturer by this deed grants to Tessera an exclusive licence in the Territory during the period that this distribution agreement remains in force to use the Trade Marks or any one or more of the Trade Marks in connection with the sale of the Products.

(2)    Tessera shall have the right, during the term of this agreement, to indicate on its letterhead that Tessera is an authorised distributor of the Products.

(3)    Tessera must not do anything which might impair the right, title or interest in or to the Trade Marks or trade names used on or in connection with the Products and must not attempt to acquire any right, title or interest to the Trade Marks, other than expressly authorised by this deed.

(4)    The Manufacturer by this deed authorises Tessera to make applications for registration in the Territory of the Trade Marks or any one or more of the Trade Marks.

(5)    Upon the termination of the distribution agreement contemplated by this deed, Tessera must:

(a)    immediately cease and desist from any use or reference to the Trade Marks and trade names of the Manufacturer and used on the Products;

(b)    immediately cease and desist from any use or reference to any and all representations, direct or implied, that Tessera is the distributor for the Manufacturer; and

(c)    execute a transfer or any other necessary form of documents to transfer title to the Trade Marks to the Manufacturer or any nominee of the Manufacturer, at the cost of the Manufacturer.

(6)    Tessera must advise the Manufacturer of apparent infringement of the Trade Marks within the Territory by third parties and, after written approval from the Manufacturer, may proceed to defend the Trade Marks against any third party. The defence proceedings may be commenced by Tessera, or by Tessera on behalf of the Manufacturer, or jointly by Tessera and the Manufacturer. The Parties must co-operate fully in relation to any defensive proceedings in relation to the Trade Marks against third parties.

(7)    For the avoidance of doubt, the use of the Trade Marks by Tessera in accordance with this agreement shall be free of royalty or licence fees.

(8)    Tessera must market the Products under the name “CaesarStone”.

718    By cl 11(2), Caesarstone agreed to make available to Tessera, for purchase, marketing tool such as brochures, samples and sample books as set out in sch 4.

719    By cl 12, the duties of the manufacturer, Caesarstone, were stated as follows:

(1)    The Manufacturer must provide Tessera with all necessary information and documentation relating to the Products including without limitation, terms and conditions, price lists, promotional and technical data.

(2)    The Manufacturer must provide all reasonable assistance to Tessera to provide answers to all reasonable enquiries about the Products made by Tessera or any customer of Tessera.

(3)    The Manufacturer must provide Tessera and contractors engaged by Tessera with manufacture and installation instructions, specifications and technical support.

720    By the Deed of Addendum, subject to the conditions of it, Caesarstone allowed Tessera to sub- licence to Carsilstone the right to use the name Caesarstone “to market the Products and do what ever is necessary to promote the Products bearing that trade mark in Australia….”

721    Both Tessera and Carsilstone were required in all correspondence and dealings relating to the Products, to clearly indicate that each was acting on its own behalf in selling the Products and to take any other necessary steps to make clear that it was not acting on behalf of Caesarstone unless expressly stated to the contrary in specific circumstances.

722    I accept the evidence of Mr Dixon that the Caesarstone slabs, at all relevant times, have been marked with the Caesarstone mark and that that marking, amongst others, has been visible to anyone inspecting samples of the Caesarstone slabs prior to installation.

723    I also accept the evidence of Mr Dixon that the Caesarstone slabs, at all relevant times, have been required by Caesarstone to be transported in a safe and appropriate manner, as specified in the Caesarstone guide, by being securely attached in the manner specified to the A-frame of a truck, loaded evenly on both sides of the frame, face-to-face and back-to-back with no gaps with the stack of slabs being tied with the frame to the truck.

724    I further accept the evidence of Mr Dixon that Caesarstone, at all relevant times, had provided technical and marketing support services to its Australian distributors, including samples of the Caesarstone slabs and content for brochures and technical documents. I find that Caesarstone Australia, and its predecessors as distributors of the Caesarstone slabs, created their own brochures and technical documents for the Australian marketplace using as a base the content received from Caesarstone.

