CAT versus FLOWERCAT

When the mark FLOWERCAT is filed in the European Union for hand tools, toys and more, the company Caterpillar objects.Normally, a great deal of importance is given to the first part of a trademark. However, not in this case.

 

The authorities argue that CAT (from the English consumer's point of view) is the dominant distinctive part. For this reason, the marks are visually, phonetically and conceptually similar. However, this reasoning does not apply to toys, given the fact that there are, of course, toys available for cats. For that reason the word CAT is not viewed as distinctive.

However, Caterpillar has not based its trademark claim solely on generic terms (such as "toy"), but has extended their trademark claims to specific products such as construction toys, scale models of vehicles etc. The Board of Appeal decides that in cases such as these, the whole classification must be assessed.

If the mark had only been claimed for "toys", the reasoning of the Board of Appeal would mean that the ‘Cat-‘’ in ‘Cat’-erpillar would’ve been a descriptive term. In this case however, Caterpillar applied its trademark for very specific products. For instance, mini cars are not toys for cats (Like a plush mouse). Therefore, the trademark is distinctive for this type of toy. Following this reasoning, the trademark FLOWERCAT is eventually refused for all goods.

The above mentioned dispute is a perfect example of the importance of giving proper advice on how to apply for a trademark. For what specific products and services should a trademark be claimed so that it can be benefited from in a dispute? Using generic terms for a trademark can result in ending up empty-handed.

trademarks



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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?