Caesarstone Sdot-Yam Ltd v Ceramiche Caesar SpA: Trade Mark Dispute over CAESARSTONE Mark
Caesarstone Sdot-Yam Ltd appealed against the Principal Assistant Registrar's decision to allow Ceramiche Caesar SpA's opposition to the registration of the CAESARSTONE trade mark in Class 19. The High Court of Singapore, presided over by Justice George Wei, allowed the appeal on 29 March 2016, finding that the marks were dissimilar and there was no likelihood of confusion. The court ordered Ceramiche Caesar SpA to pay costs to Caesarstone Sdot-Yam Ltd.
1. Case Overview
1.1 Court
High Court of the Republic of Singapore1.2 Outcome
Appeal Allowed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Appeal regarding trade mark opposition. The court allowed Caesarstone Sdot-Yam Ltd's appeal, permitting registration of the CAESARSTONE mark.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| CERAMICHE CAESAR SPA | Respondent | Corporation | Appeal Dismissed | Lost | |
| CAESARSTONE SDOT-YAM LTD | Appellant | Corporation | Appeal Allowed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| George Wei | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Melvin Pang | Amica Law LLC |
| Chow Jian Hong | Mirandah Law LLP |
| Prithipal Singh | Mirandah Law LLP |
4. Facts
- Caesarstone Sdot-Yam Ltd is an Israeli company manufacturing engineered quartz and stone surfaces.
- Ceramiche Caesar SpA is an Italian manufacturer of porcelain stoneware tiles.
- Caesarstone applied to register the CAESARSTONE Mark in Singapore for goods in Classes 19, 20, 35, and 37.
- Ceramiche Caesar SpA opposed the application in Class 19, citing similarity to its registered CAESAR Mark.
- The Principal Assistant Registrar allowed the opposition under s 8(2)(b) and s 8(4)(a) read with s 8(4)(b)(i) of the Trade Marks Act.
- The CAESARSTONE Mark consists of a device and the word "caesarstone."
- The CAESAR Mark consists of the word "CAESAR" between two dots, with a ligature between the letters "A" and "E".
5. Formal Citations
- Caesarstone Sdot-Yam Ltd v Ceramiche Caesar SpA, Tribunal Appeal No 12 of 2015, [2016] SGHC 45
6. Timeline
| Date | Event |
|---|---|
| Caesarstone Sdot-Yam Ltd founded | |
| Caesarstone Sdot-Yam Ltd applied to register the CAESARSTONE Mark in Singapore | |
| Hearing date | |
| Judgment issued |
7. Legal Issues
- Trade Mark Infringement
- Outcome: The court found that the marks were dissimilar and there was no likelihood of confusion.
- Category: Substantive
- Sub-Issues:
- Similarity of marks
- Likelihood of confusion
- Well-known trade mark
- Related Cases:
- [2015] 5 SLR 618
- Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911
- Distinctiveness of Trade Mark
- Outcome: The court found that the CAESAR trade mark enjoyed a “medium” level of distinctiveness.
- Category: Substantive
- Sub-Issues:
- Inherent distinctiveness
- Acquired distinctiveness
- Related Cases:
- Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941
8. Remedies Sought
- Registration of Trade Mark
9. Cause of Actions
- Trade Mark Opposition
10. Practice Areas
- Trade Mark Opposition
- Intellectual Property Litigation
11. Industries
- Manufacturing
- Construction
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd | High Court | Yes | [2015] 5 SLR 618 | Singapore | Cited regarding the threshold for appellate intervention in an appeal against the Principal Assistant Registrar’s decision. |
| Polo/Lauren Co LP v United States Polo Association | High Court | Yes | [2016] SGHC 32 | Singapore | Cited regarding the threshold for appellate intervention in an appeal against the Principal Assistant Registrar’s decision. |
| Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc | Court of Appeal | Yes | Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 | Singapore | Cited for the broad principles governing the analysis of mark similarity. |
| W & G Du Cros Ld’s Application, Re | N/A | Yes | W & G Du Cros Ld’s Application, Re (1913) 30 RPC 660 | N/A | Cited regarding the right to register a trade mark. |
| Colorcoat Trade Mark | N/A | Yes | [1990] RPC 511 | N/A | Cited regarding the power of a trade mark monopoly. |
| Zheng Yu Shan v Lian Beng Construction (1988) Pte Ltd | Court of Appeal | Yes | [2009] 2 SLR(R) 587 | Singapore | Cited regarding judicial notice of facts. |
| Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal | Court of Appeal | Yes | [2013] 2 SLR 941 | Singapore | Cited regarding the distinctiveness of a term and the assessment of visual similarity of composite marks. |
| The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | High Court | Yes | [2005] 4 SLR(R) 816 | Singapore | Cited regarding the starting point of the analysis is whether the common element of the competing marks is so dominant as to render the differing elements ineffective to obscure the similarity between them. |
| Ferrero SpA v Dochirnie Pidpryiemstvo "Kondyterska Korporatsiia "Roshen" | N/A | Yes | [2015] SGIPOS 14 | N/A | Cited regarding composite marks. |
| William Bailey’s Application | N/A | Yes | [1935] 52 RPC 136 | N/A | Cited regarding the average consumer perceives the mark as a whole and does not necessarily analyse its various details. |
| Eurohypo AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-304/06 P) | N/A | Yes | [2008] ECR I-03297 | N/A | Cited regarding a trade mark comprising words, the possible distinctiveness of each of its terms or elements, taken separately, may be assessed, in part, but must, in any event, depend on an appraisal of the whole which they comprise. |
