Tigercat International v EUIPO - Caterpillar (Tigercat) (EU trade mark - Judgment) [2022] EUECJ T-251/21 (13 July 2022)

Judgment By its action under Article 263 TFEU, the applicant, Tigercat International Inc., seeks the annulment and modification of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 February 2021 (Case R 16/2020‑2), relating to opposition proceedings between the intervener, Caterpillar Inc., and the applicant (‘the contested decision’). Background to the dispute On 26 August 2013, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)). Registration as a mark was sought for the word sign Tigercat. The goods in respect of which registration was sought are in Class 7 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Specialised power-operated forestry equipment, namely, purpose built four wheel drive-to-tree and track type log bunchers, log loading machines, skidders and other forestry industry equipment, namely, bunching saws, bunching shears and components parts thereof’. On 17 December 2013, the intervener filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on the following earlier marks: – the EU figurative mark, filed on 19 April 2006 and registered on 8 July 2010 under number 5028147, reproduced below: – EU word mark CAT, filed on 11 December 2006 and registered on 13 August 2010 under number 9344755. The goods covered by the earlier marks are in Classes 7 and 12 and include, inter alia, ‘forestry machines’. The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(5) of Regulation 2017/1001). On 7 November 2019, the Opposition Division upheld, in its entirety, the opposition filed against the mark applied for on the basis of Article 8(1)(b) of Regulation No 207/2009. On 3 January 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division. By the contested decision, the Board of Appeal dismissed the appeal in its entirety. In essence, the Board of Appeal, taking into account the identical nature of the goods in question, the average degree of visual and phonetic similarity of the signs at issue, the high degree of conceptual similarity of the signs at issue and the enhanced level of distinctiveness of the earlier mark, found that, notwithstanding the high level of attention of the relevant public, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. Furthermore, the Board of Appeal took the view that the applicant had not adduced any evidence demonstrating that the signs at issue coexisted on the same market without there being any likelihood of confusion between them. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO and the intervener to pay the costs. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. Law As a preliminary point, it should be noted that, given the date on which the application for registration at issue was filed, namely 26 August 2013, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM , C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO , C‑702/18 P, EU:C:2020:489 , paragraph 2 and the case-law cited). Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the proceedings in their written pleadings to Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, the wording of which is substantively identical. In support of the action, the applicant relies on a single plea in law, alleging, in essence, infringement of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009. At the hearing, the applicant withdrew the complaint alleging infringement of Article 8(5) of Regulation No 207/2009. It follows that only the complaint alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be examined. In its single plea in law, the applicant disputes, first, the Board of Appeal’s finding that there is, under Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion on the part of the relevant public in the present case. In particular, it calls into question the Board of Appeal’s assessments relating to that public’s level of attention, the dominant and distinctive elements of the signs at issue, the distinctive character of the earlier EU figurative mark and to the comparison of those signs. Secondly, the applicant submits that the absence of a likelihood of confusion is borne out by the peaceful coexistence of the signs at issue and the coexistence of the earlier mark with third-party marks. EUIPO and the intervener dispute the applicant’s arguments. The infringement of Article 8(1)(b) of Regulation No 207/2009 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) , T‑162/01, EU:T:2003:199 , paragraphs 30 to 33 and the case-law cited). For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14 , paragraph 42 and the case-law cited). In that context, it should be borne in mind that an opposition may, as in the present case, be based on a number of earlier rights. Furthermore, for reasons of procedural economy, the Opposition Division and, in the second instance, the Board of Appeal are free to choose on which of the various earlier trade marks relied on they base their decision (see judgment of 17 November 2021, Soapland v EUIPO – Norma (Manòu) , T‑504/20, not published, EU:T:2021:789 , paragraph 34 and the case-law cited). Given that the Opposition Division and the Board of Appeal considered it appropriate to examine the opposition in relation to the earlier EU figurative mark, described in paragraph 5 above, it is on that basis that the Court will carry out its review of the legality of the contested decision. The relevant public In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR) , T‑256/04, EU:T:2007:46 , paragraph 42 and the case-law cited). ‘Average consumer’ cannot be understood as only the consumer who is part of the ‘general public’, but the consumer who is part of the public typically targeted by the goods and services in question. Thus, the ‘average consumer’ may be a professional, if the goods and services in question are typically intended for such a public (see, to that effect, judgment