OPPOSITION No B 3 020 875

Caterpillar Inc., 100 NE Adams Street, 61629 Peoria, Illinois, United States of America (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Beijing CatDrive Technology Co., Ltd., Room 213, 2nd Floor, Building 1, No. 28, Houtun Street, Haidian District, Beijing, People’s Republic of China (applicant), represented by Domingo Galletero Company, Calle Perez Medina, Nº 23, Entlo. Dcha, 03007 Alicante, Spain (professional representative).

On 07/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 020 875 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 225 814 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 225 814 for the word mark ‘CatDrive’. The opposition is based on European Union trade mark registration No 15 167 711 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

The goods and services on which the opposition is based are, among others, the following:

Class 9: Electrical, electronic, apparatus and instruments, namely electrical adaptors, electrical amplifiers, electrical connectors, electrical couplings, electrical fuses and electrical locks; scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking, (supervision), life saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; mobile phones; spectacles; sunglasses; magnetic data carriers; recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, computer software, computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface, data processing equipment including computers; wireless sets (complete), television sets (complete), fire extinguishing apparatus; testing apparatus and instruments; electric cable and wire; computer hardware; control units; operator interfaces; security equipment; GPS equipment; equipment for remote operation, control, and monitoring of earth moving, earth conditioning, material handling, construction, mining, paving, agricultural, and forestry vehicles, equipment, and machinery, engines, power generation equipment, and off-highway trucks; cables; conduits, switches, pressure switches, connectors, jump leads, fuses, circuit testers, voltage testers; fuse holders, transformers, battery testing apparatus for sale in kit form; thermostats, pressure and temperature indicators, gauges, levelling apparatus and instruments; tape measures and rules; microscopes, tachometers; monitoring apparatus and displays; diagnostic apparatus and instruments; meters, thermometers; alarms, horns, flasher units, reflectors, mirrors, aerials, battery chargers; weighing apparatus and instruments; computer programs; calculators; CD Rom games; electrical couplings; levels; electrical locks; radios; batteries; battery starters; speed checking apparatus and instruments; battery cables; connectors for sale in kit form; electrical terminals; switches; water temperature regulators, probes; ammeters; battery testers, terminals, gas detectors; flow meters; ohmmeters; pressure measurement tools; battery ground strap connectors; battery tie down connectors; conduit and wire protectors; emergency jump start apparatus, emergency jump start receptacle assemblies; voltage converters; parts and fittings for all the aforesaid goods; parts and fittings included in class 9 for land vehicles, agricultural machinery and earth moving machinery namely, amplifiers for wireless communications, antennas, antennas for wireless communications apparatus, audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings, batteries for vehicles, computer hardware and software, computer software that provides real-time; all the foregoing excluding music recordings or video recordings of musicals; parts and fittings included in class 9 for land vehicles, agricultural machinery and earth moving machinery namely, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface, devices for wireless radio transmission; all the foregoing excluding music recordings or video recordings of musicals; parts and fittings included in class 9 for land vehicles, agricultural machinery and earth moving machinery namely, electric control panels, electric luminescent display panels, electric relays, electronic and optical communications instruments and components, namely, optical transmitters, electronic and optical communications instruments and components, namely, optical receivers, electronic and optical communications instruments and components, namely, digital transmitters; all the foregoing excluding music recordings or video recordings of musicals; parts and fittings included in class 9 for land vehicles, agricultural machinery and earth moving machinery namely, electronic control systems for machines, global positioning systems, laser object detectors for use on vehicles, navigation apparatus for vehicles in the nature of on-board computers, radios for vehicles, voltage regulators, voltage stabilizers, voltmeters; all the foregoing excluding music recordings or video recordings of musicals; telecommunications equipment; eyeglasses; sunglasses; computer software for testing, monitoring, and operating vehicles, engines, equipment, machines, machine tools, and parts therefor, for use in agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lifting, marine propulsion, material handling, mining, mulching; computer software for testing, monitoring, and operating vehicles, engines, equipment, machines, machine tools, and parts therefor, for use in oil and gas distribution, oil and gas exploration, oil and gas production, and parts therefor, for use in agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lifting, marine propulsion, material handling, mining, mulching; computer software for paving, pipelaying, power generation, road building and repair, site preparation and remediation, tunnel boring, and vegetation management, and parts therefor, for use in agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lifting, marine propulsion, material handling, mining, mulching; computer software in the field of statistical analysis, data analysis, predictive analysis, and job site office management and planning; computer software for selecting delivery location and tracking delivery status of packages, freight, and job site materials; equipment and parts therefor for locating, positioning, and controlling machines, engines, machine tools, and parts therefor, for use in agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lifting, marine propulsion, material handling, mining, mulching; equipment and parts therefor for locating, positioning, and controlling machines, engines, machine tools, and parts therefor, for use in oil and gas distribution, oil and gas exploration, oil and gas production, paving, pipelaying, power generation, road building and repair, site preparation and remediation, tunnel boring, and vegetation management; equipment for remote operation, control, and monitoring of engines, machine tools, and parts therefor, for use in agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lifting, marine propulsion, material handling, mining, mulching; equipment for remote operation, control, and monitoring of engines, machine tools, and parts therefor, for use in oil and gas distribution, oil and gas exploration, oil and gas production, paving, pipelaying, power generation, road building and repair, site preparation and remediation, tunnel boring, and vegetation management.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services, including but not limited to construction vehicles, engines and motors, generators as well as oil-field and gas-field exploitation; design and development of computer hardware and software; computer services; engineering research and drawing; rental and leasing of engineering, agricultural and farming machinery and equipment; design and development of products and design of computer programs, computer hardware and software; surveying; engineering and technical consultation; computer programming; providing online non-downloadable software; design of computerized information systems; testing and inspection of engines and machinery; testing, control, diagnosis, calibration, and monitoring of earth moving, earth conditioning, material handling, construction, mining, paving, agricultural, and forestry vehicles, equipment, and machinery, engines, and power generation equipment, jobsites, machinery fleets, trucks, trucking fleets, and the operation of machinery via computer networks and the internet; remote control and operation of earth moving, earth conditioning, material handling, construction, mining, paving, agricultural, and forestry vehicles, equipment, and machinery, engines, and power generation equipment via computer networks and the internet; data acquisition and analysis via computer networks and the internet; troubleshooting of computer hardware and software; creation of GPS maps; designing complete logistics solutions for others; design of computerized information systems for managing logistics and product distribution processes for others; engineering and technical consultation; providing online non-downloadable software; design of computerized information systems; testing and inspection of engines and machinery; testing, control, diagnosis, calibration, and monitoring of vehicles, equipment, and machines used for agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lifting, marine propulsion, material handling, mining, mulching, oil and gas distribution; testing, control, diagnosis, calibration, and monitoring of vehicles, equipment, and machines used for oil and gas exploration, oil and gas production, paving, pipelaying, power generation, road building and repair, site preparation and remediation, tunnel boring, and vegetation management; testing, control, diagnosis, calibration, and monitoring of engines, power generation equipment, jobsites, machine fleets, trucks, trucking fleets, and the operation of machines via computer networks and the internet; remote monitoring relating to the control and operation of vehicles, equipment, and machines used for agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lifting, marine propulsion, material handling, mining, mulching, oil and gas distribution; remote monitoring relating to the control and operation of vehicles, equipment, and machines used for oil and gas exploration, oil and gas production, paving, pipelaying, power generation, road building and repair, site preparation and remediation, tunnel boring, and vegetation management via computer networks and the internet; remote monitoring relating to the control and operation of engines and power generation equipment via computer networks and the internet; rental of equipment, machines, and machine tools for use in oil and gas exploration.

