Judgment of the General Court (Second Chamber) of 13 July 2022.Tigercat International Inc. v European Union Intellectual Property Office.EU trade mark – Opposition proceedings – Application for EU word mark Tigercat – Earlier EU figurative mark CAT – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001).Case T-251/21.

Judgment // 13/07/2022 // 4 min read
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Judgment of the General Court (Second Chamber) of 13 July 2022 –Tigercat International v EUIPO – Caterpillar (Tigercat)

(Case T‑251/21) ( 1 )

(EU trade mark – Opposition proceedings – Application for EU word mark Tigercat – Earlier EU figurative mark CAT – Relative ground for refusal – Likelihood of confusion – Article 8(1) (b) of Regulation (EC) No 207/2009 (now Article 8 (1) (b) of Regulation (EU) 2017/1001))

  1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Criteria for assessment

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paras 20, 21, 85)

  1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Word mark Tigercat and figurative mark CAT

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paras 32, 44-48, 52, 59, 60, 95, 96)

  1. EU trade mark – Procedural provisions – Statement of reasons for decisions – Scope

(European Parliament and Council Regulation 2017/1001, Art. 94)

(see para. 22)

  1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Assessment of the likelihood of confusion – Determination of the relevant public – Attention level of the public

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paras 23, 24, 28-30)

  1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Similarity of the marks concerned – Criteria for assessment – Composite mark

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paras 33-35, 78)

  1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Similarity of the marks concerned – Assessment of the distinctive character of an element of which a trade mark is composed

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paras 37, 38)

  1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Similarity of the marks concerned – Visual similarity between a figurative mark and a word mark

(Council Regulation No 207/2009, Art. 8(1)(b))

(see para. 61)

  1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions – Link between the marks

(Council Regulation No 40/94, Art. 8(1)(b) and (5))

(see para. 82)

  1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Enhanced distinctiveness of the earlier mark – Criteria for assessment

(Council Regulation No 40/94, Art. 8(1)(b))

(see paras 90, 91)

  1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Coexistence of earlier marks on the market – Effect

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paras 102-106)

Operative part

The Court:

  1. Dismisses the action;

  2. Orders Tigercat International Inc. to pay the costs.

( 1 ) OJ C 263, 5.7.2021.

Trade marks