Oppositions by Puma SE to registration of trade mark application numbers 2421424 SDR & Puma Device and 2421425 Puma Device (classes 9, 18, 24, 25, 28 & 35) - both in the name of Sunday Red LLC
[2025] ATMO 197
•19 September 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Puma SE to registration of trade mark application numbers 2421424 SDR & Puma Device and 2421425 Puma Device (classes 9, 18, 24, 25, 28 & 35) - both in the name of Sunday Red LLC
Delegate:
Tracey Berger
Representation:
Opponent: Peter Wallis, KC of Counsel, instructed by Griffith Hack Lawyers
Applicant: Stephen Rebikoff, SC of Counsel, instructed by Davies Collison Cave
Decision:
2025 ATMO 197
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44 and 60 considered – no grounds of opposition established – trade marks to proceed to registration
Background
1. This is a decision on the oppositions by Puma SE (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade marks detailed below filed in the name of Sunday Red LLC[2] (‘Applicant’):
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
[2] The Applicant was formerly named Taylormade Lifestyle Ventures LLC but changed its name on 12 February 2024.
Number
Trade Mark
Priority Date
Filing Date
Specification
2421424
(’24 Mark’)
19/7/23
18/1/24
Class 9: Eyewear, eyeglasses, sunglasses, eyeglass frames, sunglass frames, cell phone cases
Class 18: Luggage, purses, wallets, bags for sports, handbags, umbrellas
Class 24: Towels, golf towels
Class 25: Clothing, namely shirts, shorts, pants, jackets, sweatshirts, sweatpants, joggers, skirts, dresses, hoodies, sports jackets, polos, golf shirts, golf pants, footwear, headwear
Class 28: Sports equipment, namely, golf clubs, golf club grips, golf balls, golf gloves, golf tees, golf club head covers, golf bags, and golf club shafts
Class 35: Retail store services, online retail store services selling apparel, headwear, footwear, accessories, bags, golf equipment, golf accessories
(Applicant’s Goods and Services’)
2421425
(’25 Mark’)
19/7/23
18/1/24
2. Applications 2421424 and 2421425 are referred to together as the ‘Applications’ and the 24 Mark and 25 Mark are collectively referred to as the ‘Trade Marks’.
3. Following the advertisement of acceptance of the Applications for possible registration, the Opponent filed Notices of Intention to Oppose on 6 March 2024, followed by Statements of Grounds and Particulars (‘SGP’)[3] on 5 April 2024. The Applicant filed Notices of Intention to Defend on 6 May 2024.
[3] Whilst separate SGPs were filed, the contents are identical and hence I will refer to these Statements as the ‘SGP’.
4. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support (‘EIS’) on 7 August 2024 followed by the Applicants’ evidence in answer (‘EIA’) filed on 13 November 2024. The Opponent filed its evidence in reply on 17 January 2025.
5. Once the time for filing evidence had ended, the parties had an opportunity to request a hearing. Both parties requested an oral hearing and filed a written summary of their submissions prior the hearing. I heard this matter as a delegate of the Registrar of Trade Marks on 4 August 2025. At the hearing, Peter Wallis KC of counsel instructed by Emma Mitchell and Tara Koh of Griffith Hack Lawyers appeared for the Opponent. Stephen Rebikoff SC of counsel instructed by Adam Sears and Jessica Murphy of Davies Collison Cave appeared for the Applicant (observed by Sami Havens of the Applicant and Kristin Strojan, US counsel for the Applicant). I make this decision based on the aforementioned materials and written and oral submissions of the parties.
Grounds and onus
6. In its SGP, the Opponent nominated grounds of opposition under ss 44, 58A and 60. At the hearing, the Opponent only pressed the grounds of opposition under ss 44 and 60.
7. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[4] The standard of proof is the ordinary civil standard on the balance of probabilities.[5] The rights of the parties are to be determined at 19 July 2023 being the priority date of the Applications.
