Opposition by Caterpillar Inc. to registration of trade mark application numbers 1883749 and 1895918 (class 12) - Hellcat in the name of FCA US Llc

[2019] ATMO 148

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Caterpillar Inc. to registration of trade mark application numbers 1883749 and 1895918 (class 12) - HELLCAT- in the name of FCA US LLC.

Delegate:

M. Cooper

Representation:

Opponent: Jurgen Bebber of Corrs Chambers Westgarth

Applicant: James Maxwell of Peter Maxwell & Associates

Decision:

[2019] ATMO 148

Trade Marks Act 1995 (Cth) – s 52 opposition – ss 42(b), 44 and 60 considered – no grounds established – trade marks to proceed to registration.

Background

1. This matter concerns an opposition by Caterpillar Inc. (‘the Opponent’), under s.52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade marks detailed below in the name of FCA US LLC (‘the Applicant’):

Application Numbers:	1883749	1895918
The Trade Marks:	HELLCAT	HELLCAT
Filing Date:	31 October 2017	20 December 2017 (Priority date 16 April 2015)
The Goods	Class 12: Motor vehicles and parts thereof; engines for motor vehicles	Class 12: Motor vehicles; engines for motor vehicles

1. The Trade Marks were examined and Trade Mark 1895918 was advertised on 18 January 2018 as accepted for possible registration in the Australian Official Journal of Trade Marks. Trade Mark no. 1883749 was advertised on 22 March 2018.

2. The Opponent filed Notices of Intention to Oppose registration of Trade Mark 1895918 on 16 March 2018 and on 27 March 2018 for Trade Mark 1883749.

3. On 10 April 2018, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds for both marks under sections 42(b), 44 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 30 May 2018.

4. On 22 March 2019 the Opponent requested an oral hearing. I heard the matter in Canberra on 19 June 2019 as a delegate of the Registrar of Trade Marks. Jurgen Beber of Corrs Chambers Westgarth appeared for the Opponent. The Applicant was represented by James Maxwell of Peter Maxwell and Associates.

5. Comments made at the hearing suggested the parties may be able to resolve the opposition. In the circumstances I delayed my decision to allow discussions to continue however, after allowing further time, I was advised no resolution was achieved.

   Evidence

6. Evidence in Support (‘EIS’) was filed by the Opponent on 5 September 2018. It comprised the statutory declaration of Christine M Gensler, the Opponent’s Corporate Counsel (Trademarks), dated 4 September 2018, with Annexures CMG-1 to CMG-17 (‘the Gensler declaration’).

7. The Applicant’s Evidence in Answer (‘EIA’) was filed on 14 December 2018. It comprised two statutory declarations of James Vernon Maxwell, both dated 14 December 2018, with Exhibits 1 to 13 (‘the first Maxwell declaration’) and Exhibits 1 to 12 (‘the second Maxwell declaration’).

8. The Opponent’s Evidence in Reply (‘EIR’), filed on 18 February 2019, comprised

   •    •    a declaration by Kelsey Milman, the Opponent’s Deputy General Counsel, dated 15 February 2019 with Annexures KM-1 to KM-5 (‘the Milman declaration’); and

   •    •    a declaration by Fabien Lalande, a Trade Mark Practitioner with the Opponent’s legal representatives, dated 15 February 2019, with Annexures FL-1 to FL-4 (‘the Lalande declaration’).

9. In accordance with directions, the Opponent and Applicant filed written submissions on 5^th and 13^th of June 2019 respectively. These are discussed further below.

   The Opponent’s evidence

10. In her declaration, Ms. Gensler outlined the Opponent’s history, noting that it was founded in around 1890 and first used the ‘Caterpillar’ trade mark on tractors in 1904. After expanding its product line, it began using ‘CAT’ as its primary public-facing brand name in 1949. She said it has become a leading manufacturer of machinery, equipment, vehicles and parts for the construction, mining, forestry, military and agricultural industries, among others, as well as the maintenance and repair of those machines and vehicles and their parts. In addition, Ms. Gensler stated that the Opponent engages internationally in a variety of retail and wholesale services under and by reference to its trade marks. In Australia, she said the Opponent operates via a network of dealers in over 60 locations, all of which commenced operation before the relevant dates (the Trade Marks’ priority dates). She claimed the ‘CAT Trade Marks’ have been extensively and continuously used in Australia since at least 1949, achieving a high level of notoriety.

