Caterpillar Inc v Puma SE  FCA 1014 (27 August 2021)
Caterpillar was successful in its appeal from a decision of the Registrar dismissing its opposition to trademark registration of ‘procat’ filed on 21 October 2016 for goods in classes 18 and 25.
The opponent relied on grounds under ss42(b), 44 and 60 but failed to establish any ground.
The opponent primarily relied on its prior registrations for CAT (word and logo) in classes 18 and 25, as well as use of its CAT brand for earth moving equipment and ancillary merchandising such as clothing, footwear, bags and other accessories.
Under s44, the delegate found that the applied for ‘procat’ mark was not deceptively similar to the opponent’s CAT word mark and it necessarily followed that it was also not deceptively similar to the CAT Logo mark.
Under s60, the applicant conceded the opponent’s CAT Logo mark had acquired an Australian reputation. However, the delegate agreed with the applicant that the opponent’s evidence of use of the CAT word mark was minimal and insufficient to demonstrate the requisite reputation. The delegate considered the reputation acquired by the CAT Logo would serve to reduce the likelihood of deception or confusion and was not satisfied that, because of the reputation acquired by the CAT Logo, that the use of the applied for mark would be likely to deceive or cause confusion.
The opponent also relied on its reputation under s42(b) to allege that use of the applied for mark would be contrary to the Australian Consumer Law. However, given the delegate’s finding under s60, the s42(b) ground also failed.
O’Bryan J upheld Caterpillar’s grounds of opposition under ss 44 and 60.
Caterpillar relied on use and registration of its CAT word and logo (shown below) marks for similar goods in classes 18 and 25.
Although the applied for procat mark is not used in Australian, O’Bryan J admitted evidence as to use of this mark in the US and Canada as being relevant to the fair and normal use of this mark by Puma. This disclosed the letters “pro” and “cat” having different shades or colours, or the word being depicted as a single word but with a capital “p” and a capital “c”. His Honour considered this would constitute use with alterations which do not substantially affect the identity of the applied for trade mark.
O’Bryan J was satisfied that, at the relevant 21 October 2016 priority date, Caterpillar had a substantial and valuable reputation in Australia in each of the CAT word and logo marks in relation to apparel, footwear, bags and accessories. His Honour commented that the evidence showed far more frequent use of the CAT logo mark as a brand affixed to licensed goods in comparison to the CAT word mark. Nonetheless, the evidence included considerable use of the CAT word mark (usually rendered as “Cat”) affixed to footwear and socks. His Honour found the evidence supported a conclusion that there is no material difference in the extent of reputation associated with the CAT word and logo marks.
His Honour also accepted evidence from Caterpillar that the word “pro” can be used to delineate professional products from casual or novice products. He also accepted that it is likely that ordinary Australian consumers would pronounce the procat mark as a combination of two words “pro” and “cat” and that, so pronounced, the word would have a familiar or identifiable meaning to ordinary Australian consumers, being a professional “cat” or being positive toward “cat”.
O’Bryan J considered the applied for procat mark is deceptively similar to each of the CAT word and logo marks and upheld the s44 ground of opposition. His Honour concluded “there is 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, as being a “professional” or high performance or otherwise special line of CAT goods. 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.”
Given this finding under s44 it was unnecessary for O’Bryan J to consider the other grounds of opposition under s60 and s42(b), but his Honour did provide comments on these grounds.
His Honour considered Caterpillar also established the s60 ground based on the Australian reputation of its CAT word and logo marks. Significantly he did not accept Puma’s submission that the CAT marks had such a strong reputation in Australia, and Australian consumers had such familiarity with the CAT marks, that confusion with the PROCAT mark would be unlikely. His Honour considered the CAT marks had a strong reputation in Australia but they could not be described as famous or very famous (in contrast to the findings made in respect of the brand “Maltesers”, the subject of the decisions in Mars and Delfi).
O’Bryan J considered that Caterpillar’s reliance on the s42(b) ground of opposition, namely that use of the applied for procat mark by Puma would be contrary to ss 18 and 29 (1)(g) and (h) of the Australian Consumer Law, is superfluous in light of his findings under the s60 ground. Caterpillar relied on the same evidence and contentions advanced under the s6o ground. His Honour observed that reliance on s 42(b) by reference to the Australian Consumer Law prohibitions only has utility if the appellant seeks to rely on additional evidence and contentions that are not relevant to the s 60 analysis.