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[5] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
8. The following evidence was filed:
Declarant and Position
Date
Exhibits/Annexures
EIS
Neil Narriman, Global Head of Intellectual Property for the Opponent (‘Narriman’)
5 August 2024
NN-1 to NN-19B Including Confidential Exhibit NN-16)
EIA
Sami Havens, Senior Legal Counsel- Trademark & Brand Protection Of Taylor Made Golf Company Inc, parent company of the Applicant (‘Havens’)
12 November 2024
SH-1 to SH-26
Adam Sears, Principal of Davies Collison Cave, attorneys for the Applicant (‘Sears’)
12 November 2024
AS-1
EIR
Emma Kate Mitchell, Principal of Griffith Hack Lawyers Pty Ltd, attorneys for the Opponent (‘Mitchell’)
17 January 2025
EKM-1 to EKM-3
Opponent’s evidence
9. Narriman outlines the Opponent’s history in designing, manufacturing, and selling sports shoes since the late 1940s. The Opponent quickly expanded globally into sports apparel, casual and fashion footwear, and accessories. Narriman states that the Opponent has sold footwear in Australia since 1957, bags and accessories since 1966, and apparel since 1968, later adding lifestyle products. Extracts from show the product range available in Australia.
10. According to Narriman, the Opponent employs over 19,000 people globally and has offices, subsidiaries, licensees and/or a distribution network in over 80 countries. For many years, the Opponent has been one of the top five sportswear brands in the world by revenue.
11. In about 2010, the Opponent started distributing a range of sportswear and sport accessory products for golf. Extracts from the Opponent’s website illustrating the Opponent’s range of golf sportswear, shoes and accessories are exhibited to Narriman.
12. Narriman attests that the Opponent promotes its goods by various means including:
· collaborations with athletes, celebrities, influencers, and other well-known brands, including for example, the golfer Arnold Palmer, Rihanna, Playstation, Vogue, Swarovski and Porsche;
· sponsorship of various AFL, Rugby, Australian and International football, Formula 1 and motorsport teams;
· sponsorship of individual athletes including the golfers, Rickie Fowler, Andrew Johnston and Lexi Thompson as well as other famous athletes such as Usain Bolt (Olympic sprinter) and Neymar (football player). Golfers sponsored by the Opponent are known as ‘Puma Tour Staff’ and printouts from the Opponent’s Website show these athletes;
· licensing arrangements including for PUMA watches by Fossil, eyewear by Kering Eyewear, cosmetics by Maybelline and hairbrushes by Tangle Teaser.
13. Exhibited to Narriman are extracts from the Opponent’s Annual Reports for 2019-2023 (inclusive) describing its product categories[6] and showing global and regional sales figures for the Opponent’s products.
[6] These details were erroneously omitted from Narriman but were provided in Exhibit EKM-3 of Mitchell.
14. The Opponent’s original logo was a cat leaping through the letter D, which stood for Dassler, the name of the brand’s founder. In 1957, the word PUMA was added beneath the original logo. In 1968, the Opponent adopted a new leaping cat logo and introduced its No. 1 Logo which are shown below. Since 1968, the Opponent has also used the marks PUMA and another version of the leaping cat logo also shown below. Collectively, these marks are referred to as the ‘Puma Marks’. A list of the Opponent’s registrations for the Puma Marks in over 88 countries is exhibited to Narriman.
Leaping Cat Logo
Other Leaping Cat Mark
No. 1 Logo
15. The leaping cat logo (being the two versions on the left above and hereinafter referred to as the ‘Leaping Cat Logo’) has been used in Australia in relation to footwear, clothing and accessories since 1968. In Australia, the Opponent’s products are sold through 19 retail stores operated by the Opponent’s distributor, online and through wholesale customers such as Rebel Sport, The Iconic, ASOS, Footlocker, Hype DC and Platypus Shoes.
16. Narriman claims that the Opponent has acquired a significant reputation in the Leaping Cat Logo and notes that this mark has been formally recognised as a mark of ‘high-renown’ in Brazil. Narriman also details various successful oppositions to overseas trade mark applications.
17. Narriman explains the similarities the Opponent perceives between its Leaping Cat Logo and the Trade Marks and attests that the Trade Marks are used in relation to golf apparel and accessories for Tiger Woods’ brand. Extracts from the Applicant’s website illustrating the Applicant’s Goods are provided with photographs of Tiger Woodes wearing clothing bearing the Trade Marks. In particular, Narriman provides the comparison below of the Opponent’s products alongside equivalent goods of the Applicant.
18. According to Narriman, use of the Trade Marks has caused confusion and Narriman attaches an article and copies of social media posts which comment on the similarity of the Trade Marks to the Leaping Cat Logo.
19. Mitchell confirms that none of the oppositions between the parties detailed in Narriman had been determined at the time of her evidence and also notes that the Puma Marks were cited against applications for the Trade Marks in Mexico. Subsequently, the Leaping Cat Logo was declared a famous mark in Mexico.