11. She also provided examples of advertising and promotion of the CAT Trade Marks in Australia, including on Facebook and YouTube. The Opponent’s various brand rankings were exhibited which demonstrated the Opponent’s significant brand strength. Ms Gensler also outlined substantial international net sales and revenue details, including in Australia, which she claimed reflected sales under or by reference to the CAT Trade Marks.

12. Ms. Gensler listed the Opponent’s trade mark registrations incorporating the word ‘CAT’ in several classes, including class 12, in 162 countries. She further listed the Opponent’s 150 Australian registered trade marks which cover ‘a vast array of goods and services, including class 12’ and the first of which, the word mark CAT (no. 10993), was registered in 1911 for goods in class 7 including ‘Machinery; Agricultural and horticultural machinery’. She noted that on 14 April 1963 the Opponent lodged another CAT word mark, trade mark no. 188613, which covered class 12 and included vehicles, equipment and machinery parts.

13. The Opponent’s brand extension activities and domain addresses were also listed. While the Opponent has used the word ‘CAT’ solus as a trade mark, it has also been used in combination with other words and components such as in domain names drivecat.com.au, rentcat.com.au, catrentalstore.com.au, cattrucks.com.au, cat.com, catparts.com and many more.  Brand extension activities included evidence of entities such as CAT Classic Parts, CAT Financial, CAT Classic Parts, CAT Used, CAT Rental Store.

14. Several court and administrative decisions were annexed, said to be ‘far from exhaustive’, which, Ms. Gensler claimed, demonstrated the notoriety of the Opponent’s CAT Trade Marks. They included two Australian decisions in which the Opponent’s reputation in the words ‘CAT’ and ‘Caterpillar’ was recognised. She also annexed a copy of a Colombian Trade Mark Office decision in which the Opponent had successfully opposed the registration of the Trade Marks. She stated her belief that if the Applicant was to use the Trade Marks in Australia on the Goods it would ‘cause a significant number of Australian consumers to mistakenly believe that these goods and/or services are provided by or with the authorisation of Caterpillar, or that the Applicant has some legitimate association with Caterpillar, which it does not.’

15. The Milman declaration confirmed the assertions in the Gensler declaration regarding extensive and continuous use of the CAT Trade Marks in Australia, since at least 1949, in relation to more than 300 different types of vehicles, machinery and equipment including ‘a vast range of on-road vehicles and engines’ prominently bearing the CAT Trade Marks. He also provided a ‘non-exhaustive’ list of the CAT Trade Marks used in the marine, agriculture, construction, railway and quarrying industries and asserted sales of 800 units of CAT On-Road vehicles in Australia and New Zealand from 2010 to 2018 and, from 1996 to 2009, almost 20,000 units of CAT On-Road Engines.

16. He further claimed the Opponent has advertised, marketed and promoted CAT on-road vehicles and engines since at least 2009 in Australia. This was demonstrated by the annexure of several brochures and advertisements over that period distributed in Australia and on Australian websites, particularly on The material variously promoted CAT or CAT® trucks, engines and machinery and dealerships and also included references to vehicles as TOUGH CAT® and BIG CAT® and BIGGER CAT®.

17. The Lalande declaration outlined the results of internet searches he had undertaken which indicated that no new Dodge products (the brand under which the HELLCAT cars were/are produced) had been available in Australia since at least on or about 9 May 2017.  This was confirmed by follow-up telephone calls he made to a variety of Dodge dealerships in Australia in which he was advised that ‘the Hellcat cars’ are not offered for sale in Australia.

