In Case T-566/10, Mrs Jutta Ertmer registered the CTM word mark ERKAT for the following goods in Class7 “Excavators, mineworking machines, road-making machines; earth moving machines; mine borers;conveyor machines;milling machines for milling rock and ground layers, in particular milling attachments for excavators;ditchers (ploughs);hydraulic controls for machines, motors and engines;machine wheelwork;reduction gears other than for land vehicles” and services in Class 42: “ Engineering, technical consultancy;construction drafting, in particular for construction machines”

Caterpillar Inc, filed an action for invalidity on the basis of the following earlier marks:

CTM CAT registered in class 42;

National UK mark CAT registered in class 7;

Figurative CTM and national marks (Germany, UK, Benelux) for goods and services in classes 7 and 42

The Cancellation Division had rejected the invalidity action because of the absence of confusion due to the lack of similarity between the trademarks and the lack of prejudice to the reputation of the earlier marks .

The Board of Appeal overturned the CD decision holding that there was a risk of confusion and taking unfair advantage of the earlier mark due to the similar common element “ cat/kat” from a visual and aural point of view, included entirely in the earlier marks (such as in cases “vitakraft/krafft”, “westlife/life”).

The General Court upheld the appeal on the grounds that the BoA didn’t take into account the overall impression of the trademarks and broke down artificially the contested CTM whereas ERKAT will most likely be perceived as one word. Furthermore, the consumer tends to pay attention to the beginning of the signs and the two marks are of a different length, thus differing visually and aurally.

In addition, the goods and services consist of a certain price machinery and are directed to a specialized public which will pay more attention to the trademarks; the Court rejected Caterpillar’s arguments that operators on a construction site might order an ERKAT milling machine, actually believing it to be a CAT product, saying that this relates to a mistake when ordering material but does not demonstrate any consumer confusion.

Finally, the BoA did not justify sufficiently that there is a serious risk of prejudice to the reputation of the earlier mark and due to the dissimilarity of the marks, the contested decision must be annulled.

For the original IPkat, see here.

For Romeo the cat, see the "best cat of the colosseum" here.