The contested goods and services are the following:

Class 9: Data processing apparatus; Computer memory devices; Computer hardware; Computer operating programs, recorded; Computer software applications, downloadable; USB flash drives; Optical discs; Computer peripheral devices; Computer programs [downloadable software]; Electronic pocket translators.

Class 42: Technical research; Research and development of new products for others; Product quality system certification; Quality control; Product quality testing; Computer software design; Computer system design; Electronic data storage; Updating of computer software; Software as a service [SaaS].

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Contested goods in Class 9

Data processing apparatus; computer hardware; computer operating programs, recorded; computer software applications, downloadable; computer programs [downloadable software] are identically included in both lists of goods (including synonyms).

The contested electronic pocket translators are small handheld electronic devices for translating from one language to another and, are considered included in the broad category of, or overlap with, the opponent’s teaching apparatus and instruments. Therefore, they are identical.

The contested computer memory devices; USB flash drives; optical discs are similar to the opponent’s data processing equipment including computers as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested computer peripheral devices are similar to the opponent’s data processing equipment including computers as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

Contested services in Class 42

The contested technical research; research and development of new products for others; computer software design; computer system design; updating of computer software are identical to the opponent's research services, including but not limited to construction vehicles, engines and motors, generators as well as oil-field and gas-field exploitation; design and development of products and design of computer programs, computer hardware and software; design and development of computer hardware and software, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested product quality testing; quality control overlap with the opponent’s testing, control, diagnosis, calibration, and monitoring of earth moving, earth conditioning, material handling, construction, mining, paving, agricultural, and forestry vehicles, equipment, and machinery, engines, and power generation equipment, jobsites, machinery fleets, trucks, trucking fleets, and the operation of machinery via computer networks and the internet. Therefore, they are identical.

