Caesarstone Ltd v Ceramiche Caesar S.p.A.

BETWEEN: CERAMICHE CAESAR S.P.A. Applicant

JUDGE: ROBERTSON J DATE OF ORDER: 14 JANUARY 2019

1. Pursuant to section 88(1)(b) of the Trade Marks Act 1995 (Cth), Australian Trade Mark Application No. 1211152 be amended as follows: Class 35: Wholesale services; wholesale stores and wholesale showrooms featuring tops and facing surfaces for furniture, reception desks and reception areas, work surfaces, surrounds for kitchens, bathrooms, vanity units and offices, panels for floors, floor coverings and wall cladding, and building panels, counter tops, vanity tops, floors, stairs and walls, all of the foregoing Class 19 goods being formed of composite stone slabs and none of the foregoing Class 19 goods being in the nature of tiles; provision of wholesale 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 stores that feature tops and facing surfaces for furniture, reception desks and reception areas, work surfaces and surrounds for kitchens, bathrooms, vanity units and offices, panels for floors, floor coverings and wall cladding, and building panels, counter tops, vanity tops, floors, stairs and walls, all of the foregoing Class 19 goods being formed of composite stone slabs and none of the foregoing Class 19 goods being in the nature of tiles. Class 37: 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, panels for floors, floor coverings and wall cladding, and building panels, counter tops, vanity tops, floors, stairs and walls, all of the foregoing Class 19 goods being formed of composite stone slabs and none of the foregoing Class 19 goods being in the nature of tiles.
2. The Application in proceeding No. NSD 1719 of 2015 be otherwise dismissed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

AND: CERAMICHE CAESAR S.P.A. Respondent

AND: CERAMICHE CAESAR S.P.A. Respondent

BETWEEN: CERAMICHE CAESAR S.P.A. Applicant

JUDGE: ROBERTSON J DATE OF ORDER: 14 JANUARY 2019

THE COURT ORDERS THAT:

1. Ceramiche Caesar pay 50% of Caesarstone's costs in the three proceedings, those costs being assessed as if the three proceedings were a single proceeding, awarded in a single lump sum in an amount to be determined by a Registrar. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Introduction 1 These reasons concern the form of orders to give effect to my reasons in Caesarstone Ltd v Ceramiche Caesar SpA (No 2) [2018] FCA 1096; 133 IPR 417 (Reasons) and should be read with that judgment. 2 On 31 July 2018, I made orders for the exchange between the parties of their proposed form of orders, including orders as to costs. Those orders were not agreed, and the extent and nature of the disagreement were identified in a joint document sent to my chambers on 10 September 2018, slightly revised on 17 September 2018. 3 Thereafter, short written submissions were filed and served by each side, on 17 September by Ceramiche Caesar and on 24 September 2018 by Caesarstone. 4 Ceramiche Caesar sought the opportunity to make short additional oral submissions on these issues, and Caesarstone joined in that exercise. 5 Oral submissions were made on 8 November 2018. 6 As before, the Registrar did not participate in the proceedings although the parties reported developments to her.

The s 65 issue 7 There was however tendered in evidence by Ceramiche Caesar letters dated 7 November 2018 from the Acting Deputy Registrar of Trade Marks to the attorneys for the parties commenting that any proposed amendments within the consent orders must be allowable under the Trade Marks Act 1995 (Cth), in particular s 65(7), as follows: 65 Amendment after particulars of application have been published - request for amendment not advertised (1) If the particulars of the application have been published under section 30, the application may be amended as provided in this section. (2) An amendment may be made to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published. (3) An amendment may be made to an application to which section 51 applies to remove one or more trade marks from the application. (4) An amendment may be made to correct an error in the classification of goods or services specified in the application. (5) An amendment may be made to add to the class or classes of goods or services specified in the application one or more other classes of goods or services if the Registrar is of the opinion that it is fair and reasonable in all the circumstances to do so. (6) An amendment may be made to change the type of registration sought in the application (for example, an application for the registration of a trade mark as a certification trade mark may be amended to an application for registration as a collective trade mark). (7) An amendment may be made to any other particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted. … 8 The acting Deputy Registrar commented that some of the currently proposed amendments to the specification of goods/services were likely to have the effect of extending the rights that the applicant would otherwise have under the registrations once granted. The letter stated that it was the Registrar's position that deleting previously restrictive expressions such as "none of the foregoing being in the nature of tiles" and "not in the nature of tiles" would have the effect of impermissibly expanding the scope of the specifications as they currently stood. 9 In this respect, Ceramiche Caesar submitted that while the Court had power under s 197 to direct that the first and second trade mark applications be amended by deleting or limiting the goods and/or services, the Court would not exercise its power to amend the trade mark applications in a way that involved expanding or enlarging the goods or services that were covered by the application. 10 Ceramiche Caesar submitted that save for the limited case of clerical errors or obvious mistakes (s 65A), the Registrar had no power to make amendments that extended the applicant's rights, once a trade mark application had been published: see s 65(7). Rather, if an applicant wished to extend its rights, the only mechanism the Act provided was the filing of a further trade mark application. Notably, Ceramiche Caesar submitted, Caesarstone amended the first and second disputed marks during examination to delete the word "Tiles" and insert the limitations "none of the foregoing being in the nature of tiles" / "not in the nature of tiles" (respectively). Ceramiche Caesar submitted there was no mechanism under the Act for reversing those limiting amendments now.