    The Applicant’s evidence

18. The first Maxwell declaration mainly addressed the Applicant’s reputation in so-called ‘muscle cars’ and ‘sports cars’ and the lack of any evidence by the Opponent that it dealt in these goods. It was further claimed that the Applicant has marketed, promoted and used the Trade Marks in Australia and worldwide and ‘carries out Australia wide mass media and advertising campaigns in respect of the HELLCAT brand’ in which the high performance on-road vehicles are promoted. Examples of the cars said to be bearing the Trade Marks and being offered for sale in Australia were supplied which showed four ‘2018 Dodge Challenger SRT Hellcat’ vehicles advertised for sale on

19. In the second Maxwell declaration the Applicant is identified as a North American automobile manufacturer which designs, engineers, manufactures and sells passenger vehicles throughout the world under the DODGE, CHRYSLER, JEEP AND RAM brands and performance vehicles under the SRT brands. Following its ‘long-standing protocol of using the names of military aircraft as engine program internal code names’, HELLCAT, the name of a WWII fighter aircraft, was chosen as the Applicant’s ‘internal code name for the 6.2L supercharged HEMI engine program’ and subsequently was chosen for the vehicle containing the engine as ‘an edgy brand name that would appeal to high performance on-road sports motor vehicle consumers and by extension that would encapsulate a wild, untamed and powerful spirit ...’ Several dictionary definitions of ‘hellcat’ were exhibited and it was asserted that the prefix ‘HELL’ had no ‘obvious facility in relation to the goods sold’ and ‘is likely to be seen as qualifying the suffix CAT within [the Applicant’s] Trade Mark.’ It was claimed that consumers are likely to focus on and recall the entire word. Several exhibits were said to show the international promotion, publicity and merchandising activities associated with the Goods. A list of the Trade Marks’ registrations in 13 other countries was also exhibited.

20. Mr Maxwell noted that the Goods are usually sold under the umbrella of the trade marks Dodge, SRT, Challenger and Charger so this ‘ameliorates’ any likelihood of confusion. Noting the Opponent’s list of its domain names, it was claimed this was of little probative value because they show ‘CAT’ as a prefix and not a suffix as it appears in the Trade Marks. In addition, the Mr Maxwell noted that the Opponent did not object to the registration of the Trade Marks in the United States and that there had been no instances of confusion since the Applicant commenced using the Trade Marks in 2014. He claimed that it followed that any confusion was unlikely to occur in Australia if the Trade Marks were registered.

    Preliminary issue – late filed evidence

21. On 18 June 2019 the Opponent filed the declaration of one of its Associates, Jennifer Wrigley. The declaration contained various legislative definitions of ‘motor vehicle’ and images of Caterpillar utility vehicles. The Opponent sought that the material be allowed into evidence under r 21.15(4) of the Trade Mark Regulations 1995 (‘the Regulations’) on the basis of its probative value.

22. The Applicant objected to the inclusion of the material however acknowledged that it also intended to refer to an additional dictionary definition of ‘vehicle’ which it had not previously put in evidence.

23. As the dictionary definitions have some relevance to the grounds of opposition, in the interests of ensuring that all relevant material is before the Registrar, I allowed the admission of the statutory declaration, except for paragraph 4 and the associated exhibit (the utility vehicles), under r 21.15(4).

    Grounds and onus

24. The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.

25. As noted above, the grounds pursued by the Opponent are those under 42(b), 44 and 60 of the Act. The time at which a ground of opposition must be established is the date of filing of the application for registration. In this case that date is 31 October 2017 for 1883749 and 16 April 2015 ( filing date of the parent application) for 18995918 (‘the relevant dates’), also the priority dates for the purposes of ss 44 and 60.

    Consideration and reasons

26. The Opponent’s grounds of opposition are discussed below

    Section 44

27. Section 44 of the Act relevantly provides:

    44. Identical etc. trade marks

    (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

    (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)  the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

    Note 1: For deceptively similar see section 10.

    Note 2:       For similar goods see subsection 14(1).

    Note 3:       For priority date see section 12.

    Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a            trade mark for which there is a request to extend international registration to Australia: see Part 17A.

    …

28. Therefore, in order to establish the section 44 ground of opposition under subsection 44(1), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark:

    ••         issubstantially identicalwith or deceptively similar to at least one of the Opponent’s nominated trade marks, and

    ••         is in respect of similar goods or closely related services (s.44(1)(a)(i)) and

    ••         has a priority date not earlier than that of the other trade marks (s.44(1)(b)).

