04 January 2023

What do a caterpillar, an abbreviation, and a white cat all have to do with each other? Questions like this are what make intellectual property such a fascinating area of law. Do certain trademarks or packaging bear a resemblance to each other, or not? And how can you give a new, ground-breaking design the very best protection?

This case concerns an opposition filed by a company called CATERPILLAR based on their trademark, CAT (an abbreviation of CATERPILLAR), against a European application that had been filed for a trademark known as WHITE CAT.

When comparing trademarks, trademark authorities always seek to determine which elements are dominant. The WHITE CAT trademark consists of WHITE, an adjective, and CAT, a noun. The common assumption is that the noun is dominant, as this is what is being described by the adjective ─ an assumption that also applies in this case.

CATERPILLAR claimed that its logo was an older trademark. According to established case law, a distinctive word dominates the overall impression made by a logo in the majority of cases. Graphic elements may also contribute to a trademark’s distinctiveness, but in this case, the European Trademarks Office found that the graphic elements of the CAT logo were purely decorative.

So what we are left with is the CAT logo, in which CAT is the dominant element, and WHITE CAT, in which CAT is the dominant element. What’s more, the products are partially identical. It was not surprising, therefore, when the European Trademarks Office granted the opposition based on the risk of confusion between the trademarks and rejected WHITE CAT’s application.

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