Applicant’s evidence
20. Havens declares that the Applicant is a wholly owned subsidiary of Taylor Made Golf Company Inc (‘Taylor Made’), an American sports equipment company founded in 1979 which is focused on the manufacture and sale of golf equipment and accessories.
21. Havens claims that Taylor Made sponsors numerous golfers including Tiger Woods, Rory McIlroy and Nelly Korda. Tiger Woods is one of the most successful professional golfers in history, having won 15 major golf championships (second only to Jack Nicklaus) and various other PGA and Tour tournaments. In January 2017, Tiger Woods (‘TW’) and Taylor Made entered into an agreement whereby TW would use Taylor Made clubs. Taylor Made and TW also collaborated to develop a set of golf irons to TW’s standards. Subsequently in early 2024, TW and Taylor Made launched a new premium athletic apparel brand named SUN DAY RED with TW as the face of the brand.
22. The SUN DAY RED mark was chosen because TW is well-known for wearing a red shirt on the final day (traditionally Sunday) of professional golf tournaments and in particular, wore a red shirt on the final day of each of his 15 major wins. Havens attests that the 25 Mark consists of ‘a highly stylised, forward moving tiger’ referencing TW’s career, and features 15 tiger stripes, one for each of the major golf tournaments won by TW.
23. The Trade Marks are used or intended to be used in relation to luxury athletic goods and services, ‘largely targeted to golf consumers’, including apparel, footwear, headwear, golf gloves, towels, sock, umbrellas, golf ball markets, eyewear, luggage, wallets, purses, bags and online retail stores. The Applicant’s Goods and Services are available online at (‘Applicant’s Website’) and at a physical store at Pebble Beach Resort, California.
24. The Applicant’s Goods and Services are promoted by various means including the following, examples of which are exhibited to Havens:
· the Applicant’s Website which has had over 16,000 active users in Australia since it launched in February 2024 according to Google Analytics;
· social media accounts of both the Applicant and Taylor Made, which have thousands of followers;
· in digital media such as email marketing; and
· at various events, ‘press junkets’ and televised interviews of TW.
25. In addition, the Applicant’s Goods and Services have received significant exposure in online websites and publications that are accessible in Australia. Examples of these articles are provided.
26. Havens declares that the Trade Marks have been registered or accepted for registration, without citations of the Opponent’s marks, in Brazil, Canada, Switzerland, China, Europe, United Kingdom, Hong Kong, Indonesia, Ireland, Norway, New Zealand, Peru, Philippines, Portugal, Russia, Saudi Arabia, Singapore, Turkey, Taiwan, United States of America and Vietnam. Further, Havens attests that she is not aware of any instances of confusion between the Trade Marks and any mark of the Opponent.
27. Sears attests to the results of a search conducted of the Australian Register of Trade Marks (‘Register’) in classes 9, 18, 24, 25, 28 and 35 which incorporate an image of either a wildcat, tiger, cat or lion. I note that most of the marks disclosed by this search reveal no similarity to either the Leaping Cat Logo or the Trade Marks. The most relevant entries are shown in Annexure B of this decision.
Preliminary Matter
28. When filing its written submissions, the Opponent filed a further declaration of Neil Narriman made on 18 July 2025 (‘Narriman 2’). Narriman 2 was filed in response to the Applicant’s EIR by way of an update on the status of corresponding oppositions between the parties in other jurisdictions and to note that the Opponent’s mark has achieved well known status in Brazil, Costa Rica, India, Mexico and Türkiye.
29. The Opponent argues that I should take into account Narriman 2 under reg 21.19 as it clarifies Havens by providing an update of the status of the global applications for the Trade Marks which would otherwise be misleading. The Applicant contends that the probative value of Narriman 2 falls well short of a ‘compelling case’[7] justifying consideration of the late evidence.
[7] Sato Holdings Corporation v West Affum Holdings Corporation [2025] ATMO 73, [9].
30. In my view, Narriman 2 is of little probative value. All of the proceedings are pending or on appeal. None of the jurisdictions which have been initially determined are countries with similar laws to Australia. In the present case, the relevant questions are the similarities of the marks under the Act and whether the Opponent’s marks had a reputation in Australia at the Relevant Date such that use of the Trade Marks would cause confusion or deception. I do not believe that the outcome of these foreign proceedings provides assistance in answering these questions. Accordingly, I have not had regard to Narriman 2 in reaching my decision.