29. In the SGP, the Opponent stated:

    The opposed marks are substantially identical with or deceptively similar to the following prior Australian registered marks:

    •    •         275050, 188613 and 1429532 for “CAT” (the CAT Word Mark); and

    •    •         502756 and 14295534 for the word “CAT” in a stylised form as shown below (the CAT Stylised Mark),

    Which cover, among other things, trucks, engines, agricultural and horticultural machinery, graders, scarifiers, scrapers, bull-dozers, rippers, plows and tractors used in numerous industries, including logging, farming operations, road building, mining and earth moving, and associated parts, tools attachments, accessories and equipment associated with these products. These goods are the same as or similar to the goods covered by the Applications. The Applicant has no basis for gaining acceptance of the opposed Applications under the provisions of s 44(3) or 44(4) of the Act.

30. The Opponent also relied on these marks, (which I refer to in this context collectively as ‘the identified CAT Marks’), in submissions, noting that they have an earlier priority date than either of the Trade Marks. It was also submitted that the Goods were similar to the class 12 goods covered by the CAT registered marks.

31. The Opponent accepted that the Trade Marks were not substantially identical to the identified CAT Marks but submitted they were deceptively similar.  Specifically, that, having regard to imperfect recollection, the Trade Marks are ‘visually, aurally and conceptually similar’ to the identified CAT Marks, with CAT as the dominant cognitive cue. It was submitted that ‘HELL’ at the front of ‘CAT’ is likely to be regarded by consumers as performing a descriptive role and that Australian consumers ‘are likely to understand the trade mark HELLCAT in this laudatory manner – describing a particularly notable or intense/powerful type of CAT vehicle or engine’.

32. The Applicant noted that the examiner did not question the Trade Marks, submitting that the Goods were different and passed through different trade channels, the CAT Marks being used in respect of ‘large industrial earth moving, mining or manufacturing equipment’ whereas the Applicant’s goods are ‘high performance, high powered sports cars solely for road use, unsuitable for off-road use, not used in earth moving, mining or manufacturing and focused solely at car enthusiasts’. The Applicant submitted that the Goods are used in different circumstances, bought and sold in different circumstances by purchasers of a completely different character and for completely different purposes.

33. The ‘numerous registrations for and incorporating CAT in class 12 on the Register’ were also noted and said to have coexisted with the CAT Marks without any apparent confusion. On the basis that ‘CAT’ is common to the trade, the Applicant contended that it should be discounted for trade mark comparison purposes.

34. The Applicant maintained that because the Trade Marks are used in conjunction with its other well-known house marks, i.e. Dodge and Challenger, there would be no likelihood of deception or confusion. It was also submitted that the average consumer would view the Trade Marks as wholes with the dominant cognitive cue being “HELL” not “CAT”.

35. In the alternative the Applicant contended honest concurrent use and the application of s 44(3)(b) was warranted.

    Consideration

36. The identified CAT Marks each have an earlier priority date than the Trade Marks. Therefore, the requirements in s 44(1)(b) are satisfied.

37. Notwithstanding the Applicant’s submissions regarding the differences between the goods, the markets and purchasers, the appropriate consideration is of the notional use of the Goods. As Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc[1973] HCA 43; (1973) 129 CLR 353 at 362:

    ...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.

38. Therefore, given the breadth of the Goods as designated, they are clearly encompassed by the CAT Marks, in particular, 275050 which covers all goods in class 12. On this basis I am satisfied that the Opponent’s CAT Marks are registered in respect of similar goods and to this extent s 44(1)(a)(ii) is satisfied.

    Substantially identical

39. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

40. As noted above, the Opponent in its submissions relied only on deceptive similarity of the marks. For the sake of completeness, I have considered whether they are substantially identical by reference to the table below.

Trade Marks	Opponent’s CAT Marks
HELLCAT	CAT (275050, 188613 and 1429532)
(502756 and 1429534)

1. Having conducted a side by side comparison, I am not satisfied that a total impression of resemblance emerges between the Trade Mark and any of the relevant Opponent’s marks such that they might be regarded as being substantially identical.

