Caterpillars CAT marks continue to prevail over Pumas PROCAT

What you need to know

• The Full Court of the Federal Court of Australia has dismissed Puma's application for leave to appeal finding that the primary judge did not make errors when concluding that Puma's PROCAT mark is deceptively similar to Caterpillar's CAT marks, and that because of Caterpillar's reputation in its CAT marks use of the PROCAT mark would cause deception or confusion.  This decision means that Puma's PROCAT application will be refused.  
• To establish an error by the primary judge Puma needed to show that the primary judge did not correctly identify the relevant legal principles, did not apply all of the facts found or in doing so overlooked a relevant matter or conversely considered an irrelevant matter.  The Full Court was not satisfied that Puma did that in this case therefore leave to appeal was not granted.

In Puma SE v Caterpillar Inc [2022] FCAFC 153, the Full Court of the Federal Court of Australia dismissed Puma's application for leave to appeal finding that the primary judge did not make errors when concluding that Puma's PROCAT mark is deceptively similar to Caterpillar's CAT marks, and that because of Caterpillar's reputation in its CAT marks use of the PROCAT mark would cause deception or confusion.  While Puma argued that the primary judge made a number of errors in reaching his findings, the Full Court was not satisfied that any such errors were made.  This decision means that Puma's PROCAT application will be refused.  

The dispute 

Puma is a well-known sportswear company.  It commenced business as a sports shoe manufacturer but expanded its business to clothing and other apparel including bags and sports accessories.  It sells its products under the PUMA brand.  The PUMA logo incorporates a leaping cat device (depicted below). 

In 2016 Puma applied to register the mark PROCAT (in stylised font, depicted below) for class 18 and 25 goods.  Caterpillar opposed the application before the Australian Trade Marks Office on the basis of its use and prior registration of various marks incorporating the word CAT some of which are registered for class 18 and 25 goods (the CAT Device mark is depicted below).  The CAT marks are used on various goods including clothing and footwear.  

A delegate of the Registrar of Trade Marks dismissed the opposition.  Caterpillar appealed the delegate's decision to the Federal Court and the appeal was allowed.  The primary judge found that the PROCAT mark is deceptively similar to Caterpillar's CAT marks for similar goods and therefore section 44 of the Trade Marks Act 1995 (substantially identical or deceptively similar trademark) was satisfied.  The primary judge also found that Caterpillar succeeded on section 60 (because of its reputation in its CAT marks, use of the PROCAT mark would cause deception or confusion).  Puma appealed the decision to the Full Federal Court on the basis that the primary judge made errors in reaching these conclusions.

The Full Court appeal

The Full Court (comprising Justices Nicholas, Rofe and McElwaine) refused leave to appeal and dismissed Puma's application.  The Full Court disagreed with Puma that the primary judge made errors in his application of sections 44 and 60 and concluded that the findings made were open on the evidence and that the analysis was logical and compelling.  

One of the key grounds argued by Puma was that the primary judge erred in his assessment of the PROCAT mark and the assumption of normal and fair use of the mark when assessing whether the mark was deceptively similar to the CAT marks.  On this point, the Full Court state that "The question of deceptive similarity is to be resolved notionally on the assumption that the PROCAT mark, if registered, will be used to the full extent of the statutory right of the owner."  As a result the Full Court stated that it was appropriate that the primary judge considered the use that had been made of the PROCAT mark in the US and Canada and that any use of the mark with differences in shading, colours or fonts was not beyond normal and fair use of the mark.  

Puma also argued that the primary judge was wrong to look for meaning in the PROCAT mark and that it should be considered an invented word.  The Full Court disagreed with this argument and said that it was "linguistically strained and improbable" that consumers would not understand the elements of the PROCAT mark (being the prefix PRO (indicating the word professional) and the word CAT) with their ordinary meaning.  

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."

Puma was ordered to pay Caterpillar's costs assessed in a lump sum.  

_{*A version of this article first appeared in WTR Daily, part of World Trademark Review, in September 2022. For further information, please go to www.worldtrademarkreview.com}

Authors: Lisa Ritson, Partner; and Annika Barrett, Senior Expertise Lawyer.