OPPOSITION No B 3 061 718

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

a g a i n s t

Hellgeth, Gewerbegebiet 16, 07343 Wurzbach-Rodacherbrunn, Germany (applicant).

On 27/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 718 is upheld for all the contested goods.

2. European Union trade mark application No 17 795 006 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 17 795 006 for the word mark ‘XrossCat’. 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 7: Machines and engines and parts therefor, for use in agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lawn care, lifting, marine propulsion, material handling, mining, mulching, 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; forestry machines.

Class 12: Vehicles for use in agriculture, compaction, construction, demolition, earth conditioning, earth contouring, earth moving, forestry, landscaping, lifting, marine propulsion, material handling, mining, mulching, 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; locomotives; railcars; engines and air intake and exhaust assemblies for land vehicles; and parts and fittings for all of the foregoing goods; apparatus for locomotion by land, air or water; tractors and tractor engines; haulage trucks and trailer wagons; vehicles for mining, paving, agriculture, forestry, earth conditioning and material handling, namely, articulated trucks, off highway trucks, underground mining trucks, off highway tractors; internal combustion fork lift trucks; electric fork lift trucks; electric pallet movers, manual pallet movers; locomotives; agricultural tractors; structural, repair and replacement parts for engines for the foregoing vehicles; vehicle chassis; tires for vehicle wheels; wheels; tracks for vehicles; trucks; dump trucks; land vehicles incorporating loading, compacting, pipe laying and grading apparatus; tire valves; exhaust caps; radiators and radiator caps; hydraulic circuits and hydraulic adapters; couplings for land vehicles; air pumps (vehicle accessories); horns for vehicles; mirrors for vehicles; mudguards, mud flaps, spray guards, spray flaps; seats and seat belts; windscreen wipers and windscreen wiper blades, anti-skid apparatus; anti-skid chains; brakes for vehicles; brake linings for vehicles; vehicle covers; parts and fittings for all the aforesaid goods; parts and fittings included in Class 12 for land vehicles, agricultural machinery and earth moving machinery, namely, gaskets, cranks, camshafts, engines, bearings, rods, liners, transmissions for land vehicles and structural, repair and replacement parts therefore; starting motors, alternators, pistons, cylinder heads, turbochargers, lubricating system parts, brake blocks for land vehicles; connecting hoses for vehicle radiators.

The contested goods are the following:

Class 7: Forestry machines; components and assemblies for forestry machine.

Class 12: Vehicles and parts therefor (included in Class 12); trailers (vehicles); camper vans; vehicle chassis; bodies for vehicles; interior design of vehicles; storage boxes for vehicles; competition vehicles; vehicle cab mounts; suitcase mounts; vehicle parts; vehicle boarding aids; vehicle cabs; bags for vehicles; forestry vehicles; vehicle cab equipment; tipping bodies for lorries [trucks]; motor homes; caravans; attachments for vehicles; vehicle fuel tanks; tracked vehicles; branch deflectors for vehicles; car-top luggage carriers; spare wheel carriers; joints for articulated vehicles; drive components; gears, differentials; undercarriage components; vehicle chassis components; tread bands for crawler vehicle.

Contested goods in Class 7

Forestry machines are identically contained in both lists of goods.

The contested components and assemblies for forestry machine overlap with the opponent’s machines and engines and parts therefor, for use in forestry. Therefore, they are identical.

Contested goods in Class 12

The contested vehicles; camper vans; competition vehicles; motor homes; caravans; tracked vehicles are included in the broad category of the opponent’s apparatus for locomotion by land. Therefore, they are identical.

Forestry vehicles; vehicle chassis are identically contained in both lists of goods (including synonyms).