Discussion
Section 44
31. Section 44 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.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
32. To succeed on this ground of opposition, the Opponent must identify a trade mark(s) in the name of a person other than the Applicant which:
i.has a priority date which is earlier than the priority date of the Trade Marks;
ii.is in respect of goods or services which are either similar and/or closely related to the Applicant’s Goods and Services; and
iii.is substantially identical with, or deceptively similar to, the Trade Marks.
33. In its SGP, the Opponent nominates the following Australian registrations as the basis for this ground of opposition (‘Opponent’s Marks’):[8]
[8] The full specifications are shown in Annexure A.
TM Number
Trade Mark
Priority Date
Specification
302229
16/11/1976
Class 18: Articles made of leather or imitations thereof not included in other classes; trunks and travelling bags and carrying bags and cases, especially for sports equipment and sportswear but not including any made from or resembling puma skin
2001124
29/11/2018
Class 9: including Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking [supervision], life-saving and teaching apparatus and instruments; apparatus for the recording, transmission or reproduction of sound and images; and a broad range of software and electronic/smart products
Class 14: including jewellery, ornaments and watches
302230
16/11/1976
Class 25: Clothing and footwear for sports, athletic and leisure purposes, including training suits, leisure suits, training sweaters, jerseys, shorts and hoses, all-weather suits, tennis- and ski- sportswear, gloves in this class, caps and headbands, bathing drawers and bath-costumes; boots, shoes and slippers, but not including any made from or resembling puma skin.
302231
16/11/1976
Class 28: Games and playthings; gymnastic, sporting and exercise machines and devices, including sports-balls.
34. Each of the above marks is in the name of a person other than the Applicant and has an earlier priority date. Further, the Applicant accepts that the Opponent’s Marks are registered in respect of goods that overlap with those claimed by the Applicant in classes 9, 18, 25 and 28 but notes there is no overlap with the Applicant’s class 24 goods and class 35 services. For the reasons set out below, it is not necessary to consider whether these goods and services are similar or closely related to the Opponent’s registered goods. Accordingly, I turn to the question of whether the Opponent’s Marks are substantially identical or deceptively similar to the Trade Marks.
35. The Opponent did not argue that the marks in question are substantially identical and for completeness, I note that there are obvious differences between the Opponent’s Marks and the Trade Marks. The Opponent’s Marks are either an outline or solid representation of a puma or other wild cat whereas the tiger devices of the Trade Marks are comprised of a stylised representation of a tiger comprised of a number of lines with the legs not connected to the body. Also, the Applicant’s tiger device is orientated and positioned differently, appearing more horizontal. In addition, the 25 Mark includes the letters S, D, R. I am satisfied that neither of the Trade Marks is substantially identical to any of the Opponent’s Marks.
36. Section 10 provides that a trade mark is deceptively similar to another trade mark if it ‘so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[9]
[9] Ibid [13].
37. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[10] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[11] as follows:
[10] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[11] [2023] FCA 482, [55] (Jackman J).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[12]
[12] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[13]
[13] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[14]
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[15]
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[16]
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[17]
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[18]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [19]
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[20]
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[21]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[22] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[23]
[14] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[15] Ibid.
[16] Ibid.
[17] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
[18] Shell (n 9), 415.
[19] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[20] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[21] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).
[22] Australian Woollen Mills Ltd (n 14).
[23] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 14), 657.
38. The Opponent argues that the only essential element of both the Opponent’s and Trade Marks is an image of a ‘bounding’ cat, which are jumping sideways with their front paws close to the cat’s head. Whist the Opponent acknowledges that that there are differences in the details of the cats, such as the direction and angle in which the cat is moving, and the stripes in the Trade Marks, these are not details that an ordinary consumer with an imperfect recollection will remember. The Opponent argues that the present case is similar to that in The Polo/Lauren Company LP v Megan Philip and Rowena Sylvester[24] (‘Polo’) and Hot Tuna IP Ltd v Select GmbH Untemehmen fur Zeitarbeit[25] (‘Hot Tuna’). In both these cases, the relevant hearing officer found that consumers would be unlikely to recall the precise details of each device mark in question such as ‘the orientation of the horses, the angle of the uplifted mallets or the particular poises of the riders in Polo and in the case of Hot Tuna, the significant differences in the mouth, fins and tail and the colour of the fish’.[26]
[24] [2012] ATMO 45 (Delegate I. Thompson)
[25] [2014] ATMO 49 (Delegate D Lyons).