The proposed orders 11 The parties' competing proposed form of orders were intended to give effect to the Reasons, and where I refer to the agreement of the parties, that agreement should be understood in that light.

Substantive orders in the First Proceedings (NSD 166 of 2015) 12 In relation to Trade Mark Application No. 1058321, it appeared that the parties agreed that all Class 19 goods should be subject to an express limitation that they be formed of "composite stone". Further, the parties agreed that the following Class 19 goods should be deleted: "ceilings, non-metallic covers for use with floors and parts thereof; profiles and floor skirting boards" (see the Reasons at [754]). The following differences remained in relation to Class 19 goods. 13 The first difference was as to "Panels for floors, floor coverings". Ceramiche Caesar contended that they should be deleted and Caesarstone contended that they should remain. 14 The second difference was whether "wall cladding" should be limited. Ceramiche Caesar contended that "wall cladding" should be qualified by the words "being splashbacks fabricated from composite stone slabs, excluding ceramic splashbacks" but Caesarstone submitted that "wall cladding" should not be qualified save for the general qualification described in the paragraph immediately below. 15 The third difference was whether these Class 19 goods should be qualified by the words "all of the aforesaid goods being made from composite stone". Ceramiche Caesar opposed the addition of these words, but this was as a consequence of its re-drafting to exclude panels for floors and floor coverings. Caesarstone contended for the inclusion of the reference to "made from composite stone". 16 Both parties appeared to accept the deletion of the words "none of the foregoing being in the nature of tiles" in the draft orders. I do not place any separate reliance on the Registrar's position in this respect as, first, the dispute is largely a matter of statutory construction and, second, it is not clear what factors the Registrar took into account in forming her view.

Substantive orders in the Second Proceeding (NSD 1187 of 2015) 17 In relation to Trade Mark Application No. 1211153 the following differences remained in relation to Class 19 and Class 20 goods and Class 35 and Class 37 services. 18 The first difference between the parties in relation to Class 19 goods was, again, as to "Panels for floors, floor coverings". Ceramiche Caesar contended that they should be deleted and Caesarstone contended that they should remain. 19 Both parties agreed that the words "not in the nature of tiles" should be deleted but again I note the Registrar's position in this respect. 20 The second difference was as to "wall cladding", Ceramiche Caesar contended that those words should be deleted while Caesarstone contended that they should remain. 21 The third difference related to slabs. Ceramiche Caesar submitted that the form of wording "slabs formed of composite stone" should remain while Caesarstone contended that those words should be deleted and instead the words "all of the aforesaid goods being made from composite stone" should be added at the end. 22 The fourth difference related to "floors, stairs, and walls". Ceramiche Caesar seemed to contend that those words should be deleted while Caesarstone submitted they should remain. See now [59]-[61] below. 23 There was no dispute as to the Class 20 goods. 24 As to the Class 35 services, the parties agreed that the words "and retail" occurring a number of times should be deleted. 25 However, one apparent difference between the parties was that Caesarstone submitted that the words "Retail services, retail stores and retail showrooms featuring tops and facing surfaces, work surfaces, surrounds, counter tops, vanity tops" should be added at the end. 26 A second difference between the parties was as to whether "panels, floor coverings, wall cladding, flooring" should remain. Ceramiche Caesar contended that those words should be deleted, while Caesarstone submitted they should remain. 27 The third difference was that Ceramiche Caesar contended that the words "formed of composite stone" should remain while Caesarstone submitted they should be varied so as to add "all of the aforesaid class 19 goods being made from composite stone". 28 The fourth difference was as to the words "building panels,… floors,… stairs, and walls" with Ceramiche Caesar contending that those words should be deleted and Caesarstone contending that those words should remain. 29 The fifth difference was that Ceramiche Caesar contended that the word "wholesale" should be included before "commercial information relating to the aforesaid goods" while Caesarstone contended that that word should not be added. 30 The sixth difference was that Ceramiche Caesar submitted that the words "panels, floor coverings, wall cladding, flooring,… slabs… for building panels" should be deleted while Caesarstone submitted they should be retained. 31 The seventh difference was that Ceramiche Caesar submitted that the words "floors,… stairs and walls" should be deleted while Caesarstone submitted they should be retained. 32 As to the Class 37 services, the first difference between the parties was as to the word "Installation", with Ceramiche Caesar contending that the word should be deleted while Caesarstone contended that it should remain. 33 The second difference was that Ceramiche Caesar submitted that the words "panels for floors, floor coverings, wall cladding, flooring,… slabs" should be deleted while Caesarstone contended that the words should remain but be prefaced by the additional words "Maintenance and repair services of". 34 The third difference was that Ceramiche Caesar submitted that the words "tiles formed of composite stone" should be deleted. Caesarstone submitted that those words should be replaced with the words: "all of the aforesaid class 19 goods being made from composite stone".

