The Claws Come Out – A Distinctive Design

Caterpillar Inc. v Sayvest Pty Ltd [2020] ATMO 16 (5 February 2020)

 

Caterpillar Inc. (Opponent), the well-known US construction equipment manufacturer, was partially successful in its oppositions to registration of two trade marks (Trade Marks) IRONCAT (Word Mark) and IRONCAT TYRES logo shown below by Sayvest Pty Ltd (Applicant) for various tyres in class 12 and related services in classes 35 and 37 (Sayvest Goods and Services):

Composite Mark

The Opponent relied principally on grounds of opposition under ss44 and 60 of the Trade Marks Act 1995 (the Act). The opposition to the Word Mark was successful under ss 44 and 60, but it failed in respect of the Composite Mark.

Section 44

Section 44 involves a comparison of the Opponent’s trade marks with the Applicant’s Trade Marks, as well as a comparison of the respective parties goods and services.

The Opponent is the registered proprietor of over 150 Australian trade marks, but relied on four registrations for the word CAT covering goods and services in classes 12, 35 and 37 (Opponent’s Marks). The Applicant conceded that a number of the goods and services of the Opponent’s Marks are similar to the Sayvest Goods and Services, and the parties agreed that the issue to be determined was whether the marks are too close.

The Opponent did not contend that CAT is substantially identical with either of the Trade Marks and the delegate determined that the marks are not substantially identical.

The delegate then considered whether the marks are deceptively similar. A trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that its use is likely to deceive or cause confusion. Confusion is a lower bar than deception. It is enough to show that consumers would be caused to wonder whether the goods or services offered by the Applicant come from the Opponent.

In considering the impression conveyed by the marks, the word marks IRONCAT and CAT marks were found to be conceptually similar as both give the impression of a cat. The word IRON was considered to be mildly descriptive in the context of heavy machinery that commonly has iron and its alloys as a major element . Thus, the element CAT was found to be the more distinctive part of the trade mark IRONCAT and the delegate found the Word Mark was deceptively similar to the Opponent’s Marks.

With respect to the Composite Mark, while the emphasis in the comparison of the marks was still on the word CAT, the idea of the Composite Mark is that of a big cat, namely a tiger. This coupled with the word IRONCAT communicated an overall different impression of a powerful creature. Further, the design features are likely to be retained by the consumer as a distinctive feature of the Composite Mark. On that basis, the delegate found that the Composite Mark was not deceptively similar to the Opponent’s Marks.

Section 60

Section 60 is concerned with whether the Applicant’s use of the Trade Marks, in respect of the Sayvest Goods and Services, is likely to cause confusion as a consequence of the Opponent’s reputation in its trade marks

The Opponent’s evidence in support almost exclusively concerned the extent of reputation it enjoyed in its trade marks.

The Applicant argued that the Opponent’s reputation was a “compounded form of reputation” which involves the use of three brand elements in close proximity – a consistent yellow get up, the CATERPILLAR house mark and the CAT mark. However, the delegate was satisfied that the Opponent’s CAT word mark had acquired a significant Australian reputation in relation to heavy vehicles and machinery and other vehicles, and that it was a small step beyond to recognise that it extends to the servicing and spare parts of those goods, including solid rubber tyres.

Adopting the same analysis for confusion as under the s 44 ground, the delegate found that use of the IRONCAT word mark would be likely to cause confusion. However, the differences between CAT and the Composite Mark, featuring a distinctive orange tiger, reduced the risk of confusion and the s60 ground failed for the Composite Mark.

Conclusion

The Word Mark was refused but the Composite Mark was permitted to proceed to registration.

While the word mark in a composite mark is commonly the key feature, the present case demonstrates that a design element can change the impression conveyed, so that the composite mark conveys a different impression from that conveyed by the word alone.