725    Further, and subject to the exceptions I consider at [731]-[733] below, at all relevant times Caesarstone Australia and its predecessors have provided fabrication manuals to stonemasons to assist with the fabrication and installation of the Caesarstone slabs. For example, the fabrication instructions as at 2002 contained detail as to storage, unloading, visual slab inspection, slab inspection items, colour match, fabrication guidelines to be followed to ensure a high quality product, seam positions, cut outs, adhesives, fabricated tools and installation instructions. The same or substantially the same instructions were given as at 2004. Also in evidence were Caesarstone manuals containing fabrication and installation instructions as at February 2005 and as at August 2005, the latter being marked copyright Carsilstone. In each case, the pages are replete with one or other or sometimes both of the Caesarstone Word marks and the CAESARSTONE Device mark.

726    More particularly I find that: Caesarstone’s website was drawn to the attention of prospective end users in Australia and, in the context of the Caesarstone trade marks, set out applications to which the Caesarstone slabs could be put; Caesarstone Australia received technical documents from time to time from Caesarstone; Caesarstone would at times review the Caesarstone Australia website and inform Caesarstone Australia that the website needed to be updated; and the drafter of Fabrication Manuals, Mr Skentzos, worked closely with Ms Grinfeld of Caesarstone in Israel concerning what the contents of the Fabrication Manuals should be in Australia.

727    I find that Caesarstone as the owner of the trade marks exercised quality control over the goods and services. By way of example, Caesarstone gave its Australian licensees and distributors instructions as to the transport and storage of the goods so as to ensure quality and its fabrication and installation manuals were directed to the same end.

728    I find that the Australian licensees and distributors were therefore taken, by s 8(3), to use the trade marks in relation to the goods and services under the control of the owner, Caesarstone.

729    I also find that Caesarstone’s Australian licensees and distributors used the trade marks under the control of Caesarstone on a wider basis than Caesarstone exercising quality control over the goods and services, although this remains relevant. I reach this conclusion in light of the visible presence of the Caesarstone mark on each Caesarstone slab as supplied to the Australian licensees and distributors under the terms of the Distribution Agreement. It was on that basis that the Caesarstone slabs were supplied by Caesarstone. I also take into account Mr Dixon’s evidence set out at [287] above. In relation to Caesarstone Australia I note as well that it was a subsidiary of Caesarstone but began distributing only from 2008.

730    Applying Lodestar and asking whether there was control as a matter of substance, subject to the issues I deal with in [731]-[734] below, I find that there was control by Caesarstone. The control was not slight but was established as a matter of substance. I reach the same conclusion in relation to the period before the Distribution Agreement by reason of the matters I have set out at [722]-[799] above, so far as they concern the period before 1 January 2003.

731    I reject the submissions on behalf of Ceramiche Caesar that there was significance, for present purposes, in the statement in the Fabrication Manual effective in May 2005 that the Caesarstone slabs were not suitable for flooring and, so the submission went, that there was therefore no control by Caesarstone because the Caesarstone slabs were not authorised for floors as at June 2005. (Although, in my view, it does not matter, I find that the statement applied both to interior and exterior flooring.) In my opinion, the submissions elide a question of non-statutory warranty with a question of control. I also find that the Caesarstone slabs were in fact promoted and sold for use as flooring and that Caesarstone authorised that use by means of its website showing the Caesarstone slabs being used for flooring, by its discussions with Mr Dixon and by what was said at the Caesarstone National Conference.

732    I also reject the submissions on behalf of Ceramiche Caesar that there was significance, for present purposes, in the fact, which I find, that the Fabrication Manual effective in May 2005 did not include installation instructions for wall applications or for flooring. The consequential submission, which I also reject, is that by virtue of cl 4(7) of the Distribution Agreement, the absence of these instructions from the Fabrication Manual meant that any use of the Caesarstone trade mark on walling was unauthorised by Caesarstone.

