When it comes to the registration of trademarks the similarity between signs can be a delicate moment for every applicant even for the biggest and most famous companies in the world.
This was the case with the German well-known sportswear manufacturer Puma which applied for trademark PROCAT in Canada for footwear and headgear.
Against this application, an opposition was filed by Caterpillar based on earlier marks CAT for the same goods.
Initially, the Trademarks Opposition Board dismissed the opposition not finding enough similarity between the signs.
In the appeal, however, the Federal Court annulled this decision with the argument that PROCAT and CAT are similar signs for identical goods.
Puma claimed that the PRO prefix in their mark was sufficient in order to create a distinction between the signs in the consumer’s mind.
The Court didn’t credit this argument finding PRO meaning related to something suggestive or laudatory for the characteristic of the products. This word is used by many companies to stress the better quality or other characteristics of their goods or services.
From that perspective, PRO has weak distinctiveness and CAT has the dominant importance for the understanding of the mark’s meaning.
Puma failed to prove that PROCAT has its own distinctiveness as a whole and that this sign was related by consumers to their particular products.
Additionally, there was no evidence that CAT is a common word or such one with a low distinctive character for the above-mentioned goods in order for small differences between the signs to be sufficient for a dissimilarity conclusion.
On the other hand, Caterpillar successfully proved the reputation of their earlier marks for the goods in class 25.