Puma fails to revive TM bid in Australia
Manufacturer Caterpillar initially failed to block sports brand’s ‘Procat’ mark | But later court rulings sided with the construction equipment manufacturer’s arguments.
The Federal Court of Australia has refused German sportswear company Puma’s attempt to register a trademark which construction equipment manufacturer Caterpillar had successfully opposed.
In a decision handed down today, September 9, the Federal Court dismissed Puma’s application for leave to appeal and its application against the decision which had allowed Caterpillar’s opposition to Puma’s ‘Procat’ trademark application.
Puma had initially applied to register ’Procat’ in a stylised form back in October 2016. Caterpillar opposed the application but was unsuccessful before a delegate of the registrar, IP Australia.
Caterpillar appealed against the finding, and found success before a judge at the Federal Court of Australia in August last year.
Puma then appealed against the ruling, arguing that the primary judge erred by finding that the ‘Procat' mark was deceptively similar to Caterpillar’s ‘Cat’ trademarks and that use of the ‘Procat' mark would be likely to deceive or cause confusion in light of the reputation of the ‘Cat’ marks.
However, a panel of three judges at the Federal Court of Australia has now refused leave to appeal and dismissed Puma’s application.
Puma had argued that there was an error in the assessment of the ‘Procat’ mark, claiming that were three errors: there was a failure to limit the ‘Procat’ to its “fancy" stylised form; the search for meaning of the mark when ‘Procat’ is an invented word; and (3) misapplication of section 7 of the Trade Marks Act 1995 (which covers use of trademarks).
Puma also claimed that the primary judge adopted an unduly narrow approach in his consideration of the surrounding circumstances.
The court rejected all of Puma’s arguments.
While Puma didn’t contest that the judge’s factual findings were not open on the evidence, the sportswear company did focus on the weight given by the primary judge to his findings of fact and on the evaluative task undertaken by the judge in order to address the issue of deceptive similarity.
“At the outset, the difficulty that Puma faces in…framing the draft appeal grounds is that it must identify specific errors of fact or law that infect the evaluation undertaken by the primary judge,” said the court.
Puma’s argument that the primary judge erred by failing to consider that the hypothetical consumers would understand that ‘cat’ had other meanings and uses apart from the ‘Cat’ marks.
"His Honour was concerned with the impression of a significant number of hypothetical consumers,” said the court.
The Federal Court concluded that it was open to the judge, in undertaking the evaluative assessment required, to conclude that consumers would be caused to wonder whether there is a commercial association.
“Whilst reasonable minds might differ upon the outcome of the hypothetical inquiry, we are not satisfied that the assessment of the primary judge was infected by any material error of fact or law,” said the court.
The court ordered Puma to pay Caterpillar’s costs.
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