The contested software as a service [SaaS] and the opponent's design and development of computer and software have the same distribution channels. Furthermore, they target the same end users and are provided by the same undertakings. Therefore, they are similar.

The contested electronic data storage and the opponent’s design and development of computer and software can all be grouped under the general category of IT services. Consequently, they target the same consumers, are provided through the same distribution channels and are generally rendered by the same kind of undertakings (professionals in the IT field) that normally provide a full spectrum of information technology (IT) solutions tailored to the needs of their customers. Therefore, these services are at least similar.

The contested product quality system certification is at least similar to the opponent’s testing, control, diagnosis, calibration, and monitoring of earth moving, earth conditioning, material handling, construction, mining, paving, agricultural, and forestry vehicles, equipment, and machinery, engines, and power generation equipment, jobsites, machinery fleets, trucks, trucking fleets, and the operation of machinery via computer networks and the internet. This is because certification is complementary to testing. Usually, the same undertaking which tests the products, gives also the certificate about their quality or other characteristics of the tested goods.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high depending on the specialised nature of the goods and services, the frequency of purchase and their price.

c) The signs

	CatDrive
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Since the marks at issue have English verbal elements, in the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The contested mark is a word mark, ‘CatDrive’, and although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he/she will break it down into elements which, for her/him, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In the present case, the consumer is likely to break the contested mark down into two elements ‘CAT’ and ‘DRIVE’ because of the clear meaning that the words have for the relevant public, as explained below.

The relevant public will perceive the verbal element of both signs, ‘CAT’, as referring to an animal with soft fur, a long thin tail, and whiskers, that people keep as a pet or a wild animal that looks like a large cat, for example a lion or tiger. Since it has no descriptive or weak connotations with regard to the goods and services at issue, its distinctiveness in both signs is average.

The triangle in the earlier mark is a basic geometrical shape which is unable to convey any message that can be remembered by consumers and will accordingly not be seen by them as an indication of the commercial origin (12/09/2007, T-304/05, Pentagon, EU:T:2012:271, § 22).

The marks have no elements that could be considered dominant (visually eye-catching).

The word ‘DRIVE’ of the contested sign will be perceived, inter alia, as meaning ‘operate and control the direction and speed of a motor vehicle; propel or carry along by force in a specified direction; a tip or journey in a car; short for ‘disk drive’. Consequently, for at least part of the relevant goods and services (for example, USB flash drives; optical discs), it is considered at most weak.

Visually, the signs coincide in the distinctive verbal element ‘CAT’ and differ in the final word of the contested sign, ‘DRIVE’ (being at most weak for part of the goods and services), as well as in the earlier mark’s figurative elements. The word ‘CAT’ in the contested sign comes first in place and it is clearly perceptible. This word is the sole verbal and most distinctive element of the earlier mark. As regards the earlier mark’s figurative elements, it should be borne in mind that, where a trade mark is composed of verbal and figurative elements, the former have, in principle, more impact than the latter, because the average consumer will more readily refer to the goods or services in question by quoting their name than by describing the figurative element of the trade mark. This applies here, as the figurative elements of the earlier mark will be perceived by consumers as mere decorative elements, and not as elements indicating the commercial origin of the goods and services.

Therefore, considering all the above, the signs are visually similar to an average degree.

Aurally, the signs coincide in the pronunciation of the single syllable ‘CAT’ and differ in the pronunciation of the final letters ‘D-R-I-V-E’ of the contested sign. Although this difference may not go unnoticed, the coincidence lies in the first sounds of the contested sign and, as such, is clearly audible. Therefore, the signs are similar to at least an average degree, taking into account that the additional word, ‘Drive’, of the contested sign is at most weak.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In relation to some of the goods and services, the word ‘DRIVE’ of the contested sign could be perceived as at most weak. In any case, the marks are, conceptually, similar to at least an average degree to the extent that they both refer to the same animal, a cat.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eleventh recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods and services were found partially identical and partially similar to those of the earlier mark and are directed at a public whose degree of attention may vary from average to high. The marks in dispute have been found to be visually similar to an average degree, and aurally and conceptually similar to at least an average degree.

Therefore, in an overall assessment, taking into account that the sole verbal distinctive element of the earlier mark is entirely contained in the contested sign as a distinctive element, it is reasonable to assume that even when confronted with the contested sign in relation to identical and similar goods and services for which the distinctiveness of the differing ‘Drive’ is not impaired, consumers are likely to confuse the marks and believe that these goods and services come from the same undertaking or, as the case may be, economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 167 711. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Teodora TSENOVA-PETROVA

Marzena MACIAK

Anna BAKALARZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.