Caterpillar Inc v FCA US LLC [2019] ATMO 148

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Caterpillar Inc (“Caterpillar”) opposed registration of trade mark application Nos. 1883749 and 1895918 for the marks HELLCAT (“Opposed Mark”) in class 12 for motor vehicle and engine goods in the name of FCA US LLC (“FCA”).

Caterpillar claimed that the Opposed Marks were confusingly similar to its prior registered marks which consisted of the word “CAT” in various classes including class 12 (“Cat Marks”). The Registrar rejected Caterpillar’s opposition, primarily on the basis that the Opposed Marks were sufficiently different to the Cat Marks.

Caterpillar’s first contention was that the Opposed Marks were deceptively similar to its prior CAT Marks. Caterpillar contended that the Opposed Marks were merely a combination of the descriptive or laudatory prefix “HELL” and the distinctive word “CAT”, and that that was how the marks would be regarded by Australian consumers, i.e. a “particularly notable or intense/powerful type of CAT vehicle or engine”.

The Registrar found that when considered as a whole, the Opposed Marks were not deceptively similar to the CAT Marks. The Registrar noted that the marks only shared a syllable and that the first syllable should generally be given the most weight when comparing marks. The Registrar also considered that the marks differed conceptually because there was no connection between the word “HELL” and the word “CAT” that would result in contextual confusion amongst consumers.

Caterpillar’s second contention was that FCA’s use of the Opposed Marks would be likely to deceive or cause confusion because of the reputation it had acquired in its CAT Marks for vehicles, engines and related goods.

The Registrar found that Caterpillar did have the requisite level of reputation in the CAT Marks for the relevant goods in Australia at the relevant dates. However, the Registrar also found that because of the strength of that reputation, consumers would be able to distinguish between the marks, especially given the expensive nature of such goods which would be purchased with considerable care and attention. As such, the Registrar found that there was no real or tangible danger of deception or confusion likely to arise. FCA’s marks were therefore allowed to proceed to registration.

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