Substantive orders in the Third Proceeding (NSD 1719 of 2015) 35 In relation to Trade Mark No. 1211152, the following differences remained in relation to Class 35 and Class 37 services. 36 As before with Class 35 services, the parties agreed that the words "and retail" should be deleted. However, as before, one difference between the parties was that Caesarstone submitted that the words "Retail services, retail stores and retail showrooms featuring tops and facing surfaces, work surfaces, surrounds, counter tops and vanity tops" should be added at the end. 37 The second difference was that Ceramiche Caesar submitted that the text should begin "Wholesale services being wholesale services, stores and showrooms" while Caesarstone submitted the text should begin: "Wholesale services; wholesale stores and wholesale showrooms…" 38 The third difference was that Ceramiche Caesar submitted that the words "panels, floor coverings" should be deleted in both places they appeared, as before, while Caesarstone contended that they should remain. 39 The fourth difference was that Ceramiche Caesar contended that the words "wall cladding" should be qualified, in both places it appeared, by the words "being splashbacks fabricated from composite stone slabs" whereas Caesarstone contended against that qualification, although note the general qualification described at [41] below. 40 The fifth difference was that Ceramiche Caesar submitted that the word "flooring" should be omitted in both places it appeared, as before, with Caesarstone contending to the contrary. 41 The sixth difference was that Ceramiche Caesar submitted that the words "formed of composite stone" should remain, qualifying the word "slabs", whereas Caesarstone submitted that those words should be deleted and the following words should be added after both appearances of the word "walls": "with all of the aforesaid class 19 goods being made from composite stone". 42 The seventh difference was that Ceramiche Caesar contended that the word "wholesale" should precede "commercial information" and Caesarstone contended it should not. 43 In relation to Class 37 services, the first difference between the parties was that Ceramiche Caesar contended that the word "Installation" should be deleted whereas Caesarstone submitted it should be retained. 44 The second difference was that Ceramiche Caesar contended that the words "wall cladding" should be qualified by the words "being splashbacks fabricated from composite stone slabs" whereas Caesarstone contended they should not. 45 The third difference was that Ceramiche Caesar submitted that the words "panels for floors, floor coverings,… flooring…" should be deleted whereas Caesarstone contended they should not. Rather, Caesarstone submitted that those words should remain and be preceded by "Maintenance and repair services of", as should the words "wall cladding". 46 The fourth difference was that Ceramiche Caesar contended that the words "all of the aforesaid class 19 goods excluding ceramic goods" should be added at the end, whereas Caesarstone contended they should not. 47 The fifth difference was that Ceramiche Caesar sought to retain the words: "slabs… formed of composite stone", whereas Caesarstone submitted that the words to be added after "slabs" at the end should read: "with all of the aforesaid class 19 goods being made from composite stone".