of 8 November 2017, Steiniger v EUIPO – ista Deutschland (IST) , T‑80/17, not published, EU:T:2017:784 , paragraph 25). In the present case, the Board of Appeal found that, since the earlier mark was an EU trade mark, the relevant territory was that of the European Union. However, for reasons of procedural economy, it focused on the English-speaking part of the European Union, namely Ireland and Malta. As regards the composition of the relevant public and its level of attention, the Board of Appeal took the view that the goods in question were intended for business customers with specific professional knowledge or expertise who, in the light of the nature of those goods, had a high level of attention. There is no reason to call into question those assessments, which, moreover, are not disputed by the parties. The applicant nevertheless submits that the Board of Appeal did not take account of the fact that the relevant professional public is very attentive to the differences between the signs at issue, especially due to the high price and highly technological nature of the goods concerned. It criticises the Board of Appeal for having taken the view that, despite its high level of attention, that public was likely to have an imperfect recollection of the earlier mark. EUIPO and the intervener dispute the applicant’s arguments. It should be noted, in that regard, that the relevant public, composed of professionals in the area concerned by the goods in question, is likely to evince a high degree of attentiveness when selecting those goods. In addition, as regards the degree of attention of the relevant public at the time of purchase, the high price and the highly technological character of the goods concerned should be taken into account (see judgment of 12 September 2012, Ertmer v OHIM – Caterpillar (erkat) , T‑566/10, not published, EU:T:2012:419, paragraph 43 and the case-law cited). Thus, having regard to the specialised nature of the goods concerned and their high cost, the choice of such goods involves a scrupulous selection process during which the consumer concerned will examine various goods on the market (see, to that effect, judgment of 12 September 2012, erkat , T‑566/10, not published, EU:T:2012:419, paragraph 44). However, the fact that the public with a high level of attention will be more aware of the differences between the marks does not mean that that public will examine the mark before it down to the smallest detail, or that it will compare that mark in minute detail to another mark. Even a public displaying a high level of attention must rely on its imperfect recollection of the marks (judgment of 31 January 2012, Spar v OHIM – Spa Group Europe (SPA GROUP) , T‑378/09, not published, EU:T:2012:34, paragraph 20; see also judgment of 10 November 2021, Stada Arzneimittel v EUIPO – Pfizer (RUXYMLA) , T‑248/20, not published, EU:T:2021:772 , paragraph 58 and the case-law cited). Thus, contrary to what the applicant, in essence, submits, the fact that the relevant public has a high level of attention is not such as to exclude the existence of a likelihood of confusion (see, to that effect, judgment of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO – Luigi Lavazza (CReMESPRESSO) , T‑189/16, not published, EU:T:2017:488 , paragraph 87). The comparison of the goods In paragraph 31 of the contested decision, the Board of Appeal found that the goods in question were identical. Such a finding, which, moreover, is not disputed by the parties, must be upheld. According to the case-law, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) , T‑346/04, EU:T:2005:420, paragraph 34 and the case-law cited). The comparison of the signs The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 35 and the case-law cited). Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 43). In addition, in order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, phonetic or conceptual similarity between them and, where appropriate, to evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer , C‑342/97, EU:C:1999:323, paragraph 27). In the present case, before addressing the issue of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the marks at issue. The distinctive and dominant elements of the marks at issue According to the case-law, for the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see order of 3 May 2018, Siberian Vodka v EUIPO – Schwarze und Schlichte (DIAMOND ICE) , T‑234/17, not published, EU:T:2018:259 , paragraph 38 and the case-law cited). With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) , T‑6/01, EU:T:2002:261 , paragraph 35). It is in the light of those considerations that the presence of any distinctive and dominant elements in the marks at issue should be assessed. – The mark applied for As regards the mark applied for, the Board of Appeal took the view, first of all, that the relevant public was likely to break it down into two elements, ‘tiger’ and ‘cat’, given that those two words existed in English and had a clear meaning in that language in that they both designated a cat. More specifically, it took the view that the element ‘tiger’ designated a large cat and had a normal degree of distinctiveness and that the element ‘cat’ referred to a cat and would be perceived as a separate word which plays an independent distinctive role in the sign applied for. The applicant argues that the Board of Appeal erred in taking the view that the relevant public was likely to break down the mark applied for into two elements, namely ‘tiger’ and ‘cat’. It submits that the mark applied for will be perceived by the relevant public as a unit, given that the element ‘cat’ is not highlighted visually, for example, by a capital letter or a space separating it from the element ‘tiger’. Furthermore, it contends that it is the element ‘tiger’ that is the most distinctive and dominant element of that mark since the word ‘cat’ may be perceived