[26] Ibid [28].
39. The Applicant essentially contends that the only similarity between the marks is that both are depictions of wildcats and otherwise, the marks are entirely different. The Applicant argues that the Opponent’s Marks are a ‘naturalistic depiction of the puma being presented in outline or silhouette, with a distinctive leftward leaping pose where the tail of the puma rises sharply to form a “Y” shape with the upright head of the animal and its outstretched hind legs.’ The Applicant says that none of these features are present in the Trade Marks which comprise a highly stylised image of a tiger, which is running rather than leaping, with ‘distinctive bumps or lines representing stripes that run down from the tail, body and neck of the animal onto its front and hind legs’. Even with an imperfect recollection, the Applicant says that the impression created by the Trade Marks is an abstract representation of a tiger with distinctive open stripes that ‘hang’ from the outline of the tail, body, head and legs. Further, the Applicant argues that Polo and Hot Tuna are not analogous to the present comparison but rather the situation is more similar to that in Red Bull GmbH v Reschke Pty Ltd[27]where the delegate found that the respective representations of a bull were not deceptively similar despite their similar pose and same orientation.
[27] [2004] ATMO 17 (Delegate C. Murray).
40. Each case turns on its own facts and this is particularly so in the comparison of device marks. In my view, the common element of both the Applicant’s and Opponent’s Marks is an image of a moving wildcat. However, commonality of idea is not determinative of deceptive similarity.[28] I believe that the ‘hanging’ stripes in the tigers of the Trade Marks are a memorable feature which is significantly different from the outline or solid form of the Opponent’s Marks. The ‘hanging’ stripes create the clear impression of a tiger which is not the case with the Opponent’s Marks. The Applicant’s animal device is obviously a different kind of wildcat to the Opponent’s Marks. I think it is improbable that consumers would not remember the Trade Marks as ‘tiger’ marks whereas the recollection of the Opponent’s Marks will be a puma, or possibly another type of wildcat such as a jaguar, but not a tiger. The other differences such as the position and orientation of the respective cats are less memorable, but in their totality, the impression created by the two sets of trade marks is distinguishable, even allowing for the imperfect recollection of consumers. Moreover, the 25 Mark is further removed from the Opponent’s Marks by virtue of the letters contained in the mark.
[28] Sports Café Ltd v Registrar of Trade Marks [1998] FCA 1614 (Wilcox, Heerey and Lindgren JJ).
41. I am not satisfied that the Trade Marks are deceptively similar to the Opponent’s Marks and hence the s 44 ground of opposition is unsuccessful.
Section 60
42. Section 60 provides:
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.
43. To establish a ground of opposition under s 60, the onus is on the Opponent to demonstrate that:
· as at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons; and
· because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.
Reputation
44. In McCormick & Co Inc v McCormick (‘McCormick’), Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is ‘the recognition of the [trade mark] by the public generally’.[29] The existence and extent of a trade mark’s reputation must be established as a matter of fact by the Opponent.[30]
[29] [2000] FCA 1335, [81] (‘McCormick’).
[30] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).
45. In Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[31]
[31] [2019] FCA 923, [83].
46. Further, Kenny J stated in McCormick that:
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 … 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.[32]
[32] McCormick (n 29), [86].
47. A trade mark’s reputation must be amongst a ‘significant or substantial’ number of Australian consumers, having regard to the relevant market[33] and the nature of the goods or services in question.[34] The likelihood of deception or confusion between trade marks requires consideration of the notional use of the opposed trade mark in a normal and fair manner in respect of the goods the subject of the trade mark application.[35] In the present case, the relevant market comprises a significant proportion of the Australian population being consumers of apparel, footwear and related goods.
[33] ConAgra (n 30), [15]; Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[34] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
[35] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).
48. The Opponent argues that at the Relevant Date, its Leaping Cat Logo had acquired a significant reputation in Australia as a result of its longstanding and extensive use in Australia and overseas for over 50 years. The Opponent’s sales figures are extremely impressive and even though separate figures for Australia are not provided, it is possible to infer from the regional sales that the revenue generated from the Opponent’s Goods and Services in Australia are substantial. The PUMA brand has been recognized as one of the top five sportswear brands in the world for many years. The Opponent produces a range of products under the PUMA Marks including footwear, apparel and accessories for sports including cricket, football, running, motorsports, golf and sailing. It also licenses use of the PUMA Marks for lifestyle products such as watches, eyewear, cosmetics and brushes. To promote its Puma Marks, the Opponent collaborates with and sponsors famous athletes including golfers known as ‘Puma Tour Staff’.
