28th March 2023 - Bianca Ysabel

Background

On 21 October 2016, Puma SE (‘Puma’) filed a trade mark application for “PROCAT” in class 25 (footwear and headgear) and class 18 (bags and accessories).

Subsequently, Caterpillar Inc. (‘Caterpillar’) opposed the trade mark on various grounds (s52, ss42(b), s44 and s60). Caterpillar owned registered trade marks for CAT in classes 18 and 25 (‘Cat Marks’). Caterpillar’s opposition proceeding was dismissed by the Trade Marks Registrar. As a result, the registration office accepted Puma’s application for PROCAT. Caterpillar appealed this decision to the Federal Court.

On appeal to the Federal Court, a single judge held that Caterpillar had successfully made out the s44 and s60 grounds of opposition in that Puma’s trade mark for PROCAT was deceptively similar to the Cat Marks and that, in addition, the PROCAT mark would be likely to deceive or cause confusion because the CAT Marks had acquired a reputation in respect of the products covered under the PROCAT mark.

Federal Court decision

The Federal Court handed down the decision on 27 August 2021, superseding the initial decision by the Hearing Officer.

On appeal, Caterpillar filed substantial evidence to evidence its widespread reputation in the brand name “CAT” both in Australia and internationally. Consequently, the judge concluded that Caterpillar had acquired an irrefutable reputation in Australia regarding the “CAT” marks for apparel, bags, and accessories.

The brand name “CAT” directly ties back to Caterpillar who held a significant reputation in its brand for the work wear and lifestyle market. Consequently, the existence of the word “CAT” in PROCAT would most likely cause confusion among consumers.

The judge observed there was “a real and tangible risk that a significant number of consumers, who were familiar with but had an imperfect recollection of the CAT mark, would be confused as to whether goods labelled with the PROCAT mark were connected in the course of trade with CAT branded goods, being a “professional” or high performance or otherwise special line of CAT goods”.

The judge considered that PROCAT and CAT are deceptively similar because the word elements are alike. The word “CAT” literally comprises half of “PROCAT.” Further, that “pro” generally means “professional” and will tie back to Caterpillar as a new series of branded goods that are “professional” or of high performance.

However, Puma continued to fight back. They filed an appeal against this decision.

Full Federal Court

The Full Federal Court held that the PROCAT mark is deceptively similar to the Cat Marks which has a significant and widespread reputation in the Australian market for apparel, clothing and footwear. An ordinary Australian consumer is likely to read and pronounce the PROCAT marks as a combination of two words, that being “pro” and “cat”.

Furthermore, there was an overlap in the trade channels used by Caterpillar and Puma. Therefore, there was a real and tangible risk that a significant number of consumers with an imperfect recollection of the CAT Marks would be confused as to true origin of the supply if Puma obtained a registered trade mark in Australia for PROCAT.

The Full Court concluded that: “the primary judge, having correctly identified the relevant legal principles, applied each to the facts found and in doing so did not overlook a relevant matter. Nor did he take into account an irrelevant matter in his assessment of the trade context and each of the circumstances relevant to the assessment of the hypothetical consumer.”

Key Takeaways

The case flags the nature of the test required in assessing deceptive similarity as it requires an assessment of likely consumer confusion as to the source of a supply. Accordingly, when a trade mark is made up of two terms, the courts in Australia will consider whether the ordinary Australian consumer would read and pronounce the words in the mark separately or as a conjunction.

There is a real and not remote risk that the use of the word “pro” in conjunction with the word “cat” in the PROCAT mark, when used on apparel, footwear, bags and accessories, would convey to many consumers that goods branded with the PROCAT mark are professional or high performance goods which are made or endorsed by, or otherwise associated with, Caterpillar. As such, consumers would be caused to wonder whether there is commercial connection between PROCAT branded goods and Caterpillar.

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Bianca “Bianx” Ysabel, Digital Administrator

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Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.