733    In my opinion, in relation to the Caesarstone trade marks, it is one thing to show that there were not specific instructions for wall applications or for flooring, as an example of control, but it is another thing to reason that the absence of specific installation instructions meant that there was no control at all by Caesarstone for the purposes of ss 7 and 8.

734    I do not regard the episode between 2001/2002 and 2005/2006 in relation to the Cimstone where there was an unauthorised use of the Caesarstone trade mark as showing a more widespread or general absence of control in relation to the Caesarstone slabs and the products fabricated from those slabs. As I have earlier indicated, under s 8(2) there may be uses of a trade mark which are not authorised but to that extent only is the use not under the control of the owner.

735    I find that Caesarstone exercised control, within s 8, and thus there was use of the trade marks by Caesarstone, their owner.

736    Caesarstone having succeeded under s 44(4) in showing prior use, Ceramiche Caesar relied upon its continuous use of the CÆSAR Device mark between 1988 and the priority date of the first disputed mark (June 2005) to establish the ground of opposition under s 58A.

737    The purpose of the provision is to allow consideration to be given, in the context of a party succeeding under s 44(4), to the circumstance that the owner of the earlier trade mark may have used its trade mark before applying for trade mark registration. The mischief was that, in the absence of this provision, it was not possible to oppose registration of a trade mark accepted under s 44(4) even where the registered owner’s pre-registration use predated that of the applicant’s use so accepted. See generally cl 4.9 of the Explanatory Memorandum to the Trade Marks Amendment Bill 2006. I accept the submission on behalf of Caesarstone that s 58A is limited in this way and the operation of s 44(3) is not excluded by s 58A.

738    I accept that use of the CÆSAR Device mark outside Australia is not relevant.

739    Turning to the facts, my findings in relation to the word Ceramiche not forming part of Ceramiche Caesar’s trade mark substantially establish that Ceramiche Caesar first used its similar trade mark in respect of similar goods before Caesarstone first used its trade mark within s 58A(2)(a). Put differently, I find that the use by Ceramiche Caesar of its CÆSAR Device with the word Ceramiche appearing above it counted as prior use of the CÆSAR Device mark.

740    It is necessary to consider as well whether Ceramiche Caesar “has continuously used the similar trade mark in respect of those goods … since that first use” within the meaning of s 58A(2)(b). I do not accept the submission on behalf of Caesarstone that Ceramiche Caesar’s use could not be considered to be continuous because it was de minimis. I find that the use by Ceramiche Caesar on the tiles it sold continuously in Australia in the relevant period from 1998 and in its annual general catalogue distributed in each year between 1998 and 2005 as established by the invoices, the number of catalogues distributed and by Mr Malavasi and Mr Ryan’s evidence was not de minimis and establishes continuity of use by Ceramiche Caesar.

741    I next consider whether there has been honest concurrent use of the two trade marks within the meaning of s 44(3)(a).

742    As to the honesty of any concurrent use of the trade marks, I am persuaded that Caesarstone has demonstrated honesty in the relevant sense. I do not accept the submissions on behalf of Ceramiche Caesar that Caesarstone has not established prior concurrent use in respect of walling goods or flooring goods. I repeat my conclusions above, in particular in relation to splashbacks being a form of wall cladding and to the May 2005 Fabrication Manual in relation to flooring.

743    I do not accept the submissions on behalf of Ceramiche Caesar that lack of honesty may be founded in the deletion of the word “tile” or by the addition of the words “not in the nature of tiles” in Caesarstone’s presentation of its case to the examiners or the delegates. In my opinion, although I have found it ineffectual because of the overlap of nomenclature, the proposed limitation does not suggest that Caesarstone has not been honest. I do not link any intention on the part of Caesarstone to sell goods to be called “tiles”, to the deletion of the word “tile” or the addition of the words “not in the nature of tiles” in Caesarstone’s Class 19 application. I find that Caesarstone was aware of Ceramiche Caesar’s market presence by reason of Ceramiche Caesar’s opposition to Caesarstone’s application for trade mark registration for the Caesar Mosaic mark, see [507]-[508] above, but I find that this does not establish that the concurrent use by Caesarstone has not been honest.

