Caterpillar Inc v Puma SE

In the Federal Court of Australia, Caterpillar Inc appealed against the decision of the Registrar of Trade Marks to allow Puma SE's registration of the PROCAT word mark in classes 18 and 25 in respect of apparel, footwear, bags, and accessories. The appeal hinged on the contention that the PROCAT mark was deceptively similar to Caterpillar's CAT word and device marks, which had been registered and used extensively in Australia and worldwide for heavy equipment and machinery, and later for apparel and accessories. Caterpillar argued that the use of PROCAT would likely deceive or cause confusion due to the established reputation of their CAT marks.

The Court considered whether the PROCAT mark was deceptively similar to the CAT marks under section 44 of the Trade Marks Act 1995 (Cth), and whether the use of PROCAT would be contrary to honest practices under sections 60 and 42(b) of the Act. The Court found that the PROCAT mark was indeed deceptively similar to the CAT marks, and that Puma had not provided sufficient evidence to establish the industry practice of using multiple marks on footwear. The Court also concluded that the CAT marks had acquired a reputation in Australia prior to the priority date of the PROCAT application, and that the use of PROCAT would likely deceive or cause confusion due to this reputation.

The Court allowed Caterpillar's appeal, set aside the Registrar's decision, and refused registration of the PROCAT mark. Puma was ordered to pay Caterpillar's costs of the appeal and the opposition proceeding before the Registrar of Trade Marks.