   Deceptive similarity

1. Section 10 of the Act defines deceptive similarity as follows:

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. A determination of ‘deceptive similarity’requires an assessment of the likelihood of deception or confusion arising from a recollection or impression of the respective marks by potential consumers of the goods and/or services. This is to be assessed by reference to the standards of ordinary people “who should not be credited with high perception or habitual caution” and in the context of the business and the way in which the particular class/es of goods are sold or services provided. A possibility of confusion is not sufficient; there must be a real tangible danger of confusion. A likelihood of confusion will exists if there “is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source.”

3. Parker J summed up the High Court’s approach in Cooper Engineering Co. Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 at 538 to the question of whether one trade mark so resembles another as to be likely to deceive, in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 at 777 in the following passage:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case. (citations omitted)

4. In relation to CAT Stylised Marks 502756 and 1429534, I consider the strong difference in their visual appearance is such that there is little likelihood of deception or confusion arising.

5. In relation to the CAT Word Marks however, they are wholly contained in the Trade Marks and there is a greater degree of resemblance in the visual appearance. Nevertheless, taking the marks as wholes, aside from the coincidence of the same three letters at the end of the mark, they are different visually. While the dominant (only) cognitive cue in the Opponent’s mark is “CAT”, there is nothing in the evidence that persuades me it is also dominant in the word HELLCAT. On balance, I am not satisfied that any deceptive similarity arises in the visual comparison of the CAT Word Mark and the Trade Marks. 

6. Aurally they are similar only insofar as they share a syllable. In this context I note the view that the first syllable should generally be given the most weight when comparing marks: London Lubricants (1920) Ltd's Appn, (1925) 42 RPC 264, and that in revisiting the tests for deceptive similarity, Finn J said, in C A Henschke & Co v Rosemount Estates Pty Ltd :

   [P]articular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks... save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.

7. Having regard to the first part or syllable of the Trade Marks, they are different to the CAT Word Marks and there is no evidence of trade or market commonality. In addition, there is nothing in the evidence which indicates any justification for placing emphasis on any particular part of the Trade Marks or the CAT Word Marks for these comparison purposes.

8. Having regard to the “idea” of the marks, HELLCAT is distinctive and not descriptive of the Goods. It has an ordinary dictionary definition, most frequently as “an ill-tempered woman”or similar. The word might also be remembered by some as the name of a famous World War II aircraft. Insofar as there is any idea suggested by it, it has no obvious connection with the word “CAT” which, at its highest, suggests a feline. This distinguishes this opposition from another referred to by the Opponent, that is, Caterpillar Inc v Amco (Vic) Pty Ltd,  In that decision, an application to register “LANDCAT”, the hearing officer was persuaded by the descriptive significance of the element “LAND”. He considered that this gave rise to a reasonable risk of what is sometimes called ‘contextual confusion’, whereby the consumer, noting the relevant and differing elements, none the less infers a common source. The word “HELL” in HELLCAT has no such descriptive function that could similarly give rise to consumer confusion. 

9. I must also consider the nature of the relevant market. The relevant goods, “motor vehicles, engines and their parts” are generally expensive items purchased after careful thought and consideration and/or on the advice or recommendation of persons experienced in the field. Therefore, notwithstanding the Applicant’s misconceived concentration on its actual use of the Goods as opposed to their notional use, I accept the submission that they would be sought or provided to astute consumers and/or on the advice of those with relevant expertise. Given this, I also accept that, in such an environment, consumers would be well aware of relevant brands and associated products and consequently there would be little likelihood of confusion or deception arising in the circumstances.

10. Overall therefore I am not satisfied that the Trade Marks “so nearly” resemble the identified CAT Marks that their use is likely to deceive or cause confusion among relevant consumers.

11. For the above reasons I am not satisfied that the Trade Marks are deceptively similar to the Opponent’s trade marks as listed above within the meaning of s 44(1). The ground of opposition has not been established.

    Section 60

12. Section 60 provides as follows:

    Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)  another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)  Because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

    Note:          For priority date see section 12.

13. Therefore, the Opponent must first establish that the Trade Marks on which it relies had a reputation in Australia at the relevant dates and, secondly, that because of that reputation, the Applicant’s use of the Trade Marks would be likely to deceive or cause confusion.

