7 min read

Caterpillar have successfully appealed a decision by the Registrar to dismiss their opposition to registration of Puma’s procat mark (as shown below) for goods in Classes 18 and 25.

O’Bryan J held that, having regard to fair and normal use of the procat mark outside Australia, Puma’s mark was deceptively similar to Caterpillar’s earlier registrations for both CAT (word) and associated CAT logo mark (as shown below) for goods in Classes 18 and 25.  Further, his Honour was also satisfied that due to the extent of Caterpillar’s reputation in Australia for the CAT and CAT Logo marks for goods in Classes 18 and 25, Puma’s use of the procat mark for such goods in Australia would be likely to cause confusion.

Background

In October 2016, Puma sought to register the mark procat in Australia for goods in Classes 18 and 25 including clothing, footwear, bags and other accessories.  Caterpillar subsequently opposed registration of this mark under ss42(b), 44 and 60 before the Registrar, but failed to establish any of the opposition grounds.

With respect to the s44 ground, Caterpillar argued the procat mark was too similar to a number of earlier registrations for both CAT and CAT Logo that are registered for goods in Classes 18 and 25.  However, the Registrar’s delegate concluded that due to the visual, phonetic and conceptual differences between these marks, Puma’s procat mark was not deceptively similar to either the CAT or CAT Logo mark.

With respect to the s60 ground, Caterpillar argued that due to the extent of their use and reputation in both the CAT and CAT Logo marks, Puma’s use of the procat mark for the claimed goods was likely to deceive or cause confusion.  While Puma conceded that Caterpillar’s CAT Logo mark had acquired a reputation in Australia at the priority date, the Registrar agreed with Puma’s submission that Caterpillar’s use of the CAT word mark was minimal and insufficient to establish that it had acquired the requisite reputation at the priority date. 

Further, the Registrar agreed with Puma’s submission that the reputation acquired by the CAT Logo mark would serve to reduce the likelihood of deception or confusion.  On this basis, the Registrar was not satisfied that because of the reputation acquired by the CAT logo, Puma’s use of the procat mark would be likely to deceive or cause confusion.

With respect to the s42(b) ground, Caterpillar argued that due to the extent of its reputation, Puma’s use of the procat mark would be contrary to the Australian Consumer Law.  However, given the Registrar’s conclusions under the s60 ground above, Caterpillar also failed to establish this ground of opposition.

Federal Court Appeal

Caterpillar appealed the Registrar’s decision to the Federal Court of Australia, seeking to rely on the same three grounds of opposition.  As such an appeal involves a de novo hearing, Caterpillar were able to provide additional evidence in support of these opposition grounds.

Section 44

Caterpillar again sought to rely on the use and registration of its earlier registrations for both CAT and CAT Logo for goods in Classes 18 and 25.  In response, Puma again submitted there are sufficient visual, phonetic and conceptual differences between procat and Caterpillar’s CAT and CAT Logo marks, such that these marks should not be regarded as deceptively similar.

While Puma are yet to commence using the procat mark in Australia, Caterpillar submitted evidence as to how Puma have used the procat mark in the United States and Canada.  Caterpillar submitted that such evidence was relevant to illustrate what would be fair and normal use of the mark by Puma, which is relevant to the assessment of deceptive similarity.   Caterpillar’s evidence showed that Puma used the procat mark in lower case with the letters “pro” and “cat” being rendered in different shades or colours as illustrated below.  Further, Puma’s online marketing of the relevant footwear referred to the brand as “ProCat” (using the upper case “P” and “C”).

O’Bryan J accepted Caterpillar’s submission that such use falls within the parameters of fair and normal use of the mark. His Honour also took the view that Puma’s use of the procat mark in Australia (in the same manner as used in the USA and Canada), would constitute a use with alterations which do not substantially affect the identity of the trade mark.

O’Bryan J concluded that the fact Puma applied to register the procat mark as a fancy mark (in lower case with sans-serif font) does not limit the trade mark rights granted upon registration to use with a single colour or shade of lettering or indeed to use without any letters being capitalised. 

His Honour did not place any material weight on the fact that Puma’s evidence suggested that it was common for at least some traders to use multiple trade marks or branding elements on and in connection with footwear. The evidence on this issue was not conclusive and, in any event, in assuming normal and fair use of the mark applied for, the use or possible use of other marks is ignored.  

