Puma failed to show that its mark is distinctive and known in Canada: court
The Federal Court of Appeal has refused the trademark application of German athletic footwear manufacturer Puma SE.
In Puma SE v. Caterpillar Inc., 2023 FCA 4, Puma challenged the Federal Court’s refusal of its trademark application for the “procat” mark for use in association with footwear and headgear. Construction equipment manufacturer Caterpillar opposed Puma’s application before the Trademarks Opposition Board. Caterpillar argued that Puma’s procat was confusing with its design mark registered in 1991 and the word mark “CAT,” for which Caterpillar applied for registration in 2012.
The board rejected all grounds of opposition raised by Caterpillar and found that Puma had demonstrated, on a balance of probabilities, that there was no likelihood of confusion between the marks. Caterpillar appealed to the federal court, which found that the factors of inherent distinctiveness and extent known, length of time in use, nature of the goods, nature of the trade, and the degree of the resemblance between the goods weighed in favour of Caterpillar. As a result, the federal court refused Puma’s trademark application for proact. Puma appealed the federal court’s decision.
Inherent distinctiveness and extent known
Puma argued that the federal court judge made an error in finding that the word “pro” did not make procat distinct, such that consumers would associate goods using “pro” with Puma and not Caterpillar. Puma asserted that its mark and Caterpillar’s are so distinctive that it is impossible for a consumer who was not “devoid of intelligence” to be confused about the source goods bearing those marks.
The federal court judge considered the dictionary definitions of “pro” and found that it was a suggestive or laudatory prefix, which did little to make procat distinctive. The appeal court did not find any error in this conclusion. The appeal court said just because Puma already enjoyed some of the laudatory benefits of having a connection with professional athletes, this did not mean that “pro” as a prefix is not laudatory or that “cat” is not the more striking element of procat.
Further, the court said it was open to the judge to find that Caterpillar’s CAT and design mark were highly distinctive of Caterpillar’s goods and had earned the protection provided for by the Trademarks Act through use. Ultimately the appeal court found that the judge’s decision was predominantly based on the lack of evidence that proact had ever been used in Canada to the extent that it would have acquired distinctiveness or become known.
The court also pointed out that Puma failed to show that procat is distinctive and known to the extent that a casual consumer in a hurry with an imperfect recollection would associate the mark with Puma.
Degree of resemblance
The federal court judge found that Puma and Caterpillar’s marks bore significant resemblance as the dominant feature of both marks was “cat.” Puma argued the judge failed to consider each of the marks at issue wholistically and focused instead on the word “cat” in both marks. Puma also asserted that the federal court’s decision would result in Caterpillar’s monopoly over the word “cat.”
The appeal court said that marks consisting of commonly used words deserve a smaller ambit of protection, and some risk of confusion is acceptable to allow for fair competition in the marketplace. However, this generally requires some evidence that the word is so commonly used in the trade that a consumer will be sensitive to smaller differences in the mark. The court found that Puma failed to meet this condition.
“Simply put, the Judge did not grant Caterpillar a monopoly over the word ‘cat.’ She simply found that procat resembled Caterpillar’s mark,” the federal court of appeal said in its reasons for judgment.
The appeal court ultimately found no palpable and overriding error in the federal court judge’s decision to refuse Puma’s application for registration.
