Caterpillar Inc. is a US based company known for manufacturing and selling heavy machinery (Caterpillar). Often referred to simply as “CAT”, it has extended its offerings to a range of consumer products, including clothing, bags and other accessories.
Caterpillar owns registered trade marks in Australia protecting the word “CAT” with respect to clothing, apparel, bags and accessories.
Recently, global sportswear company Puma SE (Puma) filed a trade mark application for the word “PROCAT” in relation to clothing, footwear, headgear and bags.
Caterpillar opposed the application, on the basis it conflicted with its own “CAT” marks.
Although Caterpillar’s opposition failed before the registrar’s delegate, it was upheld in a subsequent application to the Federal Court of Australia.
Puma appealed this decision to the Full Court of the Federal Court of Australia.
The appeal
The initial application by Caterpillar required the Court to determine the opposition de novo. That is, the Court was not asked to determine whether the original decision of the delegate was correct; rather it made its own determination, including with regard to new evidence not before the delegate.
After considering the submissions and evidence, the primary judge ordered that Puma’s trade mark application be refused.
However, Puma’s subsequent appeal to the Full Court was not a hearing de novo; rather, Puma was required to demonstrate to the Full Court that the primary judge has made an appealable error, with reference to the evidence tendered in those proceedings.
Puma argued that the primary judge:
With respect to item one, the Full Court determined that the primary judge had correctly understood that “PROCAT” was applied for in a stylised form. The primary judge set out, in detail, the parameters relating to fair and normal use of the “PROCAT” mark, in circumstances where its registration was granted. Use of the mark in various forms (that do not substantially affect the mark’s identity) were considered, as part of the primary judge’s decision to refuse registration in light of the earlier “CAT” trade marks. Accordingly, the Full Court could not identify error in the primary judge’s reasons, so as to grant leave to appeal.
Item two was also subject to detailed consideration by the primary judge. Upon hearing submissions and evidence, the primary judge determined that consumers would interpret the word “PROCAT” as “PRO” (short for professional) and “CAT”, increasing the likelihood of confusion. That is, a consumer may erroneously believe that “PROCAT” is a high end (or professional) variant of “CAT” products, increasing the likelihood of deception. Therefore, the Full Court could not identify an appealable error in the primary judge’s decision.
As a result, Puma’s appeal failed, and its trade mark application for “PROCAT” was refused.
Lavan comment
A party opposing a trade mark may first apply for a hearing before IP Australia. If the decision is adverse, then an application can be made to the Federal Court of Australia for a de novo hearing.
However, appeals require the applicant to identify an appellable error in fact or law. This can prove difficult, particularly where a party failed to raise all relevant arguments before the primary judge.
If you require advice with respect to commencing or defending opposition proceedings, do not hesitate to contact Iain Freeman or Andrew Sutton.
