[2021] FCA 1014
Trade Marks – opposition to PROCAT for apparel and clothing – sections 42(b), 44 and 60 based on CAT marks.
A delegate of the Registrar of Trade Marks dismissed Caterpillar’s opposition to Puma’s trade mark application for PROCAT in respect of, generally, apparel and accessories. Justice O’Bryan heard Caterpillar’s appeal and overturned the delegate’s decision, ordering that Puma’s trade mark application be refused. Puma has sought leave to appeal.
Caterpillar’s primary contention, accepted by O’Bryan J, was that consumers commonly understand the prefix “pro” as an abbreviation for the word “professional” such that goods branded PROCAT would understand them as “professional or high performance goods which are made or endorsed by, or otherwise associated with, Caterpillar.”
While O’Bryan J did not place any “significant weight” on the list of trade marks extracted by Caterpillar from the IP Australia online database which included the prefix, suffix or letters “pro” (because there was little to no evidence that other traders had in fact used those marks), his Honour nevertheless accepted evidence of the president of a global licensee of CAT branded apparel and accessories, Mr Gallinger, that the word “pro” can be used to delineate professional products from casual or novice products and that consumers would understand PROCAT to mean a “professional “cat” or being positive toward “cat”.” This appears to us to be a key plank of Caterpillar’s case and Justice O’Bryan’s decision over which reasonable minds could differ.
In light of that finding, it was a relatively slippery slope to finding in Caterpillar’s favour. The context in which the goods would be sold gave rise to a high likelihood that the styles of goods across brands would be the same or similar and there would be an overlap in retail channels. These matters gave rise to 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.
Interestingly, his Honour found 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.”= That finding tends to suggest that it does not matter if the mark that is sought to be registered is in a particular font. That seems to us somewhat problematic given the registration is limited to the mark in the font applied for and convention is that notional use can only extend to any font when the mark is registered in capital letters (though to be fair the Act is silent as to that). It might also be doubted whether section 7(1) of the Act could have assisted. Section 7(1) provides that a court may decide that a “person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.” That refers to actual not notional use, and so would not apply to the putative use of the applied for mark under section 44.