TRADE MARKS – application for leave to appeal from a single judge of the Court pursuant to s 195(2) of the Trade Marks Act 1995 (Cth) – whether primary judge erred in finding grounds of opposition pursuant to ss 44 and 60 of the Trade Marks Act 1995 (Cth) were made out – whether trade mark deceptively similar to prior registered mark – whether trade mark likely to deceive or cause confusion – where the primary judge’s judgment affected by error – whether proposed grounds of appeal have merit – application for leave dismissed
Legislation:
Trade Marks Act 1995 (Cth) ss 6, 7, 17, 42(b), 44, 52, 57, 60, 195(2)
1.The applicant’s application for leave to appeal pursuant to s 195(2) of the Trade Marks Act 1995 (Cth) filed on 10 September 2021 is dismissed.
2.The applicant is to pay the respondent’s costs assessed in a lump sum pursuant to r 40.02(b) of the Federal Court Rules 2011 (Cth).
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
THE COURT:
Grounds of appeal
[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.
[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.
[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.
Consideration
[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.
[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.
Continue reading Puma SE v Caterpillar Inc
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Details
AGLC
Puma SE v Caterpillar Inc [2022] FCAFC 153
Case
[2022] FCAFC 153
Decision Date
CaseChat Overview and Summary
Puma SE has applied to the Federal Court for leave to appeal against a decision of a single judge, which found that Puma's application to register a trade mark should be refused. Caterpillar Inc opposed Puma's application under the Trade Marks Act 1995 (Cth), on the grounds that Puma's trade mark was deceptively similar to Caterpillar's prior registered trade marks and that it would cause confusion. The single judge found in favour of Caterpillar and Puma now seeks leave to appeal against this decision. The court must decide whether Puma's application for leave to appeal has sufficient merit to warrant the grant of leave.
The primary legal issue before the court is whether the primary judge erred in finding that the grounds of opposition under sections 44 and 60 of the Trade Marks Act 1995 (Cth) were made out. Specifically, Puma argues that the primary judge erred in finding that the PROCAT mark was deceptively similar to the CAT marks and that use of the PROCAT mark would be likely to deceive or cause confusion in light of the reputation of the CAT marks. Puma contends that the decision of the primary judge is attended by sufficient doubt to warrant reconsideration by the Full Court and that substantial injustice will result if leave to appeal is refused.
The court found that Puma had not demonstrated that the primary judge's decision was attended by sufficient doubt to warrant reconsideration by the Full Court. The court noted that the primary judge had given detailed reasons for his decision and had considered all relevant factors. The court also found that Puma had not demonstrated that substantial injustice would result if leave to appeal was refused. The court noted that Puma had registered and used the PROCAT mark in other jurisdictions, where it co-existed with the CAT marks, and that Puma had not demonstrated that the use of the PROCAT mark in Australia would cause confusion or deception. The court dismissed Puma's application for leave to appeal.
The court ordered that Puma's application for leave to appeal be dismissed and that Puma pay the respondent's costs.
Orders
Orders of the court
1. The applicant’s application for leave to appeal pursuant to s 195(2) of the Trade Marks Act 1995 (Cth) filed on 10 September 2021 is dismissed.
2. The applicant is to pay the respondent’s costs assessed in a lump sum pursuant to r 40.02(b) of the Federal Court Rules 2011 (Cth).
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
A delegate of the registrar published reasons on 28 June 2019, dismissing each ground of opposition and determined that the application of Puma may proceed to registration: Caterpillar Inc v Puma SE [2019] ATMO 99 (delegate’s decision). In summary, the delegate reasoned on the s 44 grounds of opposition, that the PROCAT mark and the CAT word marks “when taken as a whole” did not “so clearly resemble each other that the use of [the PROCAT mark] is likely to deceive or cause confusion” in either category. In relation to the s 60 grounds, the delegate was not satisfied that as at the priority date the CAT word mark and the CAT logo had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that because of that reputation, use of the PROCAT mark would be likely to deceive or cause confusion. What is now before this Court is an application for leave to appeal from a decision of a judge of this Court who, on 27 August 2021, allowed the appeal by Caterpillar from the delegate’s decision: Caterpillar Inc v Puma SE [2021] FCA 1014; 162 IPR 430 (PJ). The primary judge upheld Caterpillar’s grounds of opposition in relation to ss 44 and 60 of the Act and found it unnecessary to consider the s 42(b) ground. He allowed the appeal, set aside the decision of the delegate, determined that the trade mark application be refused and ordered that Puma pay the costs of the proceeding in this Court and the costs of the opposition proceeding before the delegate. Leave to appeal is required pursuant to s 195(2) of the Act. The application for leave and the appeal were heard together. The applicant contends that the primary judge erred by finding that (1) the PROCAT mark was deceptively similar to the CAT marks and (2) use of the PROCAT mark would be likely to deceive or cause confusion in light of the reputation of the CAT marks. For the reasons that follow, we refuse leave to appeal and dismiss the application.APPLICATION FOR LEAVE On 10 September 2021, Puma filed an application for leave to appeal the orders of the primary judge as required by s 195(2) of the Act. It relies on the following grounds, as supported by an unsworn affidavit of Emma Kate Mitchell dated 10 September 2021:1. In all the circumstances of the case, the decision of the primary judge is attended by sufficient doubt to warrant it being reconsidered by the Full Court.2. Substantial injustice will result if leave to appeal is refused supposing the decision to be wrong. Puma submits that in considering the question of leave, rigid rules should not be formulated and each application is to be dealt with in accordance with its own special circumstances, relying on Pfizer Corp v Commissioner of Patents (2006) 155 FCR 578; [2006] FCAFC 190; at [7]- [12], Emmett, Allsop and Greenwood JJ. In its written submissions, Puma identified four factors which it says favour a grant of leave:Firstly, prior to the decision of the primary judge, Puma’s trade mark application had been accepted for registration following examination under Part 4 of the TM Act (during which s 44 would have been considered), with a delegate of the Registrar subsequently dismissing Caterpillar’s opposition during which both s 44 and s 60 were considered. The primary judge was the first decision-maker to consider that the procat mark ought not be registered. Secondly, if the decision of the primary judge is final, Puma will be denied the protection afforded to a registered trade mark under s TM Act. Thirdly, Puma has registered, and uses, the procat mark in other jurisdictions, such as the United States and Canada, where that mark co-exists with the CAT marks. Fourthly, for the reasons set out below, the decision of the primary judge is attended by sufficient doubt as to warrant the grant of leave.(Original emphasis, footnotes omitted.)