Cost orders in the Three Proceedings 48 Caesarstone submitted that Ceramiche Caesar pay 80% of Caesarstone's costs, as agreed or taxed. 49 Ceramiche Caesar submitted that Caesarstone pay 75% of Ceramiche Caesar's costs, as agreed or taxed. 50 Both sides sought a lump sum costs order in an amount to be determined by the Court (including by a Registrar) on a date to be fixed. 51 Caesarstone also submitted that Ceramiche Caesar pay Caesarstone's costs of the opposition to Australian Trade Mark Application No. 1211153 the subject of the decision of the delegate and Caesarstone's costs of the opposition to Australian Trade Mark Application No. 1058321 the subject of the decision of the delegate.

The submissions of the parties 52 Ceramiche Caesar submitted that the main issues in dispute were: (1) what amendments were appropriate to the goods specified in Class 19; (2) should the second disputed mark proceed to registration for any flooring or walling goods; and (3) costs.

NSD 166 of 2015 concerning the first mark 53 In the appeal concerning the first mark, Ceramiche Caesar submitted its proposed orders 1-4 provided for the first mark to proceed to registration in Class 19 for: "Wall cladding being splashbacks fabricated from composite stone slabs, excluding ceramic splashbacks". It submitted this narrowed specification was appropriate to give effect to the Reasons because (1) the Court found that there had been honest concurrent use of the first mark for splashbacks, and splashbacks were a form of wall cladding (at [672], [744]); (2) the amendments were allowable under s 65(7) because they limited (rather than expanded) the scope of the applicant's rights; (3) the parties agreed the specification should be limited to goods formed of composite stone, to give effect to the Reasons ([754]); (4) the parties agreed that the words "ceilings, non-metallic covers for use with floor and parts thereof; profiles and floor skirting boards" should be deleted, to give effect to the Reasons ([754]); and (5) it was appropriate that ceramic goods were expressly excluded (the ceramics exclusion would avoid any ambiguity over whether ceramic goods could be characterised as formed from "composite stone" - cf the Reasons at [6]). 54 Ceramiche Caesar submitted that Caesarstone proposed a broader specification that retained the words "Panels for floors", "floor coverings" and (all forms of) "wall cladding", but deleted the limitation "none of the foregoing being in the nature of tiles". These amendments were not allowable under s 65 of the Act, and they should not be adopted, Ceramiche Caesar submitted. The barrier that s 65 presented to Caesarstone's proposed amendments could not be avoided by keeping the limiting words in the specification. As the Court held, the limiting words were unsatisfactory (at [756], [675]) and they rendered the specification, at the least, uncertain ([675]). It would not be appropriate to permit registration with the limiting words, in these circumstances, Ceramiche Caesar submitted. Further, Caesarstone's proposed amendments would result in the specification being drawn wider than the Court's findings in respect of honest concurrent use. This was inappropriate: Reasons at [754]. More particularly, apart from splashbacks, the Court's finding was that the relevant "goods" that had been honestly and concurrently used for flooring and walling were the "Caesarstone slabs" (at [696]). As the Court found elsewhere, a "slab" was not a "floor panel" or "wall panel" (at [674]). To amend the Class 19 specification for the first mark to include slabs would involve an expansion of the goods (and therefore, an extension of the applicant's rights). Accordingly, Ceramiche Caesar submitted that the limitations ought to be excised along with the foregoing goods, being "floor panels", "floor coverings" and "wall cladding" (apart from splashbacks). 55 Caesarstone submitted that if the Court were to make the orders proposed by Ceramiche Caesar, it would have the effect of excising from Class 19 the concurrent usage for which the Caesarstone mark had been allowed. There was no finding in the judgment to the effect contended by Ceramiche Caesar, namely that Class 19 be limited to wall cladding alone. Conversely, (at Reasons [754]) the Court said that "all of the goods" should be subject to the limitation that they be formed of composite stone. The Reasons went on to identify specifications such as "ceilings, non-metallic covers and profiles" that may be excluded because there was no evidence of use by Caesarstone in relation to such applications. However, it was plain that Caesarstone successfully established honest concurrent use in respect of walling goods and flooring goods, see the Reasons at [672], [696], [731] and [742], and accordingly, Class 19 should be amended to reflect that finding. 56 Caesarstone submitted that the act of clarifying the scope of the registration (rather than leaving a meaningless limitation) could not be interpreted as broadening the monopoly rights of the trade mark owner. The mere fact that Ceramiche Caesar accepted that it was appropriate to excise those "uncertain" words (rather than suggesting that the whole of Class 19 should fall away, for example) supported such a proposition. Accordingly, Caesarstone submitted that the appropriate amendments to Class 19 in light of the findings of the Court were to remove the words, "none of the foregoing being in the nature of tiles" and to include a commercially sensible limitation that the goods be made from composite stone.

