Caterpillar Inc. ("Caterpillar"), renowned worldwide for the design, manufacture, marketing, distribution and sale of its extensive range of industrial, agricultural, construction, mining and road-building equipment together with parts, accessories and services thereof, recently filed an infringement and passing off suit against an individual, formerly trading as Catplus International, to defend the goodwill and reputation it has built upon its brand, seeking, amongst others, relief by way of an injunction, and an inquiry as to damages, statutory damages or an account of profits.
Caterpillar owns several registered trademarks in Classes 7 and 12 of the Singapore trade marks register and employs a distinctive get-up, the prominent features of which consist of the word "CAT" in white and a yellow triangle device directly beneath the "A", superimposed over a black patch with a red line running across the black patch ("the get-up"). The black patch is located on the yellow body of its products.
The Defendant was in a similar trade of manufacture and repair of construction equipment and machinery, and was alleged to have employed, in the course of business, one or more of the following signs or marks, namely "CATPLUS" by itself or with the letters in yellow or white on a black rectangular background with a red line running across the black background, together with the inscription "CATPLUS INC, USA" in small-sized print at the bottom right-hand corner of the rectangle ("the offending marks"). The offending marks were affixed on the Defendant’s goods which adopted a similar colour scheme, design as well as model number to that of Caterpillar’s. The Defendant had taken no steps to distinguish between the two. It was submitted that the omission to do so was intentional and calculated to create confusion among potential purchasers of the offending products. Furthermore, the Defendant’s website also had a layout and design like Caterpillar’s.
Evidence adduced by Caterpillar included printouts of some salient pages from the Defendant’s website, including sections on its products, corporate information, and contact information; an investigation report by Caterpillar’s private investigators detailing their meeting with the Defendant, during which the Defendant conducted himself as one having knowledge and authority to deal on behalf of the infringing company; and brochures belonging to the infringing company.
Caterpillar’s authorised sole dealers in Pakistan and Sudan respectively also testified as witnesses that they were taken aback by similarities between the two parties’ products, although the Defendant’s were clearly of a poorer quality.
The Defendant disclaimed ownership of the website or the company dealing in the offending products and believed that the Plaintiff had sued the wrong person. However, evidence showed a strong connection between the Defendant and the infringing company.
He further argued that in any event, the "CATPLUS" mark was visually and phonetically different from Caterpillar’s, hence there was no likelihood of public confusion merely because of the combination of the three common letters "C", "A" and "T". With regard to passing off, the Defendant claimed he could not have made any misrepresentations amounting to, or likely to cause, confusion between the parties' respective products since he had at no time traded as Catplus International, and therefore the action ought to be dismissed with costs.
S27(2) of the Trade Marks Act ("the TM Act") provides:-
A person infringes a trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because -
- the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or
- the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public.
It was undisputed that there was clearly no consent on the part of Caterpillar to the Defendant’s use of the offending marks.
S27(4) of the TM Act provides that a person "uses" a sign if he offers goods and services under that sign, uses it on catalogues or other commercial documents in any medium or uses it in advertising. Further, the use must have been "in the course of trade" in order to amount to infringement, while the term "trade" includes any business or profession and is wide enough to include any form of commercial dealing in goods or services. The phrase "in the course of trade" has been interpreted to refer to any activity carried out "for the purposes of trade" rather than "in trade" and is thus wide enough to include any activity between production of goods and actual product placement in the market place. The Defendant had, through his website and the brochures, offered goods for sale under the offending marks, as well as used the offending marks on catalogues and commercial documents and in advertising. There was therefore use in the course of trade.
In examining whether the offending marks were similar to the Plaintiff’s marks, the Court held that a mark-for-mark comparison, excluding external added matter or circumstances, should be adopted. Further, the mark must be taken as a whole without nitpicking for individual similarities. This is based on the doctrine of imperfect recollection, whereby marks are not compared side by side and dissected in detail because the person who is confused typically does a comparison based on memory.
In this regard, Caterpillar argued that the first syllable for word marks (as the marks in question essentially were) was always important in view of the human tendency to remember the first syllable and slur the rest. The Defendant rebutted that it was impossible to slur the aspirative "p" in "Catplus". The Court agreed with Caterpillar’s argument, stating that the ideas conveyed by marks should also be taken into account. In this regard, the Defendant's marks are conceptually similar to Caterpillar’s CAT marks given the laudatory nature of the suffix "PLUS", which alludes to the Defendant's products being improved or upgraded Caterpillar products. It therefore lacks the distinctiveness to distinguish the Defendant's marks from Caterpillar’s. Further, the additional inscription "CATPLUS INC, USA" is almost unnoticeable and is not even always used in conjunction with "CATPLUS".
The Court further held that, in determining whether there is a likelihood of public confusion, all surrounding circumstances should be considered, including the visual, aural and conceptual similarities between the Defendant's and Caterpillar's marks, the distinctiveness and duration of use of the marks and promotional expenditure in respect of the same, the nature of the goods and services concerned and the consumer profile.
With regard to passing off, as it was clear from the evidence that Caterpillar had goodwill and reputation in Singapore and that the Defendant had made misrepresentations amounting to, or likely to cause, confusion, Caterpillar had only to prove likelihood of damage in order to succeed in its claim. Unquestionably, the Defendant’s goods and services were in direct competition with Caterpillar’s and the Defendant’s business would naturally take away in an unfair manner part of the legitimate business of Caterpillar. As such, the Court decided that there was every likelihood of damage.
Judgment was passed granting Caterpillar injunctions to restrain the Defendant from infringement of Caterpillar’s CAT marks and from passing off his goods and services as those of Caterpillar, as well as costs of the proceedings. The inquiry as to damages or an account of profits would be conducted by the Registrar of the Court.
The decision in this case demonstrates the Court’s attitude towards the recognition of the goodwill in brands and is undoubtedly a positive booster for brand owners to take every measure to enforce their intellectual property rights against unscrupulous entrepreneurs.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.