Puma lost a trademark dispute against Caterpillar in Canada

When it comes to the registration of trademarks the similarity between signs can be a delicate moment for every applicant even for the biggest and most famous companies in the world.

This was the case with the German well-known sportswear manufacturer Puma which applied for trademark PROCAT in Canada for footwear and headgear.

Against this application, an opposition was filed by Caterpillar based on earlier marks CAT for the same goods.

Initially, the Trademarks Opposition Board dismissed the opposition not finding enough similarity between the signs.

In the appeal, however, the Federal Court annulled this decision with the argument that PROCAT and CAT are similar signs for identical goods.

Puma claimed that the PRO prefix in their mark was sufficient in order to create a distinction between the signs in the consumer’s mind.

The Court didn’t credit this argument finding PRO meaning related to something suggestive or laudatory for the characteristic of the products. This word is used by many companies to stress the better quality or other characteristics of their goods or services.

From that perspective, PRO has weak distinctiveness and CAT has the dominant importance for the understanding of the mark’s meaning.

Puma failed to prove that PROCAT has its own distinctiveness as a whole and that this sign was related by consumers to their particular products.

Additionally, there was no evidence that CAT is a common word or such one with a low distinctive character for the above-mentioned goods in order for small differences between the signs to be sufficient for a dissimilarity conclusion.

On the other hand, Caterpillar successfully proved the reputation of their earlier marks for the goods in class 25.

Source: Canadianlawyermag.

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CAT won a tiger trademark dispute in the EU

The General Court of the European Union has ruled in the case T‑251/21, Tigercat International Inc. v Caterpillar Inc., that has the following background:

 On 26 August 2013, Tigercat International Inc. filed an application for registration of an EU trademark for Tigercat 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.

Against this application, an opposition was filed from Caterpillar Inc. based on an earlier word mark CAT and the following combined mark, both in classes 7 and 12, including for forestry machines:

The EUIPO upheld the opposition in its entirety finding both signs similar enough. The decision was appealed.

The General Court found similarities and identities between the goods of the marks. When it comes to the signs themselves, the Court concluded that the relevant public can recognize two separate words in the later mark – Tiger and Cat because both have their own distinctive meaning.

According to the Court:

In the present case, the mere fact that the element ‘tiger’ has been placed at the beginning of the mark applied for is not sufficient to confer on it a dominant character. There is nothing to indicate that the average consumer of the relevant public will attach more importance to the element ‘tiger’ at the beginning of the mark applied for. That aspect is counterbalanced by the fact that the mark applied for is composed only of two relatively short words, which, although they are directly juxtaposed, each has a clear meaning for the relevant public. Thus, contrary to what the applicant submits, 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’.

In the present case, the Board of Appeal noted that the signs at issue had the element ‘cat’ in common, whereas they differed in the presence of the first element of the mark applied for, namely the word element ‘tiger’, and in the figurative elements of the earlier mark. It concluded from that that they had an average degree of visual similarity.

That assessment is irreproachable. Although the applicant takes the view that the signs at issue are visually different because of their different length and the presence of capital letters and figurative elements in the earlier mark, the fact remains that they coincide in the element ‘cat’, which constitutes the only word element of the earlier mark and has a distinctive character. The fact that the earlier mark is wholly included in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue, even where the relevant public has a high level of attention. The presence of the element ‘tiger’ – which is not dominant – at the beginning of the mark applied for does not lead to the conclusion that the signs at issue are dissimilar.

In the present case, it should be noted that the signs at issue differ in that the mark applied for contains, as an element placed at the beginning of that mark, the two syllables ‘ti’ and ‘ger’, whereas the earlier mark only contains the common element ‘cat’. Nonetheless, the fact remains that that common element could be pronounced when the goods at issue are purchased, thus justifying the Board of Appeal’s finding that the signs at issue are phonetically similar at least to an average degree.

Since the mark applied for, which is composed of the elements ‘tiger’ and ‘cat’, also refers to the concept of a ‘cat’, it should be concluded that the Board of Appeal was correct to conclude that the signs at issue were conceptually highly similar.

Against this backdrop, the Court dismissed the appeal and upheld the EUIPO’s decision.

Grumpy Cat won a lawsuit in the US

WIPR reports about an interesting lawsuit in the US which concerns the well-known Grumpy Cat which has become an internet sensation in the recent years.

The owners of this cat, trying to use its commercial power, gave in 2013 a license regarding copyrights and trademarks over the cat’s image to the coffee company Grenade Beverage. The license specified that the company has the right to use this intellectual property only for one specific beverage called “Grumppuccino”. However, Grenade Beverage started to use Grumpy Cat for other products too.

As a consequence, the cat’s owners filed a lawsuit for copyright and trademark infringement.

According to the court, there is such intellectual property infringement, because of which a damage in the amount of 710 000 dollars was ordered.

This case is interesting and indicative of the fact that every IP license should be draft very carefully in order to cover all aspects of the IP exploitation and what’s more it has to be executed precisely after that.