49. The Applicant accepts that the Opponent has a reputation for clothing and footwear but argues that the evidence about the extent of that reputation in Australia is general and suggests that the reputation is tied to the word mark PUMA. Further, the Applicant disputes that there is a reputation in the Leaping Cat Logo for sporting goods, sporting accessories or retail services for such goods just because a reputation may exist for clothing.[36] Moreover, the Applicant disagrees that there is a reputation in the Leaping Cat Logo for golf-related clothing and footwear. In the Applicant’s submission, the Opponent’s golf products are generally sold by reference to other marks.
[36] Sportscraft Consolidated Pty Ltd v General Sportscraft Co Ltd (1993) 27 IPR 74, 77
50. I consider that the Opponent’s evidence demonstrates use of the Leaping Cat Logo separately from the mark PUMA for a range of goods including shoes including golf shoes and soccer boots, activewear such as sports bras and leggings, track pants, sports jerseys, hoodies, jackets, soccer balls, shorts, tank tops, t-shirts, golf vests, longs sleeve polos, hats and caps, socks. It also appears in the banner on each pages of the Opponent’s Website as shown below:
51. I am satisfied that the Leaping Cat Mark had acquired a reputation in Australia at the Relevant Date for clothing and footwear and retailing of clothing and footwear as a result of its use for many decades with significant sales as well as direct and indirect advertising such as sponsorships of major sports teams or well-known athletes. However, other than soccer balls, there is no evidence of use of the Leaping Cat Mark for any other sports equipment. Accordingly, whilst I am of the opinion that there is a strong reputation in the Leaping Cat Logo for apparel and footwear and associated retail services, I do not consider that the reputation extends to sporting equipment or the other sorts of goods claimed by the Applicant in classes 9, 18 and 24.
Likelihood of deception or confusion
52. Reputation alone is insufficient to succeed under s 60. Pursuant to s 60(b), the Opponent is required to establish a causal connection between the reputation in the Opponent’s mark and the likelihood that use of the Trade Marks will deceive or cause confusion.
53. The test for deception or confusion turns on whether use of the trade mark would result in a reasonable number of people being caused to wonder whether the Applicant’s goods are from the same trade source as another trade mark.[37] This determination is informed by a number of relevant factors, including, the strength of the reputation of the other trade mark, the similarity between the Applicant’s Goods and Services and the goods associated with the reputation of the other trade mark, and the degree of similarity between the relevant trade marks.[38]
[37] Woolworths Ltd (n21) [50].
[38] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).
54. The Opponent submits that confusion is likely due to the similarity of the marks and overlap in the goods and services particularly given that the Opponent has sold golfing products for 14 years under the Leaping Cat Logo and other marks as well as sponsored a large number of professional golfers. Hence, the Applicant’s Goods and Services are directed to the same class of consumers. Further, the side by side comparison of the marks used on the respective products shown at [17] demonstrates that confusion is likely given the marks are often used in a similar way and a small size on products. The evidence of confusion detailed in Narriman establishes a likelihood of confusion. The Opponent also refers to its practice of collaborating with famous athletes and brand extension activities which will cause consumers to wonder if the Trade Marks are connected to the Opponent or a variation of the Leaping Cat Logo.
55. The Applicant contends that there is no real likelihood of deception or confusion, given the differences in the marks and the differences in many of the Applicant’s Goods as compared to footwear and clothing. Also, for clothing and footwear, the Applicant says the differences in the marks will be even more noted by consumers as ‘fashion items such as sportswear and footwear are high-involvement products that are typically subjected to a careful visual examination before purchase.[39] Accordingly, the Applicant says it is irrelevant that the respective marks may appear relatively small on products particularly given ‘the evidence that multiple traders use depictions of large cats of various kinds in connection with the sale of such products’.