The contested parts therefor [vehicles] (included in Class 12); trailers (vehicles); bodies for vehicles; interior design of vehicles; storage boxes for vehicles; vehicle cab mounts; suitcase mounts; vehicle parts; vehicle boarding aids; vehicle cabs; bags for vehicles; vehicle cab equipment; tipping bodies for lorries [trucks]; attachments for vehicles; vehicle fuel tanks; branch deflectors for vehicles; car-top luggage carriers; spare wheel carriers; joints for articulated vehicles; drive components; gears, differentials; undercarriage components; vehicle chassis components; tread bands for crawler vehicle are identical to the opponent’s apparatus for locomotion by land; … parts and fittings for all the aforesaid goods, because the opponent’s goods include, or overlap with, the contested 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 found to be identical 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, the frequency of purchase and their price.

c) The signs

	XrossCat
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, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The contested sign is a word mark and, therefore, it is the word as such that is protected and not its written form. Nevertheless, where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), this must be taken into account. Pursuant to Article 3(2) EUTMIR, the representation of the trade mark defines the subject matter of the registration. The perception of the relevant public, who will not fail to notice the use of irregular capitalisation, cannot be disregarded. Irregular capitalisation may have an impact on how the public perceives the sign, and consequently, on the assessment of similarity.

Therefore, the capital letters ‘X’ and ‘C’ of the contested sign will lead the public to clearly perceive two distinct verbal elements: ‘Xross’ and ‘Cat’.

The relevant public will perceive the verbal element of both signs, ‘CAT’, as referring to ‘a small domesticated carnivorous mammal with soft fur, a short snout, and retractable claws. It is widely kept as a pet or for catching mice, and many breeds have been developed’ (information extracted from Oxford Dictionary on 24/08/2020 at https://www.lexico.com/en/definition/cat). Since it has no descriptive or weak connotations with regard to the goods at issue, its distinctiveness in both signs is average.

The applicant argues extensively that the element ‘CAT’ has no distinctiveness and that it has become a generic term for the opponent’s goods. To this end it refers to some dictionaries entries, such as Collins English Dictionary, Pons Dictionary and www.thefreedictinary.com, arguing that ‘CAT’ is a common abbreviation for ‘CATERPILLAR’, meaning: ‘an endless track, driven by sprockets or wheels, used to propel a heavy vehicle and enable it to cross soft or uneven ground’ (Collins English Dictionary). It further argues that there is no reference to the use of ‘CAT’ as a registered trade mark in the cited dictionaries.

The applicant argues that the opponent did not enforce its rights in accordance with Article 12 EUTMR because, according to the Wayback Machine, both terms, ‘CAT’ and ‘CATERPLLAR’, have exactly the same meaning as the one shown in Collins Dictionary (and therefore they were already generic) in 2012, that is to say, before the opponent’s trade marks were registered.

The applicant also claims that the element ‘CAT’ is short for ‘catalytic converter’ and, therefore, is descriptive for the opponent’s goods since a catalytic converter is an essential feature/part/subsystem of any machinery having a combustion engine.

First of all, earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

Furthermore, ‘CAT’ will be broadly understood by the public as ‘a small animal with fur, four legs, a tail and claws, usually kept as a pet or for catching mice’, as seen in the dictionary entries provided by the applicant. This understanding of ‘CAT’ has been confirmed by various Opposition Division decisions cited by the opponent. As regards the excerpt submitted by the applicant from Collins Online Dictionary containing references to ‘CAT’ as being an informal abbreviation for ‘Caterpillar’ and excerpts showing meanings of ‘Caterpillar’, it can be seen that the meanings of ‘Caterpillar’ (as (1) ‘an endless track, driven by sprockets or wheels, used to propel a heavy vehicle and enable it to cross soft or uneven ground’; (2) ‘a vehicle, such as a tractor, tank, bulldozer, etc, driven by such tracks’) include the indication that this term is a registered trade mark.

The opponent argues that in 2006 it initiated a project to avoid generic use of the marks, which consisted of approaching dictionaries in the majority of the countries, trade mark offices (especially the EUIPO and WIPO) and trade mark owners, the European Patent Office and patent owners. In order to prevent ‘CAT’ and ‘CATERPILLAR’ references in dictionaries from being misinterpreted, the opponent requested dictionaries to provide an indication that both ‘CAT’ and ‘CATERPILLAR’ are registered trade marks of the opponent. The opponent submitted, inter alia, letters requesting the editors of the dictionaries cited by the applicant to include a reference to ‘CAT’ being a registered trade mark, or to delete the reference to ‘CAT’ as short for caterpillar (Collins English Dictionary), along with the confirmations sent from the respective editors.