| Ozone Community Corp v Advance Magazine Publishers Inc | High Court | Yes | [2010] 2 SLR 459 | Singapore | Cited regarding to avoid a finding of similarity, the differences between the marks must be sufficient so that the later mark does not capture the distinctiveness of the registered mark. |
| Accutron | N/A | Yes | [1966] RPC 152 | N/A | Cited regarding it is not right to pull the words to pieces. |
| Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd | High Court | Yes | [2015] 2 SLR 825 | Singapore | Cited regarding the average consumer is unlikely to make constant reference to the “seven syllable ‘HAN Cuisine of Naniwa’ phrase every time he refers to it. |
| Campomar SL v Nike International Ltd | Court of Appeal | Yes | [2011] 2 SLR 846 | Singapore | Cited regarding the appropriate moment to determine the existence of an “earlier trade mark” for the purpose of s 8(1) read with s 2(1) of the TMA is the date when the mark was to be entered on the register, and not the date of the registration application. |
| Tiffany & Co v Fabriques de Tabac Reunies SA | Court of Appeal | Yes | [1999] 2 SLR(R) 541 | Singapore | Cited regarding the appropriate time to consider if the public is likely to be confused by an applicant’s mark is the time at which the opposition proceedings were heard. |
| Sarika Connoisseur Café Pte Ltd v Ferrero SpA | High Court | Yes | [2013] 1 SLR 531 | Singapore | Cited regarding confusion includes the drawing of an economic link between the marks, a mere association between the marks is not in itself a sufficient basis for concluding that there is a likelihood of confusion. |
| McDonald’s Corp v Future Enterprises Pte Ltd | High Court | Yes | [2005] 1 SLR (R) 177 | Singapore | Cited regarding it does not always follow that the stronger the reputation enjoyed by the opponent’s mark, the greater the risk of confusion. |
| Novelty Pte Ltd v Amanresorts Ltd and another | High Court | Yes | [2009] 3 SLR(R) 216 | Singapore | Cited regarding the court is entitled to consider whether the average consumer with characteristics reflective of the relevant section of the public is likely to be confused. |
| Reed Executive Plc v Reed Business Information Ltd | N/A | Yes | [2003] RPC 12 | N/A | Cited regarding a 50 pence purchase in the station kiosk will involve different considerations from a once-in-a-lifetime expenditure of 50,000 pounds. |
| Devinlec Developpement Innovation Leclerc SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-147/03) | N/A | Yes | [2006] ECR II-11 | N/A | Cited regarding in the case of goods such as those covered by the marks in question here, which are not purchased regularly and are generally bought through a salesperson, the average consumer’s level of attention, as the Board of Appeal rightly found, must be taken to be higher than usual and therefore fairly high. |
| Ta'Am Teva (1988) Tivoli Ltd v Ambrosia Supaherb Ltd | N/A | Yes | [2004] ETMR 46 | N/A | Cited regarding where the cost of product is high or where the services are of considerable importance, it has been held that consumers will tend to make a relatively thorough inquiry before going through with the transaction. |
| Nation Fittings (M) Sdn Bhd v Oystertec plc and another suit | High Court | Yes | [2006] 1 SLR(R) 712 | Singapore | Cited regarding such rights should not be permitted to either blatantly or subtly develop into disguised monopolies which stifle or stymie the general public interest and welfare. |
| SA CNL-Sucal NV v Hag GF AG | N/A | Yes | [1990] 3 CMLR 571 | N/A | Cited regarding trade mark protection finds its justification in “a harmonious dovetailing between public and private interests |
13. Applicable Rules
| Rule Name |
|---|
| Rules of Court (Cap 322, R 5, 2014 Rev Ed) O 87 r 4(2) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Chapter 332) | Singapore |
| Trade Marks Act (Chapter 332, 2005 Rev Ed) s 8(2)(b) | Singapore |
| Trade Marks Act (Chapter 332, 2005 Rev Ed) s 8(4)(a) | Singapore |
| Trade Marks Act (Chapter 332, 2005 Rev Ed) s 8(4)(b)(i) | Singapore |
| Trade Marks Act (Chapter 332, 2005 Rev Ed) s 7(6) | Singapore |
| Trade Marks Act (Chapter 332, 2005 Rev Ed) s 2 | Singapore |
| Trade Marks Act (Chapter 332, 2005 Rev Ed) s 7(1)(b) | Singapore |
| Trade Marks Act (Chapter 332, 2005 Rev Ed) s 7(2) | Singapore |
| Evidence Act (Cap 97, 1997 Rev Ed) s 58 | Singapore |
| Evidence Act (Cap 97, 1997 Rev Ed) s 59 | Singapore |
| Trade Marks Act (Cap 332, 1999 Rev Ed) s 15 | Singapore |
| Trade Marks Act (Chapter 332, 2005 Rev Ed) s 26 | Singapore |
| Trade Marks Act (Chapter 332, 2005 Rev Ed) s 28(3) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark
- Caesarstone
- Caesar
- Likelihood of confusion
- Distinctiveness
- Well-known trade mark
- Composite mark
- Visual similarity
- Aural similarity
- Conceptual similarity
15.2 Keywords
- Trade mark
- Caesarstone
- Caesar
- Singapore
- Intellectual property
- Trade mark opposition
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 95 |
| Trademark Infringement | 90 |
| Well Known Trade Marks | 70 |
| Groundless threats of infringement proceedings | 40 |
| Trade names | 30 |
16. Subjects
- Trade Marks
- Intellectual Property