OPPOSITION No B 3 046 958

Caterpillar Inc., 510 Lake Cook Road, Suite 100, 60015 Deerfield, United States (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Shenzhen YiSiKe Electronic Technology Co. Ltd., 3D, Mingzhu Commercial Bldg., No.862 Meilong Ave., Longhua St., Longhua District, Shenzhen, China (applicant), represented by Rolim Mietzel Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 11/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 958 is upheld for all the contested goods.

2. European Union trade mark application No 17 518 201 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 of European Union trade mark application No 17 518 201 for the word mark ‘YCat’. The opposition is based on, inter alia, 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 15 167 711.

1. The goods

The goods on which the opposition is based are the following:

Class 25: Clothing, footwear, headgear; articles of outerclothing; t-shirts and sweatshirts; caps, hats, ties (for wear), overalls (for wear), jackets, coats, bathing suits, beach clothes, dressing gowns, gloves (clothing), trousers, vests, night wear pajamas, belts, scarves, shorts, sweat pants, sweat shirts, wrist bands, mittens rain wear.

The contested goods are the following:

Class 25: Wind coats; Down jackets; Down vests; Childrens' clothing; Underwear; Dressing gowns; Sweaters; Clothing; Trousers; Coats; Vests; Skirts; Pyjamas; Footwear; Boots; Slippers; Caps [headwear]; Hosiery; Scarfs; Leather belts [clothing]; Gloves [clothing].

The contested Wind coats; Down jackets; Down vests; Childrens' clothing; Underwear; Dressing gowns; Sweaters; Clothing; Trousers; Coats; Vests; Skirts; Pyjamas; Footwear; Boots; Slippers; Caps [headwear]; Hosiery; Scarfs; Leather belts [clothing]; Gloves [clothing] are identical to the opponent’s Clothing, footwear, headgear, either because they are identically contained in both lists or because the opponent’s goods include the contested goods.

2. 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 found identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	YCat
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 competing marks 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 ‘YCat’ 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, they will break it down into elements which, for them, 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 ‘Y’ and ‘CAT’ because of the clear meaning that the word ‘CAT’ has for the relevant public.

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 at issue, its distinctiveness in both signs is average. The letter of the Latin alphabet ‘Y’ will be perceived as such in the contested sign. Since it has no descriptive or weak meaning in relation to the relevant goods, its inherent distinctiveness is normal.

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 earlier mark has no elements that could be more dominant (visually eye-catching).

Visually, the signs coincide in the distinctive verbal element ‘CAT’ and differ in the first letter of the contested sign, ‘Y’, as well as the earlier mark’s figurative elements. Although the word ‘CAT’ in the contested sign comes second in place after the letter ‘Y, it is clearly perceptible. This word is the sole verbal and more 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.

In conclusion, even if the figurative elements in the earlier mark are not negligible in terms of size and the contested sign starts with another letter, namely ‘Y’, these differentiating elements cannot counterbalance the visual similarity in the common and distinctive verbal element ‘CAT’. Therefore, overall the signs must be considered visually similar to at least an average degree.

Aurally, the signs coincide in the pronunciation of the single syllable word ‘CAT’ and differ in the pronunciation of the letter ‘Y’ at the beginning of the contested sign. Although this difference will not go unnoticed, as it is the first sound of the sign, the common word ‘CAT’ is clearly audible. Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to an animal with soft fur, a long thin tail, and whiskers, or a wild animal that looks like a large cat, for example a lion or tiger, the signs are conceptually similar to a high degree. The earlier mark’s figurative elements do no alter this assessment, for the reasons as explained above.

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

4. 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 were found identical to those of the earlier mark and are directed at a public whose degree of attention is average. The marks in dispute have been found to be visually similar to at least an average degree, aurally similar to an average degree and conceptually highly similar.

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 when confronted with the contested sign in relation to identical goods, consumes are likely to confuse the marks and believe that these goods 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.

As the earlier European Union trade mark registration No 15 167 711 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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

Ewelina SLIWINSKA

Marzena MACIAK

Gueorgui IVANOV

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.