The opponent alleges that the majority of the most important dictionaries do not include any reference to ‘CAT’ relating to ‘CATERPILLAR’ (e.g. Oxford Dictionary, Cambridge Dictionary), and those that include this reference are clearly referring to the ‘CATERPILLAR’ trade mark (i.e. Merriam Webster, the Free Dictionary, Dictionary.com, Wordweb).

As to the applicant’s argument that the element ‘CAT’ is descriptive for the opponent’s goods as it is short for ‘catalytic converter’, although the opponent’s goods could incorporate catalytic converters, there is nothing in the description of those goods to the effect that they relate to goods specifically including this feature. Therefore, the applicant’s argument is rejected as unfounded.

Consequently, the applicant’s arguments and the submitted examples do not support the argument that the terms ‘CAT’ or ‘CATERPILLAR’ have become generic or descriptive for the goods at issue.

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

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal element of the earlier mark has a stronger impact on the consumer than the figurative component.

The earlier mark has no elements that could be considered dominant (eye-catching).

The component ‘XROSS’ in the contested sign is highly likely to be perceived as a misspelling of the word ‘cross’, in particular bearing in mind the goods at issue. The term ‘cross’ refers to the ability of vehicles to drive on and off paved or gravel surfaces. Such vehicles are generally characterised by having large tyres with deep, open treads, a flexible suspension, or even continuous tracks. Nowadays the word ‘cross’ is commonly used as referring to utility vehicles with off-road features, also known as ‘SUV’ or ‘crossover’ vehicles. Since the contested goods are different kinds of vehicles and goods specifically intended for them, this element has reduced distinctiveness (14/11/2018, R 2500/2017‑1, CROSS, § 21-11).

Visually, the signs coincide in the element ‘CAT’ and differ in the first component of the contested sign, ‘XROSS’. They also differ in the earlier mark’s figurative element and the stylisation, which, however, have less impact on the consumer’s perception.

Even though the differences lie in the beginning of the signs, which is the part that first catches the consumers’ attention, the contested sign reproduces the sole verbal element of the earlier mark and the beginning of the contested sign has a lower degree of distinctiveness. Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘CAT’ and differ in the sound of the letters ‘XROSS’, which make up a component of reduced distinctiveness in the contested sign. Although the differing element forms the beginning of the contested sign, making it noticeably longer than the earlier mark, given the limited degree of distinctiveness of ‘XROSS’, the signs are aurally 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 the same concept of ‘CAT’, the signs are conceptually similar to an average degree. The earlier mark’s figurative element does not change this assessment, as it does not introduce any particular concept capable of altering the conceptual perception of the sign. The impact of the component ‘XROSS’ is of relative importance only, since it has a reduced degree of distinctiveness.

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 in question from the perspective of the relevant public. 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 that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. 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).

The goods are identical. The degree of attention of the relevant public varies from average to high. The inherent distinctiveness of the earlier mark is normal. The signs are visually, aurally and conceptually similar to an average degree.

The applicant argues that the likelihood of confusion between the signs at issue is excluded since the similarity between the marks is limited to the non-distinctive element (‘CAT’). However, ‘CAT’ is not considered non-distinctive for the reasons set out above in the section c) of the present decision.

Therefore, since the only verbal element of the earlier mark is contained in the contested sign as the only fully distinctive element, it is reasonable to assume that when consumers encounter the contested sign in relation to identical goods, they 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.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, even taking into account the high degree of attention of the relevant public, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49; 24/02/2010, R 125/2009‑2, TWINCAT / CAT (FIG. MARK), § 34; 26/02/2010, R 992/2009‑2, BLACK CAT (FIG. MARK) / CAT (FIG. MARK) et al., § 24).

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.

The applicant’s clarifications submitted on 28/04/2020 and 03/05/2020 do not modify the outcome of the decision.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark 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 earlier European Union trade mark 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 rights 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

Lucinda CARNEY

Marzena MACIAK

Saida CRABBE

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.