Summary

Keywords

Intellectual property — Trademarks — Appeal of Registrar of Trademarks’ decision — Confusion — Coined terms — Design marks — Dominant feature — Whether right to appeal decision of the Registrar of Trademarks under Trademarks Act, R.S.C. 1985, c. T-13, s. 56, and ability to adduce additional evidence in such appeals permit case-splitting and de novo review — When assessing whether likelihood of confusion exists, including with respect to coined terms and design marks, how dominant or most striking or unique feature of trademark should be considered while still viewing trademark as a whole from perspective of hurried consumer.

Summary

Case summaries are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch). Please note that summaries are not provided to the Judges of the Court. They are placed on the Court file and website for information purposes only.

Puma SE filed application number 1558723 for the trademark “procat” based upon proposed use in association with footwear (athletic, sports and casual shoes and boots) and headgear (hats and caps). It was advertised for opposition purposes in the Trademarks Journal. Caterpillar Inc. filed a statement of opposition. It owns several registrations and applications for trademarks consisting of or incorporating the term “CAT”, including application No. 1,588,026 for “CAT”, and registration no. TMA382,234 for “CAT and triangle design”, both associated with work, sport and casual clothing (caps), headwear (stocking caps, ear muffs and head bands), and footwear (work boots and athletic shoes). Caterpillar raised four grounds of opposition under the Trademarks Act, R.S.C. 1985, c. T-13, ss. 2, 12.1(d) and 16(3)(a) and (c), alleging that the marks did not distinguish Puma’s goods from Caterpillar’s and because “procat” was confusing with Caterpillar’s marks, which had been used in Canada before the date the application for “procat” was filed. In support of the grounds of opposition, Caterpillar relied on its licensees’ use of its marks in Canada to show use of the marks and the extent to which they had become known.

The Trademarks Opposition Board rejected all of Caterpillar’s grounds of opposition and found that there was no likelihood of confusion between the marks within the meaning of s. 6(5) of the Act. The registration of the mark “procat” was permitted. The Federal Court allowed Caterpillar’s appeal under s. 56(1), set aside the Board’s decision and refused Puma’s application for “procat” under s. 38(12). The Federal Court of Appeal dismissed Puma’s appeal.

Lower Court Rulings