On this basis, his Honour concluded that Puma’s procat mark was deceptively similar to Caterpillar’s CAT and CAT Logo marks on the combined effect of the following:

  • the word “cat” comprises the whole of the CAT word mark and one of the two elements of the CAT device mark. The word “cat” constitutes half the letters of the PROCAT mark and one of its two syllables;
  • an ordinary consumer is likely to read, comprehend and pronounce the PROCAT mark as a combination of two words, “pro” and “cat”;
  • the relevant trade context concerns a wide range of apparel, footwear, bags and accessories sold in retail stores and online in the workwear and lifestyle market segments. The evidence showed, and it is a matter of common experience, that goods of the type under consideration are common everyday purchases that are modestly priced and sold through overlapping trade channels.

As such, O’Bryan J concluded that “there is a real and tangible risk that a significant number of consumers, who were familiar with but had an imperfect recollection of the CAT mark, would be confused as to whether goods labelled with the PROCAT mark were connected in the course of trade with CAT branded goods, as being a “professional” or high performance or otherwise special line of CAT goods. There is a real and not remote risk that the use of the word “pro” in conjunction with the word “cat” in the PROCAT mark, when used on apparel, footwear, bags and accessories, would convey to many consumers that goods branded with the PROCAT mark are professional or high performance goods which are made or endorsed by, or otherwise associated with, Caterpillar. As such, consumers would be caused to wonder whether there is commercial connection between PROCAT branded goods and Caterpillar”.

Section 60

Caterpillar also sought to establish that, due to the extent of its reputation in the CAT and CAT Logo marks in Australia for goods such as clothing, footwear, bags and other accessories, Puma’s use of the procat mark for such goods was likely to cause confusion.  In this regard, Caterpillar filed a number of affidavits by various brand managers, licencees and distributors who were responsible for the manufacture and distribution of goods bearing the CAT and CAT Logo marks.

Based on their lengthy use of the CAT and CAT Logo marks in Australia, O’Bryan J was satisfied that Caterpillar had a substantial and valuable reputation in Australia in each of the CAT marks in relation to apparel, footwear, bags and accessories.  While his Honour accepted that Caterpillar’s evidence shows far more frequent use of the CAT Logo mark (compared to the CAT word mark), he did not consider there to be any material difference in the extent of reputation associated with the CAT word and CAT Logo marks.

In contrast to the Registrar, his Honour did not accept Puma’s submission that the CAT marks had such a strong reputation in Australia (and Australian consumers had such familiarity with the CAT marks), that confusion with the PROCAT mark would be unlikely. While the evidence showed the CAT marks had a strong reputation in Australia at the priority date in respect of apparel, footwear, bags and accessories, his Honour took the view that the CAT marks could not be described as famous or very famous (in contrast to the findings made in respect of the brand “Maltesers”, the subject of the decisions in Mars1 and Delfi2).

On this basis, O’Bryan J concluded that “there is a real and tangible risk that a significant number of consumers, who were familiar with the reputation of the CAT marks but had an imperfect recollection of those marks, would be confused as to whether goods labelled with the procat mark were connected in the course of trade with CAT branded goods, as being a “professional” or high performance or otherwise special line of CAT goods”.

Section 42(b)

Caterpillar also sought to oppose registration under s42(b), namely that Puma’s use of the procat mark would contravene ss18 and 29(1)(g) and (h) of the Australian Consumer Law.  As Caterpillar sought to rely on the same evidence and contentions advanced under the s60 (reputation) ground, O’Bryan held that Caterpillar’s reliance on s42(b) was superfluous.  In this regard, his Honour remarked that reliance on s42(b) (by reference to the Australian Consumer law) only has utility where the Appellant seeks to rely on additional evidence and contentions that are not relevant to the s60 analysis.  In the absence of such additional evidence or contentions, O’Bryan decided that it was unnecessary to consider this ground of opposition further.

Puma have now filed an appeal in relation to this matter.

1 – Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; 81 IPR 354

2 – Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065; 115 IPR 82

Authored by Nathan Sinclair and Sean McManis

2 min read

To celebrate International Women in Engineering day (23 June 2020), Shelston IP would like to highlight our outstanding female patent attorneys and patent engineers qualified in this field.

With 30 years of experience in the patent profession, Caroline Bommer is the female engineer that we aspire to be. She provides a wonderful example of the possibilities for our young female attorneys and is appreciated by all of her clients, particularly in her effective communication and her ability to understand their business strategies. Caroline’s mechanical engineering expertise is also extensive, including practical knowledge acquired prior to joining the patent profession in the industries of building, transport, aerospace, and defence. She has a keen interest in green technologies, with many years of personal involvement in solar car racing. Ask her to take you for a spin!

