In October 2021, we analysed the Federal Court’s decision in Caterpillar Inc v Puma SE [2021] FCA 1014, in which Justice O’Bryan refused the registration of Puma SE’s PROCAT trade mark (no. 1803303) on the basis that Caterpillar Inc had successfully made out two grounds of opposition pursuant to sections 44 and 60 of the Trade Marks Act 1995 (Act).  Puma had subsequently applied for leave to appeal O’Bryan J’s decision, and on 9 September 2022, the Full Federal Court handed down its decision in Puma SE v Caterpillar Inc [2022] FCAFC 153, in which the Court unanimously dismissed Puma’s application for leave.

Background

On 21 October 2016, Puma filed its application for the PROCAT mark as a fancy mark in lower case with sans-serif font, in classes 18 and 25 in respect of clothing, footwear, headgear for wear, bags and accessories.  Puma’s application was opposed by Caterpillar, the owner of the following registered trade marks:

1. word marks for CAT in classes 18 (no. 567670) and 25 (no. 318732 and 1246277); and
2. device mark featuring the word CAT straddling a prominent triangle device (no. 502760) in class 18

(collectively, CAT marks).

Caterpillar’s opposition to the PROCAT mark was dismissed by the Trade Marks Registrar.  On appeal to a single judge of the Federal Court, Caterpillar successfully made out two grounds of opposition, namely:

1. under section 44 of the Act, the PROCAT mark was deceptively similar to the CAT marks; and
2. under section 60, the CAT marks had acquired a reputation in respect of the goods covered by the PROCAT mark prior to the priority date of that mark, and because of that reputation, the use of the PROCAT mark would be likely to deceive or cause confusion.

Key takeaway

The Full Court’s decision highlights that issues of deceptive similarity and likelihood of deception or confusion are ones on which reasonable minds may differ.  However, the mere fact that reasonable minds may differ on these issues provides insufficient justification for the Full Court to intervene.  In view of the advantages held by a trial judge who has seen and heard the evidence, appellate courts are unlikely to disturb the trial judge’s findings on issues bearing on sections 44 and 60, in circumstances where the appellant has failed to demonstrate any error, be it of fact, law or in the exercise of discretion by the trial judge.

Issues in dispute

Puma advanced a number of grounds of appeal, including that O’Bryan J had erred in

1. not limiting the PROCAT mark to the fancy form in a single colour in which it was filed, when assessing notional normal and fair use of the mark under section 44(1) (First Asserted Error);
2. not finding that the PROCAT mark would be considered by ordinary Australian consumers as a single invented word (Second Asserted Error); and
3. adopting an unduly narrow approach in considering whether there was a real risk of confusion in the surrounding circumstances (Third Asserted Error).

Findings of Justices Nicholas, Rofe and McElwaine

First Asserted Error

When assessing normal and fair use, O’Bryan J in the first instance opined at [113] that “the fact that Puma has applied to register the PROCAT mark as a fancy mark in lower case with sans-serif font does not limit the trade mark rights granted upon registration to use with a single colour or shade of lettering or indeed to use without any letters being capitalised”.  His Honour gave weight to evidence of Puma’s use of the PROCAT mark in USA and Canada (as Puma had not used that mark in Australia) where the mark was depicted in lower case letters and had different colours for the letters PRO and CAT.  His Honour also gave weight to evidence of marketing material referring to the brand as ‘ProCat’ with the letters P and C in upper case.  On appeal, Puma contended that his Honour erred in finding that fair and normal use of the mark would include use in these alternative forms.

The Full Court at [68] dismissed Puma’s contention, on the basis 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”.  It was open to O’Bryan J to take into account the manner in which the mark had been used in USA and Canada, and other variations in shading, colouring and capitalisation of letters, as examples of normal and fair use.  In the Full Court’s view, this approach finds support in a long line of authorities, including the oft-cited decision of Parker J in the Pianotist Case (1906) 2 RPC 774.

Second Asserted Error

The primary judge at [109] found that ordinary consumers were likely to read, understand and pronounce the PROCAT mark as a combination of the words PRO and CAT (rather than an invented word that would rhyme with ‘pocket’), on the basis that those two words were common English words and consumers would more naturally refer to PROCAT in a way which gave it meaning.  Accordingly, consumers would likely understand PRO as either an abbreviation of ‘professional’ or a Latin word meaning ‘for’ (being the antonym of ‘against’).  Whilst Puma did not contest the finding on how the PROCAT mark was likely to be pronounced, it contended, on appeal, that O’Bryan J erred by wrongly ascribing meaning to an invented word. 

The Full Court at [82] opined that Puma effectively sought to draw a distinction that, while consumers would likely pronounce PROCAT as a combination of PRO and CAT, they would nonetheless comprehend the mark as a single invented word with two syllables and ascribe no meaning to it.  The Full Court rejected this distinction as “linguistically strained” and “quite unrealistic” and instead upheld the “logical, indeed compelling” analysis of the primary judge.  Their Honours affirmed the primary judge’s approach of identifying a familiar, straightforward meaning of PROCAT based on the likely natural pronunciation of the word by an ordinary Australian consumer.

Third Asserted Error

When assessing the likelihood of confusion amongst Australian consumers, the primary judge at [110] identified that the relevant trade context involved “a wide range of apparel, bags and accessories sold in retail stores and online in the work wear and lifestyle market segments”.  His Honour further found that such goods tended to have very similar styles across brands, and that the retail channels used by Puma and Caterpillar overlapped.  On this basis, his Honour found at [111] 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 in the course of trade with CAT branded goods, being a “professional” or high performance or otherwise special line of CAT goods”.  On appeal, Puma contended that his Honour took an overly narrow approach to the consideration of the trade context and failed to identify why consumers would necessarily understand the meaning ascribed to PROCAT (namely ‘professional cat’) as a reference to Caterpillar and/or its goods, despite the possibility that the word ‘cat’ had other alternative meanings unrelated to Caterpillar.

The Full Court at [85] took the view that Puma’s contention failed to acknowledge the extensive evidence to which the primary judge had regard, including the long history of Puma’s and Caterpillar’s businesses, how both parties gradually expanded their product range to cover lifestyle goods, and the competition between the parties in relation to the supply of apparel and footwear in Australia.  While the primary judge found that Puma’s leaping cat trade mark was well-known in the marketplace, in the Full Court’s view, it did not necessarily follow that consumers of the relevant products should be fixed with some degree of awareness that the word ‘cat’ was not exclusively enjoyed by Caterpillar, which would have mitigated any risk of confusion.  Their Honours at [98] held that, based on the evidence, it was open to the primary judge to find that a significant number of hypothetical consumers would be caused to wonder if any commercial association existed between PROCAT branded goods and those of Caterpillar, even with a knowledge of Puma and its leaping cat device.  Ultimately, their Honours held at [100] that Puma had failed to identify any material error of fact or law that had contaminated the evaluative task undertaken by the primary judge. 

You can access the full text of the Full Court’s decision here.