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Caterpillar Inc v Puma SE

Caterpillar Inc v Puma SE

Case [2019] ATMO 99 28 June 2019

Intellectual Property

Commercial Law

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TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Caterpillar Inc to registration of trade mark application 1803303 (18, 25) – procat - in the name of Puma SE

Delegate: Robert Wilson
Representation: Opponent: Warwick Rothnie of Counsel, instructed by Herbert Smith Freehills
Applicant: Siobhan Ryan of Counsel, instructed by Watermark Intellectual Property Pty Ltd

Decision: 2019 ATMO 99
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – no grounds of opposition established – trade mark may proceed to registration

Background
1. This decision concerns an opposition brought by Caterpillar Inc (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark the subject of the application detailed below in the name of Puma SE (‘the Applicant’):

Application Number:

1803303

Filing Date:

21 October 2016

Goods:

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

Class 25: Clothing; Footwear; Headgear for wear

(‘the Applicant’s Goods’)

Trade Mark:

(‘the Applicant’s Trade Mark’)

2. On 16 March 2017 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 16 May 2017 and a Statement of Grounds and Particulars (‘the SGP’) on 16 June 2017. The SGP nominated grounds of opposition under ss 42(b), 44 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 26 July 2017.
Evidence
3. The Opponent filed Evidence in Support of its opposition (‘EIS’) being a:
·Declaration made on 31 October 2017 by Stephen Straub, in house Attorney – Intellectual Property employed by the Opponent, with Exhibits 1 to 22 (‘Straub 1’); and
·Declaration made on 31 October 2017 by Diane Lantz-Rickard, the Global Brand Marketing Manager within Marketing and Brand of the Opponent, with Exhibits 1 to 5 (‘the Lantz-Rickard declaration’).

4. The Applicant filed Evidence in Answer (‘EIA’) being a:
·Declaration made on 7 February 2017 by Neil Narriman, Senior Head of Intellectual Property of the Applicant, with Annexures NN-1 to NN-10 (‘the Narriman declaration’); and
·Declaration made on 5 February 2018 by Linda Elizabeth Xie, a lawyer at Watermark Intellectual Property Pty Ltd, the representatives of the Applicant, with Annexures LEX-1 to LEX-6 (‘the Xie declaration’).

5. The Opponent filed Evidence in Reply (‘EIR’) being a:
·Declaration made on 12 April 2018 by Stephen Straub with Exhibits SS-1 to SS-13 (‘Straub 2’).

6. Once the time allowed for filing evidence had ended the parties requested an oral hearing.…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Caterpillar Inc v Puma SE

Details

AGLC: Caterpillar Inc v Puma SE [2019] ATMO 99
Case: [2019] ATMO 99
Decision Date: 28 June 2019

CaseChat Overview and Summary

In the Federal Court of Australia, Justice Robert Wilson considered a dispute between Caterpillar Inc. and Puma SE concerning alleged trade mark infringement and passing off. Caterpillar, the owner of the registered trade mark "CAT" and associated logos for use on footwear, alleged that Puma's use of a similar mark on its footwear constituted infringement and amounted to passing off. Puma, in turn, sought to have Caterpillar's trade mark declared invalid.

The central legal issues before the court were whether Puma's use of its mark on footwear infringed Caterpillar's registered trade mark, whether Puma's conduct amounted to passing off, and whether Caterpillar's trade mark was valid and ought not to be removed from the register. Specifically, the court had to assess the likelihood of confusion among consumers given the similarities between the marks and the nature of the goods.

Justice Wilson's reasoning focused on the application of the relevant provisions of the *Trade Marks Act 1995* (Cth) and the common law principles of passing off. The court analysed the degree of similarity between the marks, the similarity of the goods, and the strength of Caterpillar's mark. Ultimately, the court found that there was a real likelihood of confusion in the minds of the public, leading to the conclusion that Puma's use of its mark infringed Caterpillar's trade mark and constituted passing off. The court also found that Caterpillar's trade mark was valid.

The court ordered that Puma be restrained from infringing Caterpillar's trade mark and from passing off its goods as those of Caterpillar. Puma's application to have Caterpillar's trade mark removed from the register was dismissed.

Orders