Caterpillar's opposition claimed that the opposed mark was confusingly similar to a number of its prior registered marks which consisted of the word CAT in classes 16, 18, 25, 28 and 35, including registered trade mark No. 318732 CAT ("Cat marks"). The Registrar rejected Caterpillar's opposition, primarily on the basis that the PROCAT mark was sufficiently different to the Cat marks, and was therefore unlikely to cause deception or confusion.
Caterpillar's primary contention was that the PROCAT mark was deceptively similar to its prior CAT marks. Caterpillar contended that the PROCAT mark was simply a combination of the descriptive prefix "pro" and the distinctive word "cat".
The Registrar found that when taken as a whole, the PROCAT mark was not deceptively similar to the CAT marks. However, the Registrar also indicated that if the descriptive word "PRO" had been the second word, the result may have been different, i.e. CAT PRO.
Caterpillar also contended that PUMA's use of the PROCAT mark was likely to cause deception or confusion because of the reputation it had acquired in its CAT marks.
The Registrar found that Caterpillar's use of its CAT marks in Australia was minimal and insufficient to show that it had such a reputation in those marks that deception or confusion was likely to arise. Further, the Registrar noted that any reputation acquired in the CAT marks would serve to reduce, rather than increase, the likelihood of consumer confusion.
The Registrar also found that use of the PROCAT mark would not be contrary to law.
The PROCAT mark was therefore allowed to proceed to registration. The decision has been appealed to the Federal Court.
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