Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd: Trade Mark Dispute over CAESARSTONE Mark
Ceramiche Caesar SpA, an Italian company, appealed against the High Court's decision regarding Tribunal Appeal No 12 of 2015, which concerned Trade Mark Application No T0722229A-02 for “caesarstone & Device” by Caesarstone Sdot-Yam Ltd, an Israeli company. Ceramiche Caesar SpA opposed the application. The Court of Appeal allowed the appeal, preventing the registration of the CAESARSTONE mark due to its similarity to Ceramiche Caesar SpA's existing CAESAR mark, leading to a likelihood of confusion.
1. Case Overview
1.1 Court
Court of Appeal 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
Ceramiche Caesar SpA, an Italian tile manufacturer, opposed Caesarstone Sdot-Yam Ltd's registration of the CAESARSTONE mark. The court allowed the appeal, preventing registration due to trademark similarity.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| CERAMICHE CAESAR SPA | Appellant | Corporation | Appeal Allowed | Won | |
| CAESARSTONE SDOT-YAM LTD | Respondent | Corporation | Appeal Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Sundaresh Menon | Chief Justice | Yes |
| Andrew Phang Boon Leong | Judge of Appeal | No |
| Tay Yong Kwang | Judge of Appeal | No |
4. Counsels
4. Facts
- Ceramiche Caesar SpA is an Italian company manufacturing porcelain stoneware tiles.
- Caesarstone Sdot-Yam Ltd is an Israeli company manufacturing engineered quartz and stone surface products.
- Ceramiche Caesar SpA owns the registered CAESAR Mark in Singapore for goods in Class 19.
- Caesarstone Sdot-Yam Ltd applied to register the CAESARSTONE Mark in Singapore for goods in Class 19.
- Ceramiche Caesar SpA opposed Caesarstone Sdot-Yam Ltd’s application in Class 19.
- The Principal Assistant Registrar of Trade Marks allowed the opposition on two grounds.
- The High Court allowed Caesarstone Sdot-Yam Ltd’s appeal, reversing the Principal Assistant Registrar's decision.
- The Court of Appeal reversed the High Court's decision, preventing the registration of the CAESARSTONE mark.
5. Formal Citations
- Ceramiche Caesar SpA v Caesarstone Sdot-Yam Ltd, Civil Appeal No 61 of 2016, [2017] SGCA 30
6. Timeline
| Date | Event |
|---|---|
| Trade Mark Application No T0722229A-02 filed | |
| Tribunal Appeal No 12 of 2015 | |
| High Court appeal heard | |
| Judgment reserved | |
| Judgment delivered |
7. Legal Issues
- Similarity of Trade Marks
- Outcome: The Court of Appeal found that the marks were similar rather than dissimilar.
- Category: Substantive
- Sub-Issues:
- Visual similarity
- Aural similarity
- Conceptual similarity
- Related Cases:
- [2014] 1 SLR 911
- [2013] 2 SLR 941
- [2005] 4 SLR(R) 816
- Likelihood of Confusion
- Outcome: The Court of Appeal found that there exists a likelihood of confusion on the part of the public.
- Category: Substantive
- Sub-Issues:
- Mistaking one mark for another
- Confusion as to the origin of goods
- Related Cases:
- [2014] 1 SLR 911
- [2013] 1 SLR 531
- [2010] 1 SLR 512
- Well-Known Trade Mark
- Outcome: The Court of Appeal found that the Appellant’s CAESAR Mark is not well known in Singapore.
- Category: Substantive
- Related Cases:
- [2009] 3 SLR(R) 216
- [2015] 5 SLR 1349
- Threshold for Appellate Intervention
- Outcome: The Court of Appeal held that there is no threshold requirement for a “material error of fact or law” to be shown before appellate intervention is warranted in appeals from the Trade Marks Registry.
- Category: Procedural
- Related Cases:
- [2007] 2 SLR(R) 845
8. Remedies Sought
- Prevention of Trade Mark Registration
- Costs
9. Cause of Actions
- Trade Mark Infringement
- 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 |
|---|---|---|---|---|---|
| Future Enterprises Pte Ltd v McDonald’s Corp | Court of Appeal | Yes | [2007] 2 SLR(R) 845 | Singapore | Cited regarding the threshold for appellate intervention in appeals from the Trade Marks Registry. |
| Festina Lotus SA v Romanson Co Ltd | High Court | Yes | [2010] 4 SLR 552 | Singapore | Cited for following Future Enterprises on the threshold for appellate intervention. |
| Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd | High Court | Yes | [2015] 5 SLR 618 | Singapore | Cited for following Future Enterprises on the threshold for appellate intervention. |
| Reef Trade Mark | UK Trade Mark Registry | Yes | [2003] RPC 5 | United Kingdom | Considered the function of an appellate tribunal in relation to appeals from the UK Trade Mark Registry. |
| SC Prodal 94 SRL v Spirits International NV | High Court of Justice | Yes | [2003] EWHC 2756 (Ch) | England and Wales | Expressed sentiments regarding the duty of the court in overturning decisions of the Trade Mark Registry. |
| MediaCorp News Pte Ltd v Astro All Asia Networks plc | High Court | Yes | [2009] 4 SLR(R) 496 | Singapore | Observed that the court in Future Enterprises did not consider the effect of Order 87 Rule 4(2) of the Rules of Court. |
| Ozone Community Corp v Advance Magazine Publishers Inc | High Court | Yes | [2010] 2 SLR 459 | Singapore | Observed that the court in Future Enterprises did not consider the effect of Order 87 Rule 4(2) of the Rules of Court. |
| Polo/Lauren Co LP v United States Polo Association | High Court | Yes | [2016] 2 SLR 667 | Singapore | Observed that the court in Future Enterprises did not consider the effect of Order 87 Rule 4(2) of the Rules of Court. |
| Valentino Globe BV v Pacific Rim Industries Inc | High Court | Yes | [2009] 4 SLR(R) 577 | Singapore | Considered the meaning of the phrase “by way of rehearing”. |