[39] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505
56. In support of the Applicant’s contention that a number of traders use images of large cats for clothing and footwear, the Applicant relies on Sears and an article in Narriman.[40] As I noted above, many of the registered marks for wildcats are not remotely similar to the Opponent’s Marks or the Trade Marks. Moreover, Sears does not provide any evidence of use of these marks. The article is dated after the Relevant Date and refers only to social media posts commenting on the Trade Marks, the Opponent’s Marks and one other mark being that of Slazenger (depicted in Annexure B). Reference to one other trader using a leaping or bounding cat mark is not evidence that wildcat marks are commonly used for clothing and footwear.
[40] Exhibit NN-19A.
57. In relation to the Opponent’s evidence of confusion, the Opponent relies on the article discussed above and social media posts. The article does not refer to any similarities between the Trade Marks and the Leaping Cat Logo (or the Slazenger mark referenced) but simply states that there have been social media posts commenting on the similarities between the marks of the Applicant, Opponent and Slazenger. In relation to the social media posts, a handful of people have commented that they consider the Trade Marks to be similar to the Leaping Cat Logo. These comments include:
58. In my view, the above comments do not indicate a likelihood of confusion. Whilst there are comments from consumers that the respective marks are similar, none indicate that they were actually confused. Furthermore, it appears that a number of people hold a different view with one consumer calling the Applicant’s 24 Mark ‘unique and almost clever’. I do not find this evidence persuasive that use of the Trade Marks will cause confusion or deception.
59. Although there is overlap in the parties’ respective goods and services, which are likely to be provided through overlapping trade channels to the same class of consumers, I am not satisfied that there deception or confusion is likely to result from use of the Trade Marks. In my opinion, the Trade Marks are sufficiently different from the Opponent’s Marks that consumers are unlikely to assume any association or relationship. Whilst the Opponent has used its Leaping Cat logo in the form of an outline, solid representation and within a circle, it has not changed the basic shape of the cat itself in over 50 years. Accordingly, I am not persuaded that consumers will consider the Trade Marks to be a variation, collaboration or brand extension of the Leaping Cat Logo. Further, whilst the relevant goods and associated retail services are everyday products, I believe that consumers choose such products with a degree of care. The Opponent’s selective choice of three products for the purposes of comparing the marks in small size does not indicate that confusion or deception is likely as the differences in the marks are still apparent. In my view, the differences between the Trade Marks and the Leaping Cat Logo are too notable in the context of the relevant goods and services for there to exist a likelihood of deception or confusion despite the reputation in the Leaping Cat Logo.
60. The Opponent has not established a ground of opposition under s 60.
Decision
61. The Opponent has not established any of the grounds of opposition and accordingly, I direct that the trade marks which are the subject of applications 2421424 and 2421425 may proceed to registration not less than one month from the date of this decision.
62. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the Applications should otherwise be in accordance with the Court’s order or discretion.
63. Both parties sought an award of costs. The usual rule is that costs follow the event and therefore, I award costs against the Opponent in respect of application 2421424 under s 221 in accordance with the amounts specified in Schedule 8 of the Regulations. In respect of application 2421425, I award costs against the Opponent to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[41]
[41] [2001] ATMO 78 (Hearing Officer Williams).
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
19 September 2025
ANNEXURE A - Opponent’s Marks
| TM Number | Trade Mark | Priority Date | Specification |
| 302229 | 16/11/1976 | Class 18: Articles made of leather or imitations thereof not included in other classes; trunks and travelling bags and carrying bags and cases, especially for sports equipment and sportswear but not including any made from or resembling puma skin | |
| 2001124 | 29/11/2018 | Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking [supervision], life-saving and teaching apparatus and instruments; apparatus for the recording, transmission or reproduction of sound and images; audio amplifiers; audio speakers; electronic docking stations for use with electronic book readers, tablet computers, MP3 players, MP4 players, cellular phones, smart phones and smart watches; camcorders; computer software; mobile telephone software; downloadable software in the nature of a mobile applications, for processing images, graphics, audio, video, numbers and text as well as for sending and receiving of electronic messages, graphics, images, audio and audio visual content; downloadable software in the nature of a mobile applications for creating, recording, managing, editing, organizing, uploading, downloading, accessing, viewing, posting, displaying, tagging, modifying, transferring, linking, storage