744    I therefore find that there has been honest concurrent use by Caesarstone of its trade marks, for the purposes of s 44(3)(a).

745    Turning to s 44(3)(b), I do not find that “because of other circumstances” it is proper to accept Caesarstone’s application. In so concluding, I take into account the matters relied on by Caesarstone in this respect, those matters being: its registration of its Caesarstone mark in Class 20 predated the priority date of the CÆSAR Device mark; there had been no evidence of actual confusion; Caesarstone had a significant reputation in its Caesarstone name in Australia; there would be considerable inconvenience to it; the trade mark was the name of the trade mark applicant, Caesarstone; and the Caesarstone Word mark had coexisted with the CÆSAR Device mark in many other countries. These matters largely repeated Caesarstone’s submissions in relation to honest concurrent use.

746    If, as I have found, there has been such honest concurrent use then the discretion is enlivened, that is, the application for the registration of Caesarstone’s trade mark may be accepted subject to conditions or limitations. With respect, I accept and apply the analysis by Kenny J in McCormick & Co Inc v McCormick at [30]-[33] as to the relevant discretionary considerations.

747    I now turn to those discretionary factors.

748    As to the extent of the use by Caesarstone, I find that it was extensive and I accept the evidence given by the stonemasons that from 2001 to June 2005: between 5% and 40% of sales of Caesarstone slabs were for splashbacks; between 2.5% and 10% of sales of Caesarstone slabs were for walls other than splashbacks; and between 1% and 2.5% of sales of Caesarstone slabs were for flooring. The dollar figures were considerable. I find there was significant use of the Caesarstone Word mark in respect of the goods and in respect of the wholesale services and maintenance services of those goods during the relevant periods.

749    As to the degree of confusion likely to ensue between the marks, I have found that Caesarstone’s trade marks are deceptively similar, this being the basis on which s 44(3) proceeds. I further find that the confusion would be likely to be substantial particularly once Caesarstone markets its goods, once fabricated and installed, as tiles.

750    As I have earlier found, no instances of confusion have been proved.

751    As to inconvenience that would ensue to the parties, I find that the inclusion of the words “none of the foregoing being in the nature of tiles” would lead, commercially, to difficulty in attempting an assessment of whether or not individual uses were in connection with a “tile” or in connection with a “floor panel” or “wall cladding” that was “not in the nature of a tile”. This is by reason of the overlap, in terms of meaning, usage and concept. I also find that the distinctiveness of Ceramiche Caesar’s CÆSAR Device mark for flooring and walling goods would be diluted in the Australian marketplace by Caesarstone using a deceptively similar trade mark for flooring and walling goods.

752    I also find that there would be considerable inconvenience to Caesarstone if no effect were to be given to the fact, which I find, that Caesarstone had significant sales and a significant presence in the Australian marketplace over many years.

753    As I have said, the discretion in s 44(3) is reached and falls for consideration, at least in relation to the applications where there has been honest concurrent use. Relevantly, the legislation appears to proceed on the basis that, subject to the question of “any conditions or limitations”, conflicting marks may coexist on the Register.

754    In relation to Class 19, the goods in relation to the first disputed mark, I indicate my view that all of the goods should be subject to the express condition or limitation that they be formed of composite stone. I have already criticised the expression “none of the foregoing being in the nature of tiles”. It would perhaps be tautological to have as a further condition or limitation that each of the goods not be “ceramic tiles”. Further, I am not presently persuaded that the specification should be drawn wider than my findings in relation to honest concurrent use which would mean that, potentially, specifications such as ceilings, non-metallic covers and profiles should be excised. As requested by the parties, I will hear them on the appropriate conditions or limitations.

755    In relation to the first disputed trade mark, I turn finally to the contention made by Ceramiche Caesar, based on s 59, that Caesarstone did not intend to use the trade mark. As noted above, despite the width of Ceramiche Caesar’s opening, in closing submissions the question was limited to whether or not there was an intent by Caesarstone to use or authorise the use of the trade mark in Australia in relation to goods that were not tiles.