as a mere emphasis of that element. Lastly, the applicant submits, in essence, that the Board of Appeal erred in finding that the common word element ‘cat’, contained in the signs at issue, had distinctive character with regard to the goods at issue. EUIPO and the intervener dispute the applicant’s arguments. In that regard, as regards, first, the distinctive elements of the mark applied for, it should be noted that, as the Board of Appeal also found in paragraph 40 of the contested decision, the elements ‘tiger’ and ‘cat’ are readily identifiable within that mark, given that those two words have a clear meaning for the relevant public, which is English-speaking. The word ‘tiger’ designates a large cat and the word ‘cat’ a carnivorous mammal, whether wild or domestic, with a short and rounded snout. While the consumer normally perceives a mark as a whole and does not proceed to analyse its various details, he or she will nevertheless, perceiving a word sign, break it down into verbal elements which, for him or her, suggest a concrete meaning or which resemble words known to him or her (see judgment of 6 September 2013, Eurocool Logistik v OHIM – Lenger (EUROCOOL) , T‑599/10, not published, EU:T:2013:399, paragraph 104 and the case-law cited). It follows that, contrary to what the applicant submits, first, the relevant public is likely to break down the mark applied for into ‘tiger’ and ‘cat’ and, secondly, the fact that the letter ‘c’ in the sign ‘Tigercat’ is not capitalised does not preclude the relevant public from being able to identify the elements ‘tiger’ and ‘cat’, each of which has a specific meaning. Moreover, it should be found, as regards the element ‘cat’, that it has distinctive character with regard to the goods concerned, since it refers to an animal, the cat, whereas those goods designate forestry equipment. It follows that the Board of Appeal was correct to conclude that the element ‘cat’ had distinctive character in the mark applied for. As regards, secondly, the dominant elements of the mark applied for, it must be concluded that the word element ‘tiger’ has no dominant character in that mark. It should be observed that, as a word mark, the mark applied for consists entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (see, to that effect, judgment of 27 February 2020, Knaus Tabbert v EUIPO – Carado (CaraTwo) , T‑203/19, not published, EU:T:2020:76 , paragraph 59). Thus, the allegation that the word ‘tiger’ has a dominant character cannot be based on any particular graphic or stylistic aspect that the element ‘tiger’ might have. Furthermore, although the beginning of marks may be more likely to catch the consumer’s attention than the end of marks, that consideration cannot apply in all cases and cannot undermine the principle that the examination of the similarity between the marks must take account of the overall impression given by them (judgment of 7 March 2019, Laverana v EUIPO – Agroecopark (VERA GREEN) , T‑106/18, not published, EU:T:2019:143 , paragraph 57). In the present case, the mere fact that the element ‘tiger’ has been placed at the beginning of the mark applied for is not sufficient to confer on it a dominant character. There is nothing to indicate that the average consumer of the relevant public will attach more importance to the element ‘tiger’ at the beginning of the mark applied for. That aspect is counterbalanced by the fact that the mark applied for is composed only of two relatively short words, which, although they are directly juxtaposed, each has a clear meaning for the relevant public. Thus, contrary to what the applicant submits, the element ‘cat’, which has a specific meaning distinct from the element ‘tiger’, does not have merely a laudatory connotation intended to highlight the element ‘tiger’. In those circumstances, it can be considered that the relevant public will pay similar attention to both elements of the mark applied for. The Board of Appeal was therefore correct not to identify a dominant element in the mark applied for. – The earlier mark As regards the earlier mark, the Board of Appeal stated that the word element of that sign, namely the element ‘cat’, has a stronger impact on the consumer than its figurative elements, which are not capable of diverting the attention of the relevant public from that word element. The applicant submits that the Board of Appeal made an error of assessment in taking the view that the figurative elements of the earlier mark were not capable of diverting the attention of the relevant public from the word element ‘cat’. In its view, the yellow triangle has distinctive character and is sufficient to exclude a likelihood of confusion on the part of the relevant public. Due to its bright yellow colour, its position at the beginning of the earlier mark and the fact that it covers partially the letter ‘a’ of the word element ‘cat’ of that mark, it attracts clearly the attention of the relevant public and is not a basic figurative element. EUIPO and the intervener dispute the applicant’s arguments. Where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, as the average consumer will more easily refer to the product in question by quoting the trade mark name than by describing the figurative element of the mark (see, to that effect, judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE) , T‑312/03, EU:T:2005:289 , paragraph 37). Furthermore, it must be borne in mind that, in the light of the case-law cited in paragraph 34 above, the assessment as to whether the signs at issue are similar could be carried out solely on the basis of the figurative elements of the earlier mark only if all the other elements of that mark were negligible (see, to that effect, judgment of 5 February 2020, Globalia Corporación Empresarial v EUIPO – Touring Club Italiano (TC Touring Club) , T‑44/19, not published, EU:T:2020:31, paragraph 99). However, as the applicant, moreover, admits