NSD 1187 of 2015 concerning the second mark 57 Ceramiche Caesar submitted that none of the flooring or walling goods specified in the Class 19 goods should proceed to registration because in the case of this second mark, the Court found, see the Reasons at [757]-[759], that ss 44(1) and (2) operated as a barrier to registration and Caesarstone did not seek to support registration of the second mark on the ground of honest concurrent use or prior continuous use: the Reasons at [761]. 58 Caesarstone repeated its submissions in relation to Class 19 for the first mark. Caesarstone submitted that there should be conformity between the Class 19 goods in respect of the first mark and the second mark and the Reasons made plain that the finding at [754] applied to both of those marks: the Reasons at [761]. Caesarstone submitted that the Reasons at [761] showed that the Court implicitly found for Caesarstone under s 44(3)(b). 59 Class 19 for this second mark extended to slabs for building panels, counter tops, vanity tops, floors, stairs and walls. Ceramiche Caesar submitted in the alternative that with one qualification, the scope of the Class 19 goods in the second mark should be the same as the first mark. The qualification was that the Class 19 specification for the second mark included the following additional flooring and walling goods not present in the first mark: "slabs for … floors, stairs and walls". Therefore, Ceramiche Caesar submitted, the second mark would proceed to registration for slabs of this kind, in addition to splashbacks (subject to the "composite stone" limitation). 60 Ceramiche Caesar submitted an Annexure A which included an alternative form of Class 19 specification that would enable this to occur. It read: Class 19: Wall cladding being splashbacks fabricated from composite stone slabs, excluding ceramic splashbacks; slabs formed of composite stone for building panels, counter tops, vanity tops, floors, stairs and walls. 61 In other words, on Ceramiche Caesar's alternative form there was no separate controversy as to Class 19 for this second mark extending to slabs for building panels, counter tops, vanity tops, floors, stairs and walls. 62 There was no controversy as to Class 20 goods. It was not proposed by either party to amend any part of this registration and it was not an issue for consideration at trial: see Reasons at [458]. 63 In relation to Class 35 services and Class 37 services, Ceramiche Caesar submitted the appropriate amendments were the same as the amendments applicable in the rectification proceeding, concerning the third disputed mark. 64 Ceramiche Caesar submitted that the Court found that 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: the Reasons at [782]. 65 Ceramiche Caesar submitted the Court found continuous use by Caesarstone of the third mark in Class 35 in relation to wholesale services, but not in relation to retail services; and continuous use by Caesarstone of the third mark in relation to maintenance and repair services, but not installation services: the Reasons at [772]. 66 It followed, Ceramiche Caesar submitted, that retail services (Class 35) and installation services (Class 37) should be excised altogether from the Class 35 and Class 37 services. In addition, the flooring and walling goods that were the subject of the services should be no wider than the flooring and walling goods that were the subject of the honest concurrent use findings concerning the first mark. 67 Caesarstone also submitted that the Reasons provided there should be conformity of result in relation to Classes 35 and 37. Caesarstone submitted that in Ceramiche Caesar's opening outline, Ceramiche Caesar did not take issue with the words: "Wholesale and retail services… retail stores… and retail showrooms" or "Installation, maintenance and repair services…" and Ceramiche Caesar did not seek rectification of the third disputed mark for all the claims in the registration. Caesarstone submitted the orders proposed by it reflected the decision of the Court by deleting retail services; including the limitation that the goods be formed of composite stone; and limiting the "retail services" component to Class 20 goods.

