I am a crazy cat lady. I adore the little creatures.
8 August has been declared ‘International Cat Day’. When a UKIPO decision involving a ‘cat’ was handed down on 7 August, it made for a puurfect article!
The goods and services however don’t relate to the goods/services which are normally associated with the fluffy felines.
The full decision can be found here
Background
On 12 November 2021, Great Wall Motor Company Limited (“Great Wall”) filed applications for the marks
and 
for various goods and services in classes 9, 12, 35 and 37 but all limited to goods/services being exclusively used for vehicles for the transport of passengers.
Both applications were opposed by Compagnie d’Affrètement et de Transport C.A.T. (“C.A.T.”). C.A.T. opposed the registrations under section 5(2)(b) of the Trade Marks Act in relation to all the goods and services and relied on its registrations for
in classes 12, 39 and 42 and CAT in classes 37, 39 and 42.
C.A.T. argued that:
- the marks were highly similar as the word ‘Cat’ was the dominant and distinctive element of the contested marks and that the goods and services covered by the marks were either identical or highly similar;
- as a result, there was a likelihood of confusion of the part of the relevant public in the UK. The enhanced distinctive character of the marks further increased the likelihood of confusion;
- it had used the word mark on all services for which the earlier mark was registered but only for some of the services for which the earlier logo mark was registered.
Decision
The hearing officer held that:
- although the earlier logo mark
was registered in black and white, fair and notional use would cover C.A.T.’s use of (‘blue logo mark’) as an acceptable variant of the registered logo; - the unusual arrangement of the letters contributed to the distinctive character of the logo mark. As the distinctive character of the word mark was altered by the presentation, use of the word mark was not supported by the use of the blue logo mark;
- although the word mark was used with additional words (pointing to a corporate structure or the location in which services were provided), the additional words were non-distinctive and were found to be acceptable variants of the word mark;
- some of the contested goods and services in classes 9 (including reflective articles for wear; digital signs; rescue laser signalling flares) and 35 (including sales promotions for others; marketing and advertising) were found to be dissimilar to C.A.T.’s services;
- for the remaining goods and services, they were found to be similar or identical;
- the average consumer would pay a higher than average degree of attention;
- A.T. did not show that the marks had an enhanced distinctive character;
- was visually and aurally similar to the earlier word mark CAT to a low degree and conceptually similar to a low to medium degree;
- was visually and aurally similar to the earlier word mark CAT to a medium degree and conceptually highly similar;
- as a result of the differences between the marks and the level of attention to be paid by the average consumer, there was no likelihood of direct or indirect confusion.
(‘blue logo mark’) as an acceptable variant of the registered logo;
The oppositions failed and both marks were allowed to proceed to registration.
