Look what the CAT dragged in Federal Court upholds appeal by Caterpillar Inc

What you need to know

• The Federal Court has refused Puma SE's PROCAT trade mark application on the basis of Caterpillar Inc's pre-existing registrations for CAT.  PROCAT was found to be deceptively similar to Caterpillar's CAT marks which were also found to have a significant pre-existing reputation.

What you need to do

• Before filing a trade mark application, consider the markets where the mark may be used and undertake searches of the relevant trade mark registers to identify any trade marks which may block your trade mark application 
• Be cautious of adding a prefix or suffix to a mark with a pre-existing meaning (for example, "pro-", "pre-" or "anti-") as this aspect of the mark may be discounted in any deceptive similarity assessment.
• If filing an opposition, consider whether it is necessary to rely on both section 60 and 42 (b) of the Trade Marks Act.  Where relying on the same evidence to establish both grounds, reliance on section 42(b) is likely to be redundant.

Puma SE, a global sportswear company, filed a trade mark application for the stylised word mark:  

The application covered goods in classes 18 and 25 including bags, clothing, umbrellas, wallets, footwear and headwear among others. 

The application was opposed by Caterpillar Inc on the basis of its registered trade marks for CAT (the CAT Word Mark) and logo mark: 

  (the CAT Logo Mark, together the CAT Marks). 

In particular, Caterpillar argued that:

• the PROCAT mark is deceptively similar to the CAT Marks under s 44 of the Trade Marks Act 1995 (Cth);
• the CAT Marks had a reputation before the priority date of the PROCAT Mark and, due to that reputation, use of the PROCAT Mark would be likely to deceive or cause confusion under s 60 of the Act; and
• the use of the PROCAT mark would contravene section 18 and 29(1)(g) and (h) of the Australian Consumer Law and therefore opposed registration under s42(b) of the Act. 

Before the Trade Marks Office

The Hearing Officer rejected all three grounds.  

The Hearing Officer determined that Caterpillar had acquired a significant reputation in the CAT Logo Mark at the priority date.  However, this reputation did not extend to the CAT Word Mark.  

Additionally, Caterpillar's significant reputation in the CAT Logo Mark meant that the likelihood of deception or confusion was actually reduced.  The Hearing Officer otherwise found that the marks were sufficiently different with aural, visual and conceptual differences. 

Federal Court Appeal 

Caterpillar relied on the same three grounds on appeal.  Justice O'Bryan set aside the decision of the Trade Marks Office and refused registration of Puma's PROCAT mark. 

Section 44

Justice O'Bryan found that the marks CAT and PROCAT were deceptively similar.  

Justice O'Bryan considered that CAT formed half of Puma's mark (one of two syllables) and that an ordinary consumer would be likely to comprehend and pronounce the mark as two words and syllables, 'pro' and 'cat', rather than one word which has no meaning.  Further, 'pro' is a commonly used Australian word with an identifiable meaning to ordinary Australian consumers, being professional or to be in favour of something. 

As there was also an overlap in retail channels, it was held that 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 with Caterpillar, for example, professional or high performance goods associated with or made/endorsed by Caterpillar. 

Section 60 

Caterpillar successfully demonstrated that it had a substantial and valuable reputation in the CAT Marks in Australia.  As Puma had not yet used the trade mark in Australia, evidence demonstrating use of the PROCAT mark in Canada and the USA was accepted.  This use showed 'pro' and 'cat' being used in different colours and in some instances, capital letters for the letters P and C. 

Justice O'Bryan did not consider the marks to be famous, such that no confusion would arise from use of PROCAT.  Rather the Court found that a consumer might wonder if the goods are connected by being a variant of, or related to, the Caterpillar brand. 

Section 42(b)

Caterpillar also relied on section 42(b) on the basis that Puma's use of the PROCAT mark would contravene the Australian Consumer Law.  Caterpillar's evidence to establish the section 42(b) ground was the same as its evidence for the section 60 argument.

Justice O'Bryan noted that section 42(b) carries a higher evidentiary burden than section 60.  That is, consideration of whether use of the PROCAT mark may result in misleading or deceptive conduct required an assessment of all relevant circumstances.  It is not sufficient to show a "cause to wonder" about the source of the goods, rather, it would be necessary to show a likelihood of confusion.  

As the evidence for both ss 60 and 42(b) was the same, Justice O'Bryan held that it was 'superfluous' to consider the additional s 42(b) claim.  Going forward, opponents should consider whether reliance on section 42(b) is necessary and, if so, ensure that further evidence is led to establish the higher standard of proof required to satisfy this ground.

Next steps

While Caterpillar has won this battle, Puma has filed leave to appeal the decision to the Full Federal Court.  The CAT fight will continue and we will keep you updated on any developments.  

Authors: Nina Fitzgerald, Partner; and Josephine Gardiner, Lawyer.