Costs 68 The parties agreed that an award of costs in a lump sum, in an amount to be later assessed by a Registrar, was appropriate. Both sides would be seeking to apply the Costs Practice Note (GPN-COSTS) in that respect. The dispute concerned which party pay the other party's costs, and in what proportion. Both sides contended for a percentage based approach across the three related proceedings, rather than an issues based approach. 69 Ceramiche Caesar submitted that it was appropriate that Caesarstone pay a substantial proportion of Ceramiche Caesar's costs in the present case, for essentially three reasons. 70 First, Ceramiche Caesar was the party which enjoyed ultimate success at the trial. The ultimate issue at trial, Ceramiche Caesar submitted, was whether each mark was registrable for the particular flooring and walling goods (and related services) that Caesarstone had specified in its trade mark applications and registration. The goods that Caesarstone specified were not limited to goods formed of composite stone. They also included the unsatisfactory "not in the nature of tiles" limitation: the Reasons at [675]. Ceramiche Caesar succeeded in establishing that none of the disputed marks were registrable for the flooring and walling goods (and related services) as stated in each trade mark specification. Rather, to the extent that any mark was registrable, this was only so if amendments were made to delete and limit the goods and/or services to address the conflict that arose from the deceptive similarity between the disputed marks and Ceramiche Caesar's prior registered Caesar Device trade mark. In other words, Ceramiche Caesar submitted, Caesarstone had been found to prosecute trade marks that were overly broad. Having incurred significant costs in demonstrating this, Ceramiche Caesar was entitled to be awarded at least a proportion of its costs. 71 Second, Ceramiche Caesar submitted that it was the party which succeeded on the majority of the issues at trial, those issues being: deceptive similarity; prior continuous use of the first and third marks; the "other circumstances" contentions in relation to the first and third marks; establishing grounds for the rectification of the third mark; the s 44(3)(a) issue; and in relation to the narrow specification of goods/services in respect of the second mark. 72 Third, Ceramiche Caesar submitted that the limited grounds upon which Caesarstone was successful (honest concurrent use under s 44(3)(a) for a narrowed class of goods and/or services, and no intention to use under s 59) did not justify a substantial reduction in the proportion of costs payable to Ceramiche Caesar. Caesarstone was only partly successful in establishing honest concurrent use, and the s 59 ground occupied minimal hearing time. 73 In respect of Orders 14-15 sought by Caesarstone, which dealt with the payment of costs before the delegate, Ceramiche Caesar submitted that Caesarstone had no entitlement to its costs of the proceedings before the Registrar, where different evidence and legal arguments were run. The costs of the proceeding before the Registrar were to be dealt with under the cost orders already made in the Trade Marks Office, and would be fixed under Reg 21.13(1) and Sch 8 to the Trade Marks Regulations 1995 (Cth). In oral argument it was made clear by senior counsel for Caesarstone that it was not seeking costs of the proceedings before the delegate on any other basis. 74 In oral submissions, Ceramiche Caesar submitted an alternative position would be each party bear its own costs. It also submitted that the two grounds which it had abandoned were very much at the tail end of its case and were essentially the same point. It would be appropriate to deal with the issue by making an order to pay costs thrown away by reason of those grounds not being pressed. 75 Caesarstone disagreed that Ceramiche Caesar enjoyed ultimate success at the trial for the following reasons: (a) Caesarstone agreed with the submissions of Ceramiche Caesar that the ultimate issue at trial was whether each mark was registrable for the particular flooring and walling goods that Caesarstone had specified in its trade mark applications and registration. On any reading of the Reasons, as a result of a finding of honest and concurrent use of the relevant trade marks, Caesarstone was entitled to registration in Class 19 in respect of flooring and walling goods. The limitation that the goods be formed of composite stone served to more accurately describe the relevant goods sold by Caesarstone and could not be deemed a "loss" such that Ceramiche Caesar would be entitled to its costs; (b) the decisions of the Registrar in each of the trade mark oppositions had not been followed and therefore ought to be set aside. It followed that Caesarstone was justified in bringing the appeals from those decisions; and (c) the rectification application by Ceramiche Caesar was ultimately unsuccessful and the Court found that the public interest would be adversely affected if Caesarstone was no longer entitled to use the third disputed mark. 76 Further, Caesarstone submitted, during the course of the proceeding Ceramiche Caesar made a concession that it did not press its grounds of opposition pursuant to ss 42(b) and 60 with respect to each of the three marks. Caesarstone incurred significant costs in preparing evidence, reviewing Ceramiche Caesar's evidence and preparing for the hearing of the proceedings in order to deal with these grounds of opposition. Caesarstone submitted that this was a matter that should be considered in apportioning costs. 77 In oral submissions, Caesarstone submitted that it had succeeded on the fundamental issue in dispute which was honest concurrent use of its trade marks in relation to wall cladding and flooring. Further, the delegate found that Caesarstone's applications for registration should not proceed at all whereas the Court would make orders which would amount to those applications proceeding substantively for everything which Caesarstone could possibly want. Caesarstone appealed and succeeded in overturning the delegate's decisions that there should be no trade marks going forward. That was a legal outcome of significance. As to the rectification application, Ceramiche Caesar sought complete removal or cancellation of the trade mark whereas now the appropriate order was for amendment of the registration. Ceramiche Caesar did not succeed in the relief sought. The real matter in dispute, Caesarstone submitted, was whether or not it had prior continuous use and, if not that, did it have honest concurrent use, each giving rise to the same factual scenario and questions. Caesarstone submitted the Court had found in its favour in both of those respects.

