In August, the Federal Court handed down a decision in an appeal to an opposition heard by the Trade Marks Office in 2019 (Caterpillar Inc v Puma SE [2021] FCA 1014). The opposition and Federal Court decision are discussed in further detail below.
Opposition
In October 2016 Puma SE (Puma) filed an application for PROCAT (stylised) covering various bags, accessories (including wallets, purses, umbrellas, walking sticks) in class 18 and clothing, footwear and headgear items in class 25.
In 2017, Caterpillar Inc (Caterpillar) opposed the application based on their word and device registrations for CAT covering various goods and services in classes 16, 18, 25 and 35. A comparison of the marks are set out below for reference.
Caterpillar argued PROCAT was deceptively similar to their CAT registrations on the basis the “pro” element is descriptive and consumers would believe the goods were a professional range of the Caterpillar goods; the visual representation of the marks were similar; and Caterpillar had a reputation in the CAT marks from long standing use of the mark in Australia which would lead to deception and confusion in the marketplace.
The Hearing Officer rejected Caterpillar’s arguments finding CAT and PROCAT were not deceptively similar and any deception or confusion was unlikely. (However the Hearing Officer noted the result would likely have been different had Puma’s application been for the mark CAT PRO.)
Puma’s application was allowed to proceed to registration however Caterpillar appealed the decision to the Federal Court.
Federal Court decision
The decision was handed down on 27 August 2021 which allowed the appeal and setting aside the Hearing Officer’s decision.
Caterpillar filed significant evidence setting out their use of the CAT word and device trade marks around the world and in Australia. The judge found that whilst their reputation drew upon Caterpillar’s history in the manufacture of heavy equipment, Caterpillar had acquired a substantial and valuable reputation in Australia in the CAT marks in relation to apparel, footwear, bags and accessories and the reputation spanned both the lifestyle and workwear categories.
It was found Caterpillar’s reputation extended to the word and device marks on the basis the element CAT is a memorable branding element and the word and device marks are both pronounced as CAT. Due to Caterpillar’s reputation, use of the PROCAT mark would likely cause consumer confusion. The judge rejected Puma’s suggestion that due to the strong reputation in the CAT marks, it was unlikely consumers familiar with the CAT brand would be confused.
The judge also held the marks CAT and PROCAT were deceptively similar on the basis CAT constitutes half of the PROCAT mark and is a common element of the CAT word and device marks. It was held a consumer would pronounce the PROCAT mark as PRO and CAT (rather than “procat” that rhymes with “pocket” or “rocket”). In addition, it was held that “cat” was a simple and well-known word whilst the element “pro” is an abbreviation of “professional” or commonly used as meaning “for”. Consumers would therefore consider PROCAT to be either a professional “cat” or being positive towards “cat”. The judge held there was a real risk that the imperfect recollection of consumers would lead to confusion that goods labelled with the PROCAT mark were connected with CAT branded goods and were a “professional” or high-performance line.
The appeal was successful and Caterpillar’s grounds of opposition under ss 44 and 60 of the Act were satisfied. Puma’s mark was denied registration.
However the story continues as Puma have now filed an appeal against this decision.
Key takeaways:
It is always preferable to select a distinctive trade mark that is able to distinguish your goods and/or services from others. Conducting trade mark searches can help to identify any potential issues prior to adopting a new brand.
In addition, trade mark owners should monitor their trade marks and should consider putting a watch service in place. A watching service will help identify trade mark applications that are the same or similar to your own marks that could be an infringement concern or you may wish to oppose.
Please get in contact with the Baxter IP team should you need further information on conducting trade mark searches or putting a watch service in place.
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