| Tay Beng Chuan v Official Receiver and Liquidator of Kie Hock Shipping (1971) Pte Ltd | Court of Appeal | Yes | [1987] SLR(R) 123 | Singapore | Addressed the standard for overturning a judge’s exercise of discretion. |
| TDA v TCZ and others | High Court | Yes | [2016] 3 SLR 329 | Singapore | Observed on the strength of Tay Beng Chuan that the standard for overturning a judge’s exercise of discretion is a “high one”. |
| Seah Ting Soon (trading as Sing Meng Co Wooden Cases Factory) v Indonesian Tractors Co Pte Ltd | High Court | Yes | [2001] 1 SLR(R) 53 | Singapore | Stated that an appellate tribunal should not set aside a trial judge’s finding of fact, based as it is on evidence of witnesses, unless the appellant satisfies the appellate tribunal that the trial judge is plainly wrong. |
| Ho Soo Fong and another v Standard Chartered Bank | High Court | Yes | [2007] 2 SLR(R) 181 | Singapore | Cautioned that a distinction must be drawn between the perception of facts and the evaluation of facts, and observed that, especially where only written evidence is involved, an appellate court will be in as good a position as the trial court to make its own evaluation from the primary facts. |
| The “Andres Bonifacio” | High Court | Yes | [1993] 3 SLR(R) 71 | Singapore | Cautioned that a distinction must be drawn between the perception of facts and the evaluation of facts, and observed that, especially where only written evidence is involved, an appellate court will be in as good a position as the trial court to make its own evaluation from the primary facts. |
| Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal | Court of Appeal | Yes | [2014] 1 SLR 911 | Singapore | Endorsed the step-by-step approach to assess similarity of marks, similarity of goods or services, and likelihood of confusion. Also, discussed the factors to be considered in the likelihood of confusion inquiry. |
| Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal | Court of Appeal | Yes | [2013] 2 SLR 941 | Singapore | Discussed the viewpoint of the average consumer, imperfect recollection, and the assessment of visual similarity. |
| The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd | High Court | Yes | [2005] 4 SLR(R) 816 | Singapore | Stated that in cases where there is a common denominator, it is important to look at the differences between the mark and the sign in order to decide whether the challenged sign has been able to distinguish itself sufficiently and substantially. |
| Honda Motor Europe Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Case T-363/06) | European Union General Court | Yes | [2009] ETMR 34 | European Union | Stated that the public will not generally consider a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark. |
| Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA | Court of Appeal | Yes | [2013] 1 SLR 531 | Singapore | Held that the test to be adopted in determining likelihood of confusion is whether a substantial portion of the relevant public will be confused. |
| Mobil Petroleum Co, Inc v Hyundai Mobis | Court of Appeal | Yes | [2010] 1 SLR 512 | Singapore | Held that the test to be adopted in determining likelihood of confusion is whether a substantial portion of the relevant public will be confused. |
| O2 Holdings Ltd v Hutchison 3G Ltd | High Court | Yes | [2006] RPC 29 | England and Wales | Discussed the concept of brands and their protection under the law. |
| Novelty Pte Ltd v Amanresorts Ltd and another | Court of Appeal | Yes | [2009] 3 SLR(R) 216 | Singapore | Held that the factors in s 2(7) of the TMA were not exhaustive and the court is ordinarily free to disregard any or all of the factors as the case requires. |
| Formula One Licensing BV v Idea Marketing SA | High Court | Yes | [2015] 5 SLR 1349 | Singapore | Stated that registrations do not automatically equate to trade mark use and foreign decisions do not assist in determining whether the mark is well known to the relevant sector of the public in Singapore. |
| Caesarstone Sdot-Yam Ltd v Ceramiche Caesar SpA | High Court | Yes | [2016] 2 SLR 1129 | Singapore | The High Court decision that was appealed in this case. |
13. Applicable Rules
| Rule Name |
|---|
| Order 55 of the Rules of Court |
| Order 87 of the Rules of Court |
| Order 87 r 4(2) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) |
| Order 57 r 3(1) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 8(2)(b) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 8(4)(a) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 8(4)(b)(i) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 7(6) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 2(7) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 2(8) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| s 2(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark
- Trade Mark Registration
- Trade Mark Opposition
- Likelihood of Confusion
- Similarity of Marks
- Well-Known Trade Mark
- Class 19 Goods
- Appellate Intervention
- Visual Similarity
- Aural Similarity
- Conceptual Similarity
15.2 Keywords
- Trade Mark
- CAESARSTONE
- CAESAR
- Trade Mark Opposition
- Singapore
- Intellectual Property
- Likelihood of Confusion
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 95 |
| Trademark Infringement | 80 |
| Trademark Law | 75 |
| Distinctiveness | 60 |
| Trade names | 60 |
| Infringement | 50 |
| Registration criteria | 50 |
| Conflicts with earlier marks | 40 |
| Administrative Law | 20 |
| Civil Procedure | 10 |
16. Subjects
- Trade Mark Law
- Intellectual Property
- Civil Procedure