14. The Opponent claimed in the SGP as follows:

    The Opponent has (and as at the Applicant’s earliest priority date of 16 April 2015 had) an extensive reputation in both the CAT Word Mark and its CAT Stylised Mark (example depicted below) (together, the CAT Marks) in Australia. The Opponent’s reputation in the CAT Marks derives from the extensive and long-standing use of these marks in Australia in relation to trucks, engines, agricultural and horticultural machinery, graders, scarifiers, scrapers, bull-dozers, rippers, plows and tractors used in numerous industries, including logging, farming operations, road building, mining and earth moving, and associated parts, tools, attachments, accessories and equipment associated with these products. Because of the Opponent’s reputation in its CAT Marks, the use of the Applicant’s trade mark HELLCAT in relation to the claimed goods is likely to cause confusion.

15. The CAT Marks specifically relied upon in this context were those identified in Annexure CMG-2 to the Gensler declaration, all of which precede the relevant dates. I have adopted the above collective and individual references to the Opponent’s trade marks in the following comments.

    Reputation

16. In McCormick & Co Inc v McCormick Kenny J considered the meaning of reputation in s 60 as ‘the recognition of the [trade mark] by the public generally’ and observed, in relation to the measurement of reputation as follows:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.

17. The Opponent has relied on the reputation of its ‘family’ of CAT marks and has provided extensive evidence demonstrating substantial marketing and promotional expenditure as well as significant sales revenue. 

18. The evidence also supports the Opponent’s contention that it has established a reputation in the CAT Marks in relation to a wide array of vehicles, including on-road trucks and utility vehicles, engines, machinery and parts (amongst many other goods and services) in Australia. The evidence of the brand’s prominence and its use since 1949 of ‘CAT’ as its ‘public facing brand name’ appearing prominently on its goods, supports the Opponent’s claims as to consumer awareness of its products.

19. The Applicant conceded that ‘in relation to the CAT Trade marks the requisite reputation no doubt exists for the Opponent’  and that ‘the Opponent has an extensive reputation in the CAT Trade Marks internationally and no doubt in Australia … in respect of large/heavy construction and earthmoving equipment..’ for which it ‘is renowned’. The Applicant maintained however that this reputation was not associated with motor vehicles, ‘let alone high performance on road motor vehicles’. As previously noted, the Applicant has mistaken the test in this regard. The necessary consideration is of a notional normal and fair use of the Trade Marks for all the Goods claimed, not just those on which they have been used. The Applicant supplied a definition for “vehicle” as “a thing used for transporting people or goods on land e.g. a car, truck or cart”. The Opponent’s definition was extracted from the Sale of Motor Vehicles Act 1977 (ACT) and provided (in the Dictionary) that the term “motor vehicle” means:

    any motor car, motorcycle, or other vehicle used on land that is propelled wholly or partly by any volatile spirit, steam, gas, oil or electricity, or by any means other than human or animal power, whether or not that vehicle is in working condition or is incomplete but does not include a light rail vehicle or any other vehicle used on a railway or tramway or vehicle included in a class of vehicles that the Minister has, under section 92, declared not to be a motor vehicle for this Act.

20. It also supplied the Motor Vehicles Act 1959 (SA), s 5 of which defines the term “motor vehicle” as: “a vehicle that is built to be propelled by a motor that forms part of the vehicle”.

21. While the strength of the Opponent’s Australian reputation appears to lie in its heavy equipment as associated with mining, road building and other associated industries, it has also provided significant evidence of its “motor vehicles”, such as trucks and utility vehicles and their associated parts and engines, that are sold under or by reference to its CAT Marks. On this basis, I am satisfied that, at the relevant dates, the Opponent had established, among a significant number of Australian consumers concerned with these Goods, the relevant reputation in its CAT Marks for the purposes of s 60(a).

    Likelihood of deception or confusion

22. It is also necessary for the Opponent to establish that, because of its reputation in its CAT Marks, notional use of the Trade Marks on the Goods would be likely to deceive or cause confusion among relevant Australian consumers.