756    The point, shortly put, was that it could not be said that Caesarstone held any intention to use the first disputed trade mark for floor panels that were “not in the nature of tiles” when the fabricated goods of interest were floor tiles. The short answer, in my opinion, is that the limitation in the trade mark registration “none of the foregoing being in the nature of tiles” in relation to the first disputed mark does not show that Caesarstone did not intend to use or authorise the use of the trade mark in Australia in relation to the goods specified in the application. The limitation does not subtract all content from the words which precede it. Although, as I have held, the limitation is unsatisfactory given the overlap in meaning and concept between wall panels and flooring and tiles, I do not find that Caesarstone did not intend to use, or authorise the use of, the trade mark for the goods to which it applied.

Second disputed mark, trade mark No. 1211153, the priority date by reference to which the claims were to be assessed being 26 August 2007.

757    This dispute concerned the word mark “caesarstone” in lower case, in special script and with a small circular device to the left of the word “caesarstone”.

758    I find that the device, the two swirls, is insignificant. The evidence was also to this effect. It does not suggest anything more than decoration. Any further significance did not survive the stylisation of the original Ionic columns. Otherwise I repeat my conclusions in relation to the first disputed trade mark.

759    I also repeat my conclusions as to deceptive similarity, in respect of the Caesarstone goods and in respect of the Caesarstone services: ss 44(1) and (2).

760    I turn to s 59, the contention by Ceramiche Caesar that Caesarstone did not intend to use the trade mark. Ceramiche Caesar’s submission was that the Class 19 goods of the second disputed mark included “flooring not in the nature of tiles”. As such, the Court should similarly find that Caesarstone held no intention to use its mark for all goods identified in the specification – Caesarstone’s intention, at least with respect to flooring, being to use its trade mark for flooring “in the nature of tiles”. In my opinion, the same short answer applies, that is, the limitation does not show that Caesarstone did not intend to use, or authorise the use of, the trade mark in Australia in relation to the goods specified in the application. The limitation does not subtract all content from the words which precede it.

761    Caesarstone did not argue honest concurrent use under s 44(3)(a) or prior continuous use under s 44(4) for this mark. As such, Ceramiche Caesar did not rely on s 58A. If I am wrong about Caesarstone’s argument, the same conclusions apply. I note Caesarstone’s submission was that “As to the Caesarstone Device Mark, should the Caesarstone Word Marks be registered without limitation, so to should the Caesarstone Device Mark as it currently trades under that mark. What I have said at [754] above applies mutatis mutandis, noting that “slabs formed of composite stone” is language already included, although not universally applicable, in Class 19, Class 35 and Class 37.

Rectification action in which Ceramiche Caesar applied for the cancellation of the third disputed trade mark under s 88(1)

762    Caesarstone did not accept that Ceramiche Caesar was an aggrieved person for the purposes of s 88(1) because, it submitted, objectively speaking there could be no risk of confusion in the marketplace between the putative use of the marks complained of and Ceramiche Caesar’s use of its marks: the marks were not deceptively similar.

763    Ceramiche Caesar submitted that as the owner and user of the prior conflicting CÆSAR Device and Caesar word marks, it was a person aggrieved: Health World Ltd v Shin-Sun Australia Pty Ltd at [45].

764    Under consideration by the High Court in that case was the correctness or otherwise of a test stated by Lord Pearce in Daiquiri Rum Trade Mark [1969] RPC 600 at 615:

If an erroneous entry gives to his rival a statutory trade advantage which he was not intended to have, any trader whose business is, or will probably be, affected thereby is ‘aggrieved’ and entitled to ask that the error should be corrected.

765    At [43], the majority said that for Lord Pearce “it sufficed that a wrongly registered mark gave its proprietor an advantage to which the proprietor had no entitlement at the expense of rivals. All that mattered was that they were rivals in relation to the goods to which the mark applied. It did not matter whether or not they intended to use the mark on those goods.” At [45], the majority concluded that Lord Pearce correctly stated one test, among others, for ascertaining whether a person is “aggrieved”.

