Caterpillar Inc v Puma SE

Introduction 1 On 21 October 2016, the respondent (Puma) filed trade mark application number 1803303 under Part 4 of the Trade Marks Act 1995 (Cth) (Act) for the following trade mark: (PROCAT mark) in respect of the following goods: (a) in class 18: bags made of imitation leather; bags made of leather; imitation leather; leather; leather cases; trunks (luggage); travelling bags; umbrellas; parasols; walking sticks; purses; pocket wallets; key cases; carrying bags (other than disposable carrier bags); bags for sports; pouches (bags); duffel bags; rucksacks; school bags; toilet bags; and (b) in class 25: clothing; footwear; headgear for wear, (together, the PROCAT goods). For convenience, the goods covered by the application (PROCAT application) will be referred to as clothing (or apparel), footwear, bags and accessories. 2 The PROCAT application was made without any limitation as to colour and therefore the PROCAT mark is taken to have been applied for in respect of all colours (see s 70 of the Act). 3 The appellant (Caterpillar) opposed the PROCAT application. 4 On 28 June 2019, a delegate of the Registrar of Trade Marks dismissed the opposition and decided, subject to the present appeal, that the PROCAT mark may proceed to registration: Caterpillar Inc v Puma SE [2019] ATMO 99. 5 By notice of appeal filed 19 July 2019, Caterpillar appeals against the decision of the delegate under s 56 of the Act. Caterpillar advances three grounds of opposition under the Act. 6 First, under s 44, Caterpillar contends that the PROCAT mark is deceptively similar to the following trade marks registered by Caterpillar: (a) in respect of goods in class 18, trade mark registration 567670 for the word CAT (as a part of a series mark) and trade mark registration 502760 for the following device mark: (b) in respect of goods in class 25, trade mark registrations 318732 and 1246277 for the word CAT, (which I will refer to as the CAT word mark and the CAT device mark respectively, and the CAT marks collectively). 7 Second, under s 60, Caterpillar contends that the CAT marks had, before the priority date of the PROCAT application, acquired a reputation in respect of apparel, footwear, bags and accessories and, because of that reputation, the use of the PROCAT mark would be likely to deceive or cause confusion. 8 Third, under s 42(b), Caterpillar contends that the use of the PROCAT mark would be contrary to law because it would contravene ss 18 and 29(1)(g) and (h) of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010 (Cth)). 9 The appeal involves a hearing de novo: Registrar of Trade Marks v Woolworths Limited (1999) 93 FCR 365 (Woolworths) at [32]. By reason of the presumption of registrability that is reflected in s 33 of the Act, the onus is borne by the opponent to registration: Woolworths at [45], [47]. In relation to the delegate's decision, French J (with whom Tamberlin J agreed) observed in Woolworths (at [33]): There is therefore no presumption in favour of the correctness of the Registrar's decision save that weight will be given to the Registrar's opinion as that of a skilled and experienced person. But the Court on appeal from the Registrar must, in determining the question of acceptance of the application, apply to it the same legal criteria that the Registrar is required to adopt. That is to say the application must be accepted unless the Court is satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it. If the matter is left in doubt, then the application should be accepted. That is consistent with the possibility, adverted to earlier, that after a contested opposition registration may eventually be refused. Weight can be given to the Registrar's opinion without compromising the duty of the Court to construe the relevant legal criteria. When the proper principles are applied to the manner in which a judgment is to be made about an issue such as "deceptive similarity" there is room for a degree of deference to the evaluative judgment actually made by the Registrar. That does not mean the Court is bound to accept the Registrar's factual judgment. Rather it can be treated as a factor relevant to the Court's own evaluation. 10 In accordance with the foregoing principle, I have given weight to the delegate's decision below, although I have ultimately come to a different conclusion based on the evidence adduced on the appeal. 11 It is common ground between the parties that the standard of proof is the balance of probabilities (see Telstra Corp Ltd v Phone Directories Co Australia Pty Ltd (2015) 237 FCR 388 at [133]) and the date on which the grounds of opposition must be established is the filing date of the application for registration (21 October 2016), which I will refer to as the priority date (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (Southern Cross) at 595; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 at [20]-[22]). 12 The principal issues in dispute between the parties concern the degree of similarity between the PROCAT mark and the CAT marks, and the extent of the reputation in the latter marks. Caterpillar's primary contentions are that: (a) the PROCAT goods are the same type of goods as those covered by Caterpillar's prior registrations for the CAT marks; (b) the PROCAT goods are likely to be promoted and sold through the same retail channels as the CAT branded apparel, footwear, bags and accessories; (c) the PROCAT mark will inevitably be read, understood and pronounced in a way that conveys two distinct words, "pro" and "cat"; (d) the prefix "pro" is commonly used in the English language as an abbreviation for the word "professional". 13 Caterpillar contends that the use of the word "pro" in conjunction with the word "cat" 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. 14 For the reasons that follow, I accept Caterpillar's primary contentions and allow the appeal.