Honest concurrent use: a rock-solid reminder of the importance of specific evidence

By Sarah Muller
Intellectual Property Patents & Trade Marks

In brief 3 min read

A recent decision of the Full Court of the Federal Court has highlighted that evidence of honest concurrent use of a trade mark must relate to the specific goods or services covered by an application. Evidence of lengthy use of the mark for goods that were excluded from the application was not enough to satisfy section 44(3)(a) of the Trade Marks Act 1995 (Cth).

Key takeaways

  • Evidence showing honest concurrent use must relate to the specific goods or services covered by the application.
  • It is not enough to show evidence of use of the mark in relation to other goods or services, even if they are similar to the goods or services covered by the application.
  • Quality control must be real to establish authorised use.

Background - Ceramiche Caesar S.p.A v Caesarstone Ltd [2020] FCAFC 124

The opponent, Ceramiche Caesar SPA (Ceramiche Caesar), owned a stylised device mark for the word CAESAR under which it sold tile products to Australian customers. The applicant Caesarstone Ltd (Caesarstone) produced slabs of stone marked with the word CAESARSTONE, which it sold to independent distributors. The distributors then sold it to stonemasons who transformed the slabs into finished products.

Caesarstone applied to register both a word mark and stylised word mark for CAESARSTONE in class 19. At the examination stage, to avoid a finding of deceptive similarity, Caesarstone restricted its goods to exclude tiles (Tile Disclaimer).

Ceramiche Caesar opposed the registration of these applications and Caesarstone sought to defend the oppositions with evidence of honest concurrent use of the marks. Before the Registrar, the evidence was refused but on appeal the trial judge accepted the claim for honest concurrent use.

The decision – a failure to demonstrate honest concurrent use

The Full Court of the Federal Court held that the Tile Disclaimer meant that tile products were 'expressly carved out' from Caesarstone's goods. However, the evidence of use related strictly to tile products. Consequently, honest concurrent use of the mark could not be demonstrated. At [32], the Full Court held:

'A finding of honest concurrent use must be a finding of use in respect of goods that are in fact specified in the trade mark application. The goods which were the subject of the primary judge’s honest concurrent use finding were all “in the nature of tiles”. These were expressly excluded from the class 19 specification. There was no other finding of honest concurrent use.'

A further issue related to whether Caesarstone's distributors and stonemasons were authorised users of the mark. Caesarstone claimed it exercised quality control over the products because it provided technical and marketing support to the distributors, and provided fabrication and installation manuals to be given to stonemasons. However, the Full Court held that there was no quality control as a matter of substance. Caesarstone did not inspect the final products for their quality, or otherwise instruct the stonemasons on the necessary form or standards for the products. As a result, Caesarstone did not exercise sufficient control over the final product to satisfy the 'authorised use' requirements in the Act.

Key considerations for your business

  • This case serves as a reminder about the need for care in selecting the scope of the goods and services covered by a mark.
  • To have a mark accepted under s44(3)(a), you must be able to satisfy the requirements for honest concurrent use, including being able to show use in relation to the specific goods or services covered by the application.
  • It also reinforces the need for actual quality control to prove authorised use.