766    For present purposes it is sufficient to reject Caesarstone’s submission on the terms on which it was put: since I have found that objectively speaking there is a risk of confusion in the marketplace between the putative use of the marks complained of and Ceramiche Caesar’s use of its marks and that the marks were deceptively similar, Ceramiche Caesar is entitled to bring an application under s 88 as an aggrieved person. I so hold. I would add that it would be a strange restriction to construe the expression “an aggrieved person” to permit an application only where that person was ultimately successful.

767    An application may be made only the grounds stated in s 88(2).

768    The three grounds of opposition were the same as for the first disputed trade mark, s 88(2)(a), with the priority date being 26 August 2007. The services here are certain services in Class 35 and Class 37.

769    Subject to what follows in [770]-[772] below, my earlier conclusions in relation to the grounds on which the registration of the Caesarstone Goods Word mark could have been opposed apply here to the Caesarstone Services Word mark.

770    Mr Dixon gave evidence in cross-examination that in 2005, 2006 and 2007 Caesarstone Australia or Carsilstone or Tessera providing retail quotes direct to the end consumer was “a very, very small minority of the trade in Caesarstone slabs at that time.” Similarly, Ms Lockart gave evidence that by 2004, the practice of Tessera selling slabs to the end user or selling fabricated and installed product direct to the end user had ceased and that practice was never resumed before either June 2005 or August 2007.

771    Mr Dixon also gave evidence that installing slabs was not a service that Caesarstone Australia was providing in 2007 and it was not something that Carsilstone would do. The fabricators would provide that service under their own name and branding, not the Caesarstone trade mark. That was that the position in 2005, 2006 and 2007. Mr Dixon also said that during that period there were maintenance services that Carsilstone undertook directly with the consumer, for example repairs to make right faults or damage to the benchtop. They did that wearing Caesarstone branded shirts and vehicles.

772    In these circumstances I find that as at the 26 August 2007 priority date, in terms of Class 35 there was continuous use by Caesarstone of the Caesarstone Services Word mark in relation to wholesale services but not in relation to retail services. In terms of Class 37, I find there was no continuous use by Caesarstone of the Caesarstone Services Word mark in relation to installation services, but there was such use in relation to maintenance and repair services.

773    A further ground for cancellation is under s 88(2)(c), being that: “because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion”. The time when the application for rectification was filed was 21 December 2015.

774    My earlier conclusions as to deceptive similarity apply. Contrary to the submissions on behalf of Caesarstone, I find that the Caesarstone Services Word mark is deceptively similar to the CÆSAR Device mark and that there is no basis in the evidence for a distinction as at 21 December 2015. I reach this conclusion, as before, despite there being no evidence of any actual confusion. Indeed, my conclusion is strengthened as I find that the usage of large formats, being referred to as tiles, increased between 2005 and 2015.

775    Subject to the matters I consider in the context of the s 89 issue, I would not exercise the discretion in s 88 against rectification by cancelling the registration, having found that the grounds in s 88(2)(a) and (c) are made out by Ceramiche Caesar. As to the existence of the discretion see Crazy Ron’s Communications at [129].

776    Section 89 provides, relevantly, that the Court may decide not to grant an application for rectification on the ground that the trade mark is liable to deceive or confuse at the relevant time if the registered owner of the trade mark satisfies the Court that the ground relied on by the applicant for rectification has not arisen through any act or fault of the registered owner. The Court is to take into account any matter that is prescribed, the relevant regulation being r 8.2 of the Trade Marks Regulations 1995 (Cth), and any other matter that the Court considers relevant. I have set out r 8.2 at [40] above. The relevant parts of r 8.2 were: the extent to which the public interest will be affected if registration of the trade mark is not cancelled; whether any circumstances that gave rise to the application have ceased to exist; and the extent to which the trade mark distinguished the relevant services before the circumstances giving rise to the application arose.

