Every cat has its Filadae: Panthera motorsports takes on Jaguar Land Rover and wins!
Branding is a serious business in the automotive industry. Companies go to great lengths to protect their trademarks, sometimes leading to disputes. In this dispute, Panthera Motorsports outmaneuvered Jaguar Land Rover.
In November 2017, Panthera Motorsports applied to register the PANTHERA logo (Trademark Application No. 1,870,658). However, in November 2019, Jaguar Land Rover opposed the application by claiming Panthera’s logo could be confused with their iconic “Leaper” marks (Trademark Registration No. TMA368,410 & TMA347,855). Understandably, Jaguar was concerned about another cat logo prowling around the car market.
Panthera amended its application in May 2021. The new product description specified that the mark would not be used for engines in SUVs, light trucks, and automobiles. However, the Trademarks Opposition Board still sided with Jaguar in May 2023, citing potential confusion under section 12(1)(d) of the Trademarks Act.
Subsequently, Panthera appealed the decision to the Federal Court, presenting new evidence showing companies such as Arctic Cat and Dodge (Hellcat models) have used feline images in the vehicle industry since at least 2016.
The Court had to decide two issues: whether Panthera’s new evidence was significant enough to merit a review and whether the Panthera mark would create confusion with Jaguar’s registered marks under section 12(1)(d) of the Trademarks Act.
The Court found the new evidence was sufficiently important to consider, had sufficient probative value, and would have impacted the Trademarks Opposition Board’s decision.
The factors to consider in a confusion analysis are laid out in section 6(5) of the Trademarks Act. The most important factor is the degree of resemblance between the marks.
The Court concluded that the Trademarks Opposition Board’s decision did not sufficiently account for the circumstances that entice potential buyers of Panthera’s and Jaguar’s goods. The Trademarks Opposition Board committed a palpable and overriding error in concluding that the differences between the goods and nature of business of the two parties weren’t pronounced. Panthera and Jaguar operate in distinct markets, and the simultaneous use of the marks would not reasonably lead the consumer to conclude that the goods associated with these marks come from the same source.
The Court allowed Panthera’s appeal, overturned the Board’s decision and ordered the Registrar to accept Panthera’s application for registration. The Court also awarded Panthera’s costs.
The decision can be read in French here.