Tam Huynh works in the fields of electrical engineering and information technology patents. Growing up, Tam would find any excuse to integrate electronics into her arts and crafts projects. This included raiding her Dad’s electronics kit to make LED greeting cards for her family. She went on to study Computer Engineering at University and undertook a project exploring the use of solar power technologies and their application with mobile devices. Tam now assists with the ongoing management of patent portfolios in a range of fields, including electrical power systems, information and software systems, mining and automation, and medical devices. Tam also holds a Bachelor of Commerce degree and her accounting background adds additional depth to her handling of financial-system related inventions.

With childhood memories of jumping off a red billy cart and yelling “Newton’s third law”, Allira Hudson-Gofers brings her enjoyment of physics and engineering into her role as the head of Shelston IP’s Engineering and ICT Patents Group. Allira studied both mechatronics and biomedical engineering at University, going on to develop particular expertise in research, product development, regulatory affairs, and intellectual property in the medical technology space. She now applies this expertise, together with her recent MBA studies, to help her clients protect and commercialise their innovations.  

Connie Land had her interest in the human body and medical devices sparked in high school, which lead her to pursue a degree in Biomedical Engineering. Connie started her career with hands-on experience maintaining, repairing, and programming medical devices.  Last year, after discovering that the role of a patent attorney was a career option for engineering graduates, she hung up her tools and joined Shelston IP as a Patent Engineer. Connie now works with medical devices in a different capacity and uses her passion and knowledge of medical devices and technology to help her clients navigate the path to obtaining patent and design protection. She is currently studying a Masters in Intellectual Property and is looking forward to becoming a registered patent attorney in Australia and New Zealand. 

Authored by Allira Hudson-Gofers, Caroline Bommer, Tam Huynh and Connie Land

Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138

Summary

  • Applicants should include the best method(s) of performing the invention known at the time of filing a patent application, withholding better or superior embodiments or features can result in invalidity of the granted patent.
  • Novelty destroying prior use does not always need to be corroborated by contemporaneous documentary evidence.
  • Experts need to be carefully selected as an unsuitable expert will be less persuasive on inventive step issues.
  • Claims are invalid for inutility where they include embodiments that are not useful.

Background

This is a decision of the Full Federal Court of Australia (FFC) on an appeal from a judgement at first instance on the validity of Australian Patent Number 744870 (the Patent) in the name of Sandvik Intellectual Property AB (Sandvik) and its alleged infringement by Quarry Mining & Construction Equipment Pty Ltd (Quarry).  The Patent and claims were directed to an extension drilling system for drilling holes to insert cable bolts in underground mines.

At first instance, it was held that claims 1 to 4, 6 and 7 of the Patent were not infringed and were invalid on the grounds of failing to describe a best method of performing the invention, lack of novelty, lack of inventive step and inutility.  Sandvik appealed on all grounds.

The appeal decision

In respect of best method, the claims of the Patent did not define a water seal.  However, evidence indicated that a water seal was a “real issue that needed to be overcome” for the invention to work.  The Patent had only described a horizontal type seal member, whereas at the time of filing of the Patent, Sandvik had developed a superior seal member having upper and lower sections.

Sandvik submitted that the best method requirement should be assessed against the claimed invention or having regard to the “promise” of the invention relative to the problem to be solved.  The FFC disagreed with both submissions, holding that the best method relates to the invention as described in the Patent.  On this basis, the embodiments of the invention as described (not as claimed) omitted the superior seal member.  Thus, the Patent was invalid for not meeting the best method requirement.

On novelty, three witnesses for Quarry provided evidence of invalidating prior use based on their personal recollection of a system 25 years before the priority date.  No supporting evidence was provided, such as drawings, photographs, samples or documents.  The FFC held that the absence of supporting evidence did not render the prior use evidence unreliable and referred to the trial judge’s opinion that the witnesses were credible under examination and cross-examination.  Thus, the claims of the Patent in suit were also invalid for lack of novelty.

Sandvik was successful on the inventive step ground.  The FFC held that the trial judge gave too much weight to one of Quarry’s experts, where that expert was shown not to be aware of information the parties had agreed was common general knowledge in the art and had mischaracterised other information as being common general knowledge when it in fact was not.

Dependent claim 4 recited that an extension rod could have a hexagonal or round cross-section that is driven by a chuck or an adaptor.  However, evidence showed that if the extension rod had a round cross-section, it could not be driven either way to make the invention work.  Accordingly, the trial judge held it lacked utility.  On appeal, Sandvik sought to rely on a person skilled in the art would construe the claim using the principle of purposive construction in order to exclude this non-working embodiment.  The FFC held that the proposed purposive construction could not overcome the plain and unambiguous meaning of the words in the claim.  Thus, claim 4 was invalid for inutility.

