Are cats and tigers alike? EU General Court considers that there is a likelihood of confusion between ‘Tigercat’ and ‘Cat’

The IPKat is pleased to learn that, at least according to the General Court, Kats are indeed like tigers.

In a judgment (Case T-251/21 Tigercat Inc v EUIPO) released earlier this summer, the General Court held indeed that there was a likelihood of confusion, pursuant to Article 8(1)(b) of Regulation 2017/1001 (EUTMR), between the word mark ‘Tigercat’ and Caterpillar’s earlier word EU trade mark (EUTM) ‘Cat’ and figurative EUTM below:

It reasoned that, in view of the identity of the goods, it could not be ruled out that consumers, despite having a high level of attention, might consider that the mark applied for was a variation of the earlier mark or that the goods were a line of products marketed by Caterpillar.

Background

In 2013, Tigercat International Inc (the applicant), applied to register the word ‘Tigercat’ as an EUTM.

Registration was sought for goods in Class 7 (‘Specialised power-operated forestry equipment, namely, purpose built four wheel drive-to-tree and track type log bunchers, log loading machines, skidders and other forestry industry equipment, namely, bunching saws, bunching shears and components parts thereof’) of the Nice Classification.

In December 2013, Caterpillar Inc (the intervener) filed an opposition pursuant to Articles 8(1)(b) and 8(5) EUTMR in relation to its earlier EUTMs above covering goods in Classes 7 and 12 (amongst others, forestry machines).

In 2019, the EUIPO Opposition Division upheld the opposition in its entirety and the applicant appealed the decision to the EUIPO Second Board of Appeal (the board). In 2020, the board dismissed the appeal in its entirety and found that there was a likelihood of confusion pursuant to Article 8(1)(b).

The applicant subsequently appealed to the General Court.

The General Court’s decision

The relevant public

The General Court first upheld the board’s finding that the relevant territory was that of the European Union but also that, for reasons of procedural economy, it was focused on Ireland and Malta. In addition, it also considered that the goods were aimed at consumers with a high level of attention since those goods are intended for business customers with specific professional expertise.

Comparison of the signs

The distinctive and dominant elements

After considering that the goods were identical, the General Court moved on to assess the distinctive and dominant elements of the marks. In relation to the mark applied for, the elements ‘tiger’ and ‘cat’ are readily identifiable within that mark, given that those two words have a clear meaning for the English-speaking public. It followed that, contrary to what the applicant had submitted, first, the relevant public was likely to break down the mark applied for into ‘tiger’ and ‘cat’. Secondly, the fact that the letter ‘c’ in the sign ‘Tigercat’ is not capitalised did not preclude the relevant public from being able to identify the elements ‘tiger’ and ‘cat’, each of which has a specific meaning. Moreover, according to the General Court, the element ‘cat’ had distinctive character with regard to the goods concerned since it referred to the animal – cat – whereas the goods designated forestry equipment.

The element ‘tiger’ has no dominant character in that mark since that element has no particular graphic or stylistic aspect. Furthermore, the mere fact that the element ‘tiger’ is placed at the beginning of the mark applied for is insufficient to confer it a dominant character.

There was nothing to indicate that the average consumer of the relevant public would attach more importance to the element ‘tiger’ at the beginning of the mark applied for. That aspect was counterbalanced by the fact that the mark applied for is composed only of two relatively short words, which, although directly juxtaposed, have a clear meaning for the relevant public. Thus, contrary to what the applicant submitted, the element ‘cat’, which has a specific meaning distinct from the element ‘tiger’, does not have merely a laudatory connotation intended to highlight the element ‘tiger’.

The General Court therefore considered that the board had been correct in not identifying a dominant element in the mark applied for.

As regards the earlier mark and contrary to the applicant’s submission, the fact that this had an original graphic design did not call into question the board’s finding that the word element ‘cat’ would have a stronger impact on the consumer than the figurative elements of that mark. Furthermore, the figurative elements of the earlier mark are essentially decorative and only have a limited impact on the relevant public’s visual perception of that mark.

Visual similarity

According to the General Court, the board was right to find that the signs are visually similar at least to an average degree and none of the applicant’s other arguments were capable of calling that finding into question.

Phonetic similarity

As regards to the phonetic comparison, the General Court considered that the signs differed in that the mark applied for contained, as an element placed at the beginning of that mark, the two syllables ‘ti’ and ‘ger’, whereas the earlier mark only contained the common element ‘cat’. Nonetheless, the fact remained that that common element could be pronounced when the goods at issue were purchased, thus justifying the board’s finding that the signs were phonetically similar at least to an average degree.

Conceptual similarity

Since the mark applied for also referred to the concept of a ‘cat’, the board was also considered correct in concluding that the signs were conceptually highly similar.

Global assessment of the likelihood of confusion

In view of the identity of the goods, the average degree of visual and phonetic similarity of the signs, the high degree of conceptual similarity and the enhanced level of distinctiveness of the earlier mark, the General Court found that the board had correctly concluded that there was a likelihood of confusion, even though the level of attention of the relevant public was high.

Conclusion

This judgment confirms once again the well-established principle according to which a risk of confusion entails a risk that the public may believe that the goods or services in question come from the same undertaking (or economically-linked undertakings). In this case, despite the figurative element in one of the earlier marks, the Court was not hindered in finding a likelihood of confusion, since the word element “cat” was considered as having a stronger impact on the consumer than the figurative element of that mark.