A recent decision of the Federal Court raises interesting issues
concerning the evidence required to succeed in a trademark
opposition. Caterpillar SE v. Puma SE 2021 FC 974.
The Facts
Puma SE filed application number 1,558,723 for the trademark
PROCAT based on the proposed use of the trademark in Canada in
association with "footwear, namely athletic, sports and casual
shoes and boots; headgear, namely hats and caps."
Caterpillar Inc. filed a Statement of Opposition asserting, among
other things, that the PROCAT mark was confusing with its
registered trademark CAT & Triangle Design, shown below, which
was registered for use in association with footwear and
headgear.
Both parties filed evidence, and the opposition proceeded to a
hearing. Caterpillar relied on the use of its mark in Canada by its
licensees under section 50 of the Trademarks Act.
Subsection 50(1) provides that the use of a trademark by a licensee
is deemed use of the mark by the owner, where