Conclusion

This case provides a warning to applicants to ensure that the description of embodiments in a patent specification is updated prior to filing, especially when the application is claiming priority to an earlier patent application.  Sandvik’s failure to include the superior sealing member rendered the Patent invalid even the sealing member was not claimed.

The case also demonstrates the importance of witnesses and experts.  A credible witness can enable prior use evidence to invalidate a patent even where it is not corroborated by other contemporaneous documentary evidence. Similarly, an expert shown not to be a suitable person skilled in the art will undermine any inventive step arguments relying on that expert’s evidence.

The finding of inutility of claim 4 demonstrates that Applicants should be careful in drafting claims that include within their scope embodiments that do not work; otherwise the entire claim will be rendered invalid.

Authored by Andrew Lowe

In a significant decision, the Full Federal Court has overturned an earlier single judge Federal Court decision regarding the date from which infringement of an innovation patent can occur. One of the unusual implications of the earlier decision was that a divisional innovation patent could be infringed before it was published, or even filed. The Full Court has now determined that infringement cannot occur until grant of the innovation patent.

Key points

  • An innovation patent is a short-term patent available under Australian patent law. It has a lower patentability threshold, as there is no requirement for an inventive step. Rather the invention need only involve an “innovative step” – that it varies from the prior art in a way which makes a substantial contribution to the working of the invention. Other usual requirements for patentability such as novelty, support, clarity etc. still apply.
  • An innovation patent is granted without substantive examination. However to assert it against an infringer it must be certified, which requires examination. An innovation patent runs for 8 years from the “date of the patent”. The date of the patent is the filing date, other than in the case of a divisional application where the date of the patent is the filing date of the parent, grandparent or earlier generation patent.
  • Following the latest Coretell decision, an innovation patent cannot be infringed before its date of grant and so no damages are available for this period. This is in contrast to a standard patent, which can be infringed from the date of publication.

Background

Innovation patents are commonly sought in Australia in conjunction with a standard patent application, often a national phase PCT filing. This is achieved by entering PCT national phase and filing a divisional innovation patent application within 3 months of the date of advertised acceptance of the standard patent. Innovation patents can generally be granted and certified within 6 months, providing a useful weapon against infringers in the short term while the standard application is still under examination and awaits the opposition period.

In Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3) [2012] FCA 1019 (Britax), the Federal Court considered alleged infringement of a number of divisional innovation patents filed in these circumstances. The question arose as to the date from which infringement of the innovation patents could occur. The alleged infringer argued that liability for infringement could not arise before certification of an innovation patent. However the judge concluded that infringement could run from the “date of the patent” (being the date of filing of the parent application).

This decision substantially increased the value of innovation patents, particularly when filed as a divisional application, as they could be infringed before the divisional application was even filed, let alone its claims published. In Britax, this resulted in potential infringement from June 2005, notwithstanding that the latest innovation patents had only been filed as recently as 2009.

Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54 (Coretell)

The issue has now been revisited by the Full Federal Court in Coretell which has overruled the decision in Britax. Giving the sole judgment, with which two other Federal Court judges agreed, Justice Burley outlined in detail his reasoning.

The key respect in which he differed from Britax was in finding that whilst the “date of the patent” (the filing date or in the case of a divisional application, the filing date of the parent/grandparent etc) determines the term of a patent, infringement is determined by reference to the date of grant. In reaching this conclusion, Justice Burley referred to the infringement provisions of the Patents Act 1990 (Cth), noting that they refer to infringement of “a patent”, inferring a granted patent. Further, section 57(1), which provides that an applicant for a standard patent has the same rights from the date of publication as if a patent had been granted, does not ‘move forward’ the date from which infringement would otherwise run from the filing date, but rather ‘moves backwards’ the relevant date from the date of grant. As section 57 does not apply to innovation patents (and nor is there any equivalent provision for innovation patents), infringement can only occur from grant. Justice Burley also noted the central significance of the claims in determining infringement. He confirmed that there is no infringement of an invention as such, there can only be infringement of the claims. In that context, publication of a specification forms a necessary part of allowing rivals to understand the scope of the monopoly, and it is out of keeping with this scheme to allow infringement before the claims are published.

Conclusion

In its recent Inquiry Report on Intellectual Property Arrangements, the Productivity Commission commented on the fact that divisional innovation patents could be infringed before they were made public, in context of its recommendation to abolish the innovation patent system entirely. The Coretell decision alleviates at least that concern with respect to the innovation patent system, providing a common sense interpretation in line with the framework of the Patents Act generally, and in particular, the provisions relevant to infringement. It also provides certainty to businesses, which can at least be assured that they will not liable for patent infringement damages in respect of a patent which has not yet been filed.