and use of data and information; computer software for personal information management, and data synchronization software; sensors for determining distance, acceleration, timing, and pressure for communicating sport, fitness, and activity data to electronic devices; pedometers; receivers used for capturing fitness data from a sensor, namely, time, distance, pace, and calories burned; electronic monitoring devices incorporating microprocessors, digital display, and accelerometers, for detecting, storing, reporting, monitoring, uploading and downloading sport, fitness training, and activity data to the internet, and communication with gaming consoles and personal computers, regarding time, pace, speed, steps taken, athletic skill, calories burned, heart and body rate, global positioning, direction, distance, altitude, navigational and weather information; computer and cellular phone software for fitness and weight management; computer and cellular phone software for use with video game consoles; cases, straps, wrist and arm bands for electronic monitoring devices; electronic monitoring devices incorporating indicators that light up and change color based on wearer's cumulative activity level; telephones; video telephones; cellular phones; smart phones; cables for cellular phones; straps and ribbons for cellular phones; holders adapted for cellular phones; headphones; stereo headphones; in-ear headphones; stereo boxes; loudspeakers; connecting apparatus and chargers for mobile and handheld mobile digital devices; parts and fittings for cellular phones included in this class; covers, cases and bags adapted for cellular phones, tablet computers and laptops; covers for cellular phones made of fabric or other textile materials; batteries; rechargeable batteries; chargers; USB chargers; hands frees kits and snap on cases adapted for cellular phones and tablet computers; audio docking stations; screen protective films adapted for cellular phones and table computers and portable speakers; MP3 players; Personal Digital Assistants (PDAs); portable computers; portable media players; smart watches; tablet computers; electronic notebooks; wearable computers; wearable smart phones; wearable watches; wearable telecommunication apparatus; wearable communications devices in the form of wristwatches; downloadable mobile applications for use with wearable computer devices; wearable digital electronic communication devices; wearable computer peripherals; peripherals for mobile devices; wearable peripherals for mobile devices; sunglasses; eyeglasses; spectacle lenses and frames; spectacle cases; contact lenses; spectacle chains; clothing for protection against accidents, including footwear; clothing especially made for rescue purposes face-protection shields, protective eyewear and masks; helmets, including protective helmets for motorists and cyclists as well as protective helmets for sports; special containers (cases, sheaths, housings), adapted to the apparatus and instruments included in this class; signaling whistles; respiratory devices for divers; photo and photo-reporter bags included in this class; mouse pads; watches that communicate data to personal digital assistants, smart phones, table PCs, PDAs, and personal computers through internet websites and other computer and electronic communication networks; watchbands that communicate data to personal digital assistants, smart phones, table PCs, PDAs, and personal computers through internet websites and other computer and electronic communication networks; bracelets that communicate data to personal digital assistants, smart phones, table PCs, PDAs, and personal computers through internet websites and other computer and electronic communication networks; none of the above mentioned is related to vehicles, mobility, travel and transportation. Class 14: Precious metals and their alloys; jewellery, ornaments, precious stones; mechanic or electric watches for horological purposes, also as day counters, stopwatches, divers' watches; clocks; parts and fittings for watches; wristwatches; electronic clocks and watches; bracelets [jewelry]; watchbands; control clocks [master clocks]; their parts and fittings, namely cases and gift containers for watches, stands for clocks, chains for watches and watch straps; cases for watches [presentation]; none of the above mentioned is related to vehicles, mobility, travel and transportation. | |
| 302230 | 16/11/1976 | Class 25: Clothing and footwear for sports, athletic and leisure purposes, including training suits, leisure suits, training sweaters, jerseys, shorts and hoses, all-weather suits, tennis- and ski- sportswear, gloves in this class, caps and headbands, bathing drawers and bath-costumes; boots, shoes and slippers, but not including any made from or resembling puma skin. | |
| 302231 | 16/11/1976 | Class 28: Games and playthings; gymnastic, sporting and exercise machines and devices, including sports-balls. |
ANNEXURE B
| Number | Trade Mark | Owner | Class |
| 436890 512722 | Slazengers Australia Limited | 25 28 | |
| 736655 | Slazengers Australia Limited | 18, 25 & 28 | |
| 1009531 1023128 1227570 | Le Tigre 360 Global LLC | 25 3, 9, 18, 34 & 26 35 | |
| 1172011 | KONE Malamine | 3, 9, 14, 16, 18, 25, 28, 35, 36, 38 & 41 | |
| 1986230 2337783 | Jaguar Land Rover Limited | 9 35 | |
| 2290706 | Trang Mai | 25 | |
| 2447288 | Do Young KIM | 12, 25, 35 |
0
25
0