23. The Opponent submitted that because of its substantial reputation in the CAT Marks, the similarity between the Trade Marks and the CAT Marks, the Applicant’s acknowledgement that ‘HELL’ would be seen as qualifying ‘CAT’,  and the overlap in their respective markets, the manner in which the Applicant would be permitted to use the Trade Marks would be likely to cause confusion. The Opponent maintained that it was highly likely that, if the Goods were offered for sale or marketed by reference to ‘HELLCAT’, a substantial number of Australian consumers would mistakenly believe that those goods were manufactured by the Opponent or under its licence or authorisation, or were somehow otherwise associated with it.

24. The Applicant maintained that in the absence of evidence that the Opponent’s reputation related to ‘high-powered high-performance passenger sports cars or motor vehicles…’ or ‘muscle cars’, on balance, there is ‘no or very little likelihood of deception and confusion’. It contended that the overall meaning and aural and visual differentiation between the Trade Marks and the CAT Marks, the complete absence of any nexus or connection between the goods, the different classes of consumers and purchasers, the ‘different wholesale and retail trade channels through which they pass and different functions and characteristics they possess’ meant that the s 60 ground was not made out.

25. The Opponent directed my attention to decisions in overseas jurisdictions in which it had successfully challenged other trade mark and domain name applications containing the ‘CAT’ element and which it contended confirmed the notoriety of the CAT marks. The Applicant also referred me to some overseas decisions. Many of these decisions involve different evidence, law and legal systems and consequently I consider that they have limited relevance to the present opposition. For this reason, I attach little weight to them. Of the Opponent’s Australian decisions, they were decided on different grounds.

26. The meaning of the words ‘likely to deceive or cause confusion’ was discussed by the Federal Court in Coca-Cola Company v All-Fect Distributors Ltd (‘Coca-Cola’):

    ...No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark[1968] HCA 72; (1968) 118 CLR 128 at 139. The distinction between ‘likely to deceive’ and ‘likely to cause confusion’ lies not in some element of culpability in the user to be inferred from the word ‘deceive’, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and causing ‘confusion’ may go no further than perplexing or mixing up the minds of the purchasing public ... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

27. The assessment of the likelihood of deception or confusion is informed by ‘the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties’

28. As noted above, I am satisfied that the Opponent’s evidence establishes its strong Australian reputation in its CAT Marks including, among other things, in respect of motor vehicles, their engines and parts. It also follows from my previous findings, (paragraphs 46-49), that I accept there is a nexus between the Goods and that there is some, limited, similarity (albeit not deceptive) between the marks insofar as they share the common element ‘CAT’. Furthermore, while I consider that there is likely to be some overlap between the types of consumers who will purchase “motor vehicles, engines or parts thereof” and those who will purchase the Opponent’s class 12 goods, the purchase or hire of such vehicles, or the purchase of parts and engines for them, is an expensive process and not one that would be undertaken without significant consideration beforehand. In this context the comments of Jessup J in Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd are apt: 

    What this means in practice is that the notional consumer of average intelligence thinking of making a purchase by reference to goods in association with which the latter mark is used, or intended to be used, is no longer someone who has had no more than some exposure to the “other” mark: he or she is someone who is assumed to have that level of awareness of that mark as is consistent with the content and extent of the reputation of it.

    I would find that the respondent’s mark is strongly embedded in the consciousness of many of those of average intelligence whose circumstances provide the template for the notional consumer of confectionery with whom I must be concerned. It is probably an overstatement to say that everyone has heard of Maltesers, but it is established on the evidence that a great many people have. As noted above, the applicant conceded that the respondent’s mark had a reputation in Australia as required by s 60(a), but I would go further and find that it has a very widespread, solid, reputation in the area of packaged confectionery.

    I do not consider, however, that that circumstance would make it any more likely that the notional consumer of confectionery would have cause to wonder whether products displayed and sold under the applicant’s mark were from a common source with those displayed and sold under the respondent’s mark. Indeed, with a stronger awareness of the respondent’s mark, I consider that such a consumer would be immediately struck by the differences between the two marks, as discussed above. He or she may observe the limited similarities between the marks and, because the subject of the presumptive interest would be confectionery, may assume that the products were of the same nature as those sold under the respondent’s mark, but, giving the matter a moment’s reflection, would readily conclude that those products were not Maltesers. As I say, the strong reputation of the respondent’s mark would, if anything, make that conclusion a more likely one.

