In Caterpillar Inc v Puma SE [2021] FCA 1014, the Federal Court of Australia held that procat was deceptively similar to Caterpillar’s registered CAT marks in classes 18 and 25. The appeal was allowed and decision of the delegate of the Registrar of Trade Marks reversed.

Federal Court of Australia

Judge: O’ Bryan J

Judgement Date: 27 August 2021

Appeal from: Caterpillar Inc v Puma SE [2019] ATMO 99

The world’s leader in heavy machinery manufacturer (CATERPILLAR) and a global sportswear brand (PUMA) – What do they have in common? 

Background of the parties

Caterpillar Inc (“Caterpillar/Appellant”) is the world’s largest manufacturer of heavy equipment for construction, mining, energy and transportation sectors. It has customers in 180 countries with almost 100,000 employees around the world, including Australia. In 1955, it started its first office in Australia, and the next year, its first manufacturing plant in Melbourne, Victoria. 

In the 1970s, Caterpillar began using its CATERPILLAR marks and its CAT marks (“CAT word marks and CAT device marks”) in a range of soft goods in class 18 and 25 including clothing, footwear, headgear, bags and accessories through licensing its trade marks. The goods in these classes were sold online through their own websites or through third party retailers that carry similar goods from other brands. Caterpillar holds numerous trade mark registrations for CAT marks in Australia. 

Puma SE (“Puma/Respondent”) is a global sportswear company headquartered in Germany. Puma designs and manufactures athletic and casual footwear, apparels and accessories. It sells its products to over 120 countries and has offices, subsidiaries, licensees in more than 80 countries including Australia. It employs more than 14,700 people worldwide. Puma entered Australia in 1957 selling footwear, bags and sports accessories and expanded into apparels in 1968. It retails its own products and through third parties such as Rebel Sports, Playtus Shoes. 

On 21 October 2016, Puma filed trade mark application 1803303 (“application”) for procat (“PROCAT mark”) in class 18 for goods including bags, pouches and in class 25 for goods including clothing; footwear; headgear for wear.

The application was accepted on 16 March 2017 and advertised for opposition. Caterpillar opposed the application on relying on its registered CAT word marks and CAT device marks in classes 18 and 25. Caterpillar nominated ss 42(b), 44 and 60 grounds of opposition.

On 28 June 2019, a delegate of the Registrar decided the PROCAT mark was not deceptively similar to the CAT marks and dismissed the opposition and directed the application to proceed to registration

Caterpillar appealed against the decision of the hearing officer. It relied on the following registered trade marks in its contention. 

Registration No.	Mark	Priority Date	Specification
318732	CAT	1 June 1978	Cl 25: Caps; hats; dust coats; overalls; aprons; gloves in this class; jackets; boots; shoes; ear muffs; spats; scarves; jumpers; T-shirts; and all other goods, excluding ladies’ sportswear of all kinds and women’s and girls’ hosiery, in this Class.
1246277	CAT	13 June 2008	Cl 25: Clothing, footwear and headgear.
502760		10 January 1989	Cl 18: Leather and imitation leather goods namely: briefcases, garment bags for travel, duffle bags, flight bags, tote bags, umbrellas, travelling bags.
567670		10 January 1989	Cl 18: Leather and imitation leather goods namely, wallets, credit card cases, business card cases, key holders, coin holders, briefcases, garment bags for travel, duffle bags, flight bags and tote bags, umbrellas, travelling bags, purses.

Caterpillar contended:

s 44: PROCAT mark is deceptively similar to the earlier registered CAT word mark (567670 as part of the series mark) and CAT device mark (502760) for class 18 as well as CAT word marks (318732 and 1246277) in class 25; the use of PROCAT mark is likely to confuse and deceive.

s 60: CAT marks have acquired substantial reputation in relations to clothing, footwear, headgear, bags and accessories and because of that, the use of the PROCAT mark in the relevant goods would likely deceive and confuse.

s 42(b): The use of the PROCAT mark would be contrary to law (i.e. ss 18 and 29(1)(g), (h) of the Australian Consumer Law)                     

The central issue to be determined – Whether procat is deceptively similar to the CAT word mark and the CAT device mark. There was no dispute that the goods claimed by CATERPILLAR’S earlier marks were similar to those sought by procat. 

Some material facts about PROCAT mark 
·       There was no evidence about how the mark originated
·       There was no use of the PROCAT mark at the priority date or any time after 
·       Puma adduced evidence of use of the PROCAT mark in USA and Canada and the Court accepted them as fair and notional use of the mark.

When assessing the marks similarity, his Honour took the following views:
a)     Visually – “CAT” is the dominant and memorable part of the PROCAT mark
b)     Aurally – “procat” is likely to be pronounced as “pro” & “cat” with 2 distinct words. 
c)     Conceptually – “pro” could be the abbreviation for the “professional” or “for” (opposite of against).
d)     CAT is equally significant, if not more significant than the “triangular device” in the CAT device mark
e)     CAT device mark has always been referred to as “CAT”

Critically, the prefix “pro” in the PROCAT mark would likely be interpreted to be indicating professional or high performance of the CAT branded goods, or goods endorsed by Caterpillar. 

His Honour did not accept Puma’s argument that the PROCAT mark would be used with other trade marks to indicate trade origin thereby reducing the likelihood of confusion with CAT branded goods as the issue was a mark for mark comparison without other external factors.

In assessing the effects of similarity of marks, his Honour took into account the similarity in styles of apparels, footwear, bags and accessories and retail channels by Puma and Caterpillar. Taken in its entirety, the learnt judge took the view there is a real and tangible risk that a significant number of consumers with imperfect recollection of the CAT marks when encountering the use of the PROCAT mark in relation to clothing, footwear, headgear, bags and accessories would be caused to wonder if there is a commercial link between the PROCAT branded goods and Caterpillar. 

It was held that the PROCAT mark was deceptively similar to the CAT marks and s 44 ground of opposition was established.

Whether reputation threshold met for CAT word mark

Puma submitted that evidence showed a substantial reputation was established for the CAT device mark but not for the CAT word mark. Puma also advanced argument that a strong reputation would likely mitigate the likelihood of confusion (citing Mars case) which his Honour did not accept in this case. His Honour found that the CAT word mark met the evidentiary threshold for reputation to be established. Because of the reputation acquired by the CAT marks, there is a real and tangible risk that a significant number of consumers who were familiar with the reputation of the CAT marks but had an imperfect recollection, would be confused as to whether goods with the PROCAT mark were connected with the CAT branded goods as being “professional” or high performance line of CAT branded goods. 

The ground of s 60 was established.

The learnt judge did not make any finding for s 42(b) as the appellant did not adduce further supporting evidence.

Commentary and Key Takeaways

The present case illustrated how two marks, although visually dissimilar could be assessed to be deceptively similar. The critical point was the interpretation of the prefix “pro”, understood to mean “professional” (or “for”) and potentially indicating high performance for the relevant goods. The respondent did not give evidence on how the mark came about or the intended meaning of the prefix “pro” and that, in my humble opinion, did not help its case. 

Disclaimer: The above is provided to assist in the understanding of the decision by the Federal Court of Australia. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.