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Caterpillar, Inc has successfully challenged the August 2020
European trademark application for ‘FLOWERCAT’ on the basis
that the mark infringes its earlier rights to both the word and
figurative (device) marks for ‘CAT’. Noa Rubingh reviews
the recent ruling.
The 23 August
decision by the Board of Appeal of the EU IP
Office (EUIPO) illustrates that a word can be considered
to be devoid of or lacking in distinctiveness for certain goods,
while at the same time fulfilling the function of a trademark for
other goods. In this case, it was discussed that although the word
‘cat’ does not have a distinctive character for toys in the
shape of cats or toys made for cats, this word can have distinctive
character for replicas of vehicles, machines, tractors, trucks or
trailers, among other things.
European trademarks and likelihood of confusion
Registered European trademark (EUTM) owners can oppose a later
application on the grounds of likelihood of confusion, as set out
in Article 8(1)(b) of the EU Trademark Regulation (EUTMR). This
prevents a new trademark from taking unfair advantage of the
reputation of an already existing trademark.
Whether there is a likelihood of confusion is determined by a
careful assessment of the degree of similarity between the mark and
the sign and the products and services for which the mark and sign
were filed. This assessment must take into account:
- the public for whom the goods and services are intended;
- the visual, aural or conceptual similarity between the
- the nature, purpose and manner of use of the goods and services
designated, and whether they compete with or complement each other;
- any additional factors, such as producers, channels of
distribution and points of sale.
In addition, examiners must take into consideration the
distinctive character of the existing mark to the extent that a
lower degree of similarity between the goods or services can be
compensated by a higher degree of similarity between the mark and
the sign, and vice versa. In other words, all factors relevant to
the circumstances of the case must be taken into account as part of
an overall assessment.
The importance of trademark reputation
The FLOWERCAT application was for a figurative mark in
classes 7, 9, 11 and 28 (pictured right), for which Caterpillar
already held its CAT trademarks (pictured below, left).
Caterpillar’s opposition to the application was granted for all
classes, except class 28, which includes toys. The EUIPO’s
Opposition Division found there to be an absence of likelihood of
confusion for this class, as toys may be specially designed for
cats and so the word ‘cat’ is too descriptive to serve as a
trademark for such products.
For the other
classes, CAT was found to have distinctive character in relation to
the goods, with the mark having a relatively high scope of
protection due to its intensive use and notoriety. This reputation
did not affect the trademark protection based on class 28, however,
because the products in the other classes, such as machines and
tools, were not considered similar to toys.
Caterpillar overturns failed opposition
Caterpillar subsequently lodged an appeal with EUIPO’s Board
of Appeal, arguing that ‘cat’ does have distinctive
character for the vast majority of the goods in class 28 and that
EUIPO should not only look at the sub-class covering cat toys. In
addition, when the CAT mark was registered for class 28, the
company specifically indicated that the goods concerned were toys
in the form of replicas of, inter alia, vehicles,
machines, tractors, lorries or trailers. Finally, the company
argued that this and the fact that FLOWERCAT has the same
description in class 28 regarding replicas were not taken into
account by the Opposition Division in its decision.
Since the goods had already been found to be identical during
the opposition, the considerations regarding the visual, aural and
conceptual similarity between CAT and FLOWERCAT were the most
interesting in this recent ruling. Here, the Board of Appeal
- Although consumers often pay more attention to the beginning of
a word or phrase, the word ‘FLOWER’ has been shown to be
less distinctive than the word ‘CAT’ in this instance. In
other words, English-speaking consumers would interpret the term
‘flower’ as a characteristic or description of the cat,
rather than the other way around. This indicates a conceptual
- The pronunciation of both brands is similar, which means that
there is also an aural similarity.
- There is also a visual similarity because both trademarks
consist of simple letters without any additional design features to
change the impression of the trademark.
- The CAT marks are also distinctive for toys (on the basis of
the toy replicas), and the goods for which protection is requested
are identical to the goods. This creates a likelihood of confusion,
since the newly applied trademark consists exclusively of the
earlier trademark (CAT) with another, less distinctive word before
In short, the Board of Appeal decided that there was also a
likelihood of confusion in respect of the goods in class 28. It
found that the Opposition Division should have further examined
whether there was a likelihood of confusion in respect of the other
identical or similar goods in class 28. Caterpillar’s appeal
succeeded, therefore, and the earlier decision of the Opposition
Division was annulled.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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