29. Similarly, the evidence has established the Opponent’s very “widespread, solid, reputation” in the area of Class 12 goods, including motor vehicles, their engines and parts. In the circumstances of this application however, I do not consider that this reputation gives rise to a likelihood that the notional consumer of the Goods displayed and hired or sold under the Trade Marks would have cause to wonder whether they were associated with the Opponent. On the contrary, I consider the “more likely scenario” is that the strength of the Opponent’s reputation in its CAT Marks will cause the consumer to appreciate the difference between them and the Trade Marks. As noted above, while the consumer might observe the limited similarity between the Trade Marks and the CAT Marks on the same goods, “giving the matter a moment’s reflection”, such a consumer “would readily conclude” that the goods bearing the Trade Marks were not CAT vehicles, engines or parts.  This is especially so in a context in which the Goods are not everyday goods, like confectionary, but are expensive products, purchased with considerable care and attention, generally by or on the advice of informed and/or skilled persons.

1. Therefore, while I accept that the Opponent’s evidence has established it has a reputation in its CAT Marks in Australia at the relevant dates in respect of the relevant goods, I am not satisfied that it has demonstrated a ‘real tangible danger’ that use of the Trade Marks for the Goods is likely to deceive or cause confusion amongst a significant number of relevant Australian consumers.

2. It follows that I am not satisfied the s.60 ground has been established.

   Section 42(b)

3. Section 42 of the Act provides:

   Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a)  the trade mark contains or consists of scandalous matter; or

   (b)  its use would be contrary to law.

4. In relation to s 42(b), referring to the same matters as relied on in its s 60 ground, the Opponent submitted that use of the Trade Marks would be likely to be contrary to Schedule 2 of the Australian Consumer Law (“ACL”). Specifically, that use of the Trade Marks would, or would be likely, to mislead and deceive, or constitute the making of a false or misleading representation, that the goods have a sponsorship or approval they do not have and/or would constitute passing off by passing off the Applicant’s goods as sponsored or authorised by the Opponent.

5. With regard to s 42(b), the Applicant noted the higher threshold and submitted that there was no evidence supporting these grounds.

6. The onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law, on the balance of probabilities.

7. Section 18 (formerly s 52 of the Trade Practices Act 1974 (Cth)) and s 29 of the ACL concern consideration as to whether there have been false representations and/or relevant consumers would be misled or deceived as to the true origin of the Applicant’s goods and services or that they had some connection with the Opponent. The Court noted in Puxu that “conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.” Therefore, given my previous findings as to the lack of the likelihood of deception or confusion arising from use of the Trade Marks, it follows that I am not satisfied, in the absence of any further persuasive evidence in this regard, that the Opponent has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of Schedule 2 of the ACL.

8. Furthermore, specifically in relation to the alleged false representations, I note that there is no evidence before me that the Applicant has directly represented that its goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have. 

9. It follows that I am not satisfied that the Opponent has established that use of the Trade Marks would be contrary to law in the sense that the Applicant would be regarded as having engaged in misleading or deceptive conduct, or as having falsely represented its goods or services, as required by Schedule 2 of the ACL.

10. In relation to passing off, the Opponent made similar claims to those it made in respect of the ACL. It has been determined that, where use of a trade mark does not contravene the relevant provisions of the ACL, neither will it amount topassing off . While I accept that the Opponent has a significant reputation, there is no persuasive evidence before me that indicates or even suggests a relevant misrepresentation by the Applicant. Therefore, the Opponent has not established that use of the Trade Mark would be likely to be contrary to law in the sense that it constitutes passing off.

11. Accordingly, the s 42(b) ground of opposition has not been established.

    Decision

12. Section 55 of the Act relevantly provides:

    Decision

    (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or

    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note: For limitations see section 6.

13. The Opponent has failed to establish any of the grounds of opposition it nominated in its SGP.

14. This Application may accordingly proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

    Costs

15. Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under section 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    M. Cooper

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    11 October 2019