777    As to Caesarstone’s submissions as to the exercise of the discretion under s 89, the discretion is enlivened if the Court is satisfied, in this case, that the deceptive similarity has not arisen through any act or fault of Caesarstone. In my opinion, the emphasis here is not limited to fault but to conduct connected with the ground of deceptive similarity: compare Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27; 166 FCR 312 at [95] per Greenwood J. I therefore do not accept the undeveloped submission on behalf of Caesarstone that the grounds relied on by Ceramiche Caesar did not so arise. That is only one aspect of the discretion.

778    There are then two relevant aspects of the public interest if registration is not cancelled. The first is the issue of deceptive similarity, including no evidence of actual confusion, and the second is Caesarstone’s use of and reputation in the Caesarstone Services Word mark.

779    I accept Caesarstone’s submission that the public interest will be adversely affected if Caesarstone may no longer use the Caesarstone Services Word mark. I accept that Caesarstone is the name of the company and the primary brand of the business and that it enjoys a significant market share. I am not persuaded that there should be any disconformity so far as concerns the public interest between the outcome of the application for registration of the Caesarstone Goods Word mark and the issue of cancellation of the registration of the Caesarstone Services Word mark.

780    As to the other paragraphs of r 8.2, I find that any circumstances that gave rise to the application for rectification have not ceased to exist. I also find that the trade mark did not distinguish the relevant services before the circumstances giving rise to the application for rectification arose.

781    I also take into account the submission on behalf Caesarstone that it should be inferred that Ceramiche Caesar made a conscious decision at the time not to oppose the registration of the Caesarstone Services Word Mark. I draw that inference, in the absence of any explanation on the part of Ceramiche Caesar for its non-opposition, but in the circumstances of Ceramiche Caesar’s opposition to Caesarstone’s application for registration of the Caesarstone Goods Word mark and Caesarstone’s appeal in relation to that mark I do not regard Ceramiche Caesar’s non-opposition in respect of the Caesarstone Services Word mark to be significant.

782    In the circumstances of this case, there should be conformity of result in relation to registration for the word mark Caesarstone in respect of certain services in Classes 35 and 37. I will hear the parties accordingly.

Conclusion and orders

783    The parties should also have an opportunity to ensure that these reasons contain no information in respect of which a non-publication order has been made or should be made. Fourteen days seems appropriate for that task to be completed and for a joint document filed with the Court.

784    It was common ground that the parties should have an opportunity to frame orders to give effect to these reasons. For example, Caesarstone submitted that it appeared that at least in relation to Class 19 for countertops and vanity tops, Ceramiche Caesar was content for that registration to proceed and a specific order to that effect might be required in order for that to occur. See also [754] and [782] above.

785    The orders I make for this purpose are as follows:

1.    By 14 August 2018, after conferring, the parties are to file a joint document indicating where, if at all, it is claimed that the reasons for judgment contain information in respect of which a non-publication order has been made or should be made. Where a non-publication order has not been made, an affidavit in support of each claim is to be filed by the same date.

2.    By 28 August 2018, Ceramiche Caesar is to provide its proposed form of orders, including orders as to costs, to Caesarstone.

3.    By 4 September 2018, Caesarstone is to respond to the form of orders proposed by Ceramiche Caesar in accordance with order 2.

4.    By 10 September 2018, a document is to be filed with the Court, setting out the parties’ proposed form of orders, either in an agreed form or setting out the differences between the parties.

5.    If there is a dispute between the parties in relation to the proposed form of orders, including orders as to costs:

(i)    by 17 September 2018, Ceramiche Caesar is to file and serve short written submissions, limited to 5 pages, in support of the orders for which it contends and which are in dispute;

(ii)    by 24 September 2018, Caesarstone is to file and serve its corresponding submissions answering the submissions of Ceramiche Caesar.

Each set of submissions made in accordance with this order, order 5, should state whether or not the parties are content for the form of orders, including orders as to costs, to be determined on the papers.

I certify that the preceding seven hundred and eighty-five (785) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson.

Associate:

Dated:    31 July 2018