NSD 166 of 2015 concerning the first mark 78 Tiles can be made of composite stone. Goods "in the nature of tiles" were expressly excluded in the original application and, consistently with s 65(7), may not now be included. Although the drafter may not have understood the overlap between goods made of composite stone and tiles, such that the exclusion creates uncertainty, I do not see that the express exclusion of goods "in the nature of tiles" may now be ignored. I refer in this respect to the Reasons at [756] where I held that the limitation did not subtract all content from the words which preceded it. If goods "in the nature of tiles" were not excluded then the rights that the registration would give would be extended to cover tiles. 79 I refer to the judgment of Yates J in Frucor Beverages Ltd v Coca-Cola Company [2018] FCA 993; 358 ALR 336, particularly at [204]. I do not accept the contrary submission on behalf of Caesarstone by reference to Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8; 202 FCR 490 that the power in s 197 should only be circumscribed by the objects or purposes of the Act with the result, as I understood it, that the Court could, as a matter of discretion, allow an amendment to an application even where the amendment would have the effect of extending the rights the applicant would have under the registration if it were granted. 80 Assuming such a discretion exists, I would not exercise it in the present case to remove a fundamental exclusion for goods "in the nature of tiles". Further, I do not accept Caesarstone's reliance on s 88 in this context both because there is no application for rectification and also because it is not apparent that any of the grounds in s 88(2) are engaged. Insofar as s 88 is not relied on as a source of power in the present circumstances but by analogy so as to inform s 197, I am not persuaded that the specific power in s 88 assists in the construction of s 197 which is directed to the hearing of appeals against a decision or direction of the Registrar. For example, s 88 is enlivened by an application by either the Registrar or by an aggrieved person for the rectification of the Register. 81 Nonetheless, I do not see the basis in Ceramiche Caesar's proposed order for the exclusion of the exception in terms but attempting to deal with it by reference to slabs, even though slabs are not in the nature of tiles. I do not accept the submission on behalf of Ceramiche Caesar that because the limiting words are unsatisfactory, as I have found, it would not be appropriate to permit registration with the limiting words. 82 Ceramiche Caesar's submission that panels for floors and floor coverings should be excluded proceeds on the basis that, as explained in the Reasons, a slab is not a floor panel or wall panel and it is not possible to amend the Class 19 specification to include slabs because this would involve an expansion of the goods. I do not accept this submission, which seems to me to promote drafting over substance. 83 I also do not accept Ceramiche Caesar's submission that wall cladding should be limited to splashbacks. I refer to the Reasons at [672], [696] and [742]. 84 The appropriate orders in NSD 166 of 2015 are as follows: 1. Pursuant to s 197 of the Trade Marks Act 1995 (Cth), Australian Trade Mark Application No. 1058321 be amended so as to read: Class 19: Panels for: (i) floors; (ii) floor coverings; and (iii) wall cladding; formed of composite stone slabs; none of the foregoing being in the nature of tiles. 2. Australian Trade Mark Application No. 1058321 proceed to registration for the goods in order 1. 3. The decision of the Registrar of Trade Marks by her delegate to refuse to register the trade mark, given on 4 February 2015 in respect of Australian Trade Mark Application No. 1058321, be set aside. 4. The decision of the Registrar awarding costs against Caesarstone be set aside. 5. The appeal be otherwise dismissed. The reasons for making order 4 appear at [90] below.

