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.
