Time Waits for No Man … or CAT

In Tigercat International Inc v Caterpillar Inc 2020 NZIPOTM 18 the Assistant Commissioner denied Caterpillar’s request to halt a second proceeding involving an identical mark covering the same and some additional class 7 goods primarily due to the potential relevance of their different filing dates and the consequent absence of issue estoppel.

Both parties design and manufacture heavy machinery and both have continuously used their marks thereon in New Zealand for significant periods of time. Tigercat filed two applications for TIGERCAT in class 7, the first in October 2015 and the second, for an expanded range of forestry machines, in June 2017 – being after the first application had been opposed by Caterpillar. Caterpillar subsequently also opposed the second application, with both oppositions being on the basis of Caterpillar’s use of and registrations for CAT and device marks in which CAT is a significant or predominant feature.

In March 2018 Tigercat was allowed to amend its first counterstatement to include the plea of honest concurrent use, which then meant that its counterstatements in both oppositions were the same. In April 2018 both parties jointly applied to halt the second proceeding for 6-months to save costs on account of the counterstatements being identical, and IPONZ granted that request. At the end of that 6-month period the first proceeding had not been concluded, yet only Caterpillar sought to further extend the halt to the second proceeding. IPONZ ultimately declined the request on the basis that each proceeding must be considered and determined on its own merit.

Caterpillar sought a hearing on the issue and in addition to arguing that the duplication of proceedings would be a waste of resources and not in the public interest, also claimed that at the conclusion of the first proceedings the second proceeding will be estopped on the basis of issue estoppel. Tigercat argued that the later filing date and the widened specification in the second application meant that the oppositions are materially different and so the proceedings are not duplicative and the first proceeding does not create issue estoppel for the second proceeding.

The Assistant Commissioner agreed with Tigercat, finding that the different filing dates means that the evidence (regarding honest concurrent use, reputation and third party use of CAT trade marks) needs to be directed to different time periods and that the relevance of such evidence is best assessed in the substantive opposition. In line with that finding of lack of identity of issues, the Assistant Commissioner also agreed that the first proceedings will not issue estop the second proceedings.

Author: Quinn Miller

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