NSD 1187 of 2015 concerning the second mark 85 In relation first to Class 19, the Reasons at [761], read with the reasons at [754], mean that the same limitation should apply to this second mark, under which Caesarstone was trading, as to the first mark and that by implication the Court was satisfied for the purposes of s 44(3)(b) that because of other circumstances it was proper to accept the application for the registration. 86 In relation to Classes 35 and 37, it follows from the Reasons at [772] that retail services and installation services are to be excluded. Otherwise there should be conformity with Classes 19 and 20. 87 The appropriate orders in NSD 1187 of 2015 are as follows: 1. Pursuant to s 197 of the Trade Marks Act 1995 (Cth), Australian Trade Mark Application No. 1211153 be amended so as to read: Class 19: Panels for floors, floor coverings and wall cladding; building panels, counter tops, vanity tops, floors, stairs, and walls; all of the foregoing being formed of composite stone slabs; none of the foregoing being in the nature of tiles. 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 services; wholesale stores and wholesale showrooms featuring tops and facing surfaces for furniture, reception desks and reception areas, work surfaces, surrounds for kitchens, bathrooms, vanity units and offices, panels for floors, floor coverings and wall cladding, and building panels, counter tops, vanity tops, floors, stairs and walls, all of the foregoing Class 19 goods being formed of composite stone slabs and none of the foregoing Class 19 goods being in the nature of tiles; provision of wholesale 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 stores that feature tops and facing surfaces for furniture, reception desks and reception areas, work surfaces and surrounds for kitchens, bathrooms, vanity units and offices, panels for floors, floor coverings and wall cladding, and building panels, counter tops, vanity tops, floors, stairs and walls, all of the foregoing Class 19 goods being formed of composite stone slabs and none of the foregoing Class 19 goods being in the nature of tiles. Class 37: 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, panels for floors, floor coverings and wall cladding, and building panels, counter tops, vanity tops, floors, stairs and walls, all of the foregoing Class 19 goods being formed of composite stone slabs and none of the foregoing Class 19 goods being in the nature of tiles. 2. Australian Trade Mark Application No. 1211153 proceed to registration for the goods and services in order 1. 3. The decision of the Registrar of Trade Marks by her delegate to refuse to register the trade mark, given on 9 September 2015 in respect of Australian Trade Mark Application No. 1211153 be set aside. 4. The decision of the Registrar awarding costs against Caesarstone be set aside. 5. The appeal be otherwise dismissed. The reasons for making order 4 appear at [90] below.

NSD 1719 of 2015 concerning the third mark 88 No separate issue arises here. The wall cladding/splashback issue has been considered earlier at [83] above. 89 The appropriate orders in NSD 1719 of 2015 are as follows: 1. Pursuant to section 88(1)(b) of the Trade Marks Act 1995 (Cth), Australian Trade Mark Application No. 1211152 be amended as follows: Class 35: Wholesale services; wholesale stores and wholesale showrooms featuring tops and facing surfaces for furniture, reception desks and reception areas, work surfaces, surrounds for kitchens, bathrooms, vanity units and offices, panels for floors, floor coverings and wall cladding, and building panels, counter tops, vanity tops, floors, stairs and walls, all of the foregoing Class 19 goods being formed of composite stone slabs and none of the foregoing Class 19 goods being in the nature of tiles; provision of wholesale 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 stores that feature tops and facing surfaces for furniture, reception desks and reception areas, work surfaces and surrounds for kitchens, bathrooms, vanity units and offices, panels for floors, floor coverings and wall cladding, and building panels, counter tops, vanity tops, floors, stairs and walls, all of the foregoing Class 19 goods being formed of composite stone slabs and none of the foregoing Class 19 goods being in the nature of tiles. Class 37: 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, panels for floors, floor coverings and wall cladding, and building panels, counter tops, vanity tops, floors, stairs and walls, all of the foregoing Class 19 goods being formed of composite stone slabs and none of the foregoing Class 19 goods being in the nature of tiles. 2. The Application in proceeding No. NSD 1719 of 2015 be otherwise dismissed.

Costs 90 In relation to costs before the Registrar in the two appeals, the appropriate course is to set aside the costs orders, order that the applicant Caesarstone pay costs according to the scale under the Trade Marks Regulations, but not to substitute an equivalent order against Ceramiche Caesar. This is for the reason that to the extent that Caesarstone succeeded on appeal as to honest concurrent use, it did so by calling evidence which it had not called before the Registrar. In each instance, it failed on the issue of the trade mark being deceptively similar to Ceramiche Caesar's. 91 In relation to the costs of the three proceedings before the Court, the parties did not suggest a costs order for each issue although each side contends that it succeeded on the important or the most important issues. 92 In my opinion, looking at the matter globally, Caesarstone has had the greater success such that it is appropriate to start from the position that it should not be required to pay Ceramiche Caesar's costs or a proportion of them. For the same reason, I do not find it is appropriate to make no order for costs such that each side bears its own costs. 93 Nevertheless, Caesarstone has not had unqualified success. Although it is not appropriate to focus exclusively on what took time in the course of the trial, deceptive similarity was a substantial issue on the evidence. 94 The appropriate order is that Ceramiche Caesar pay 50% of Caesarstone's costs, those costs being awarded in a lump sum in an amount to be determined by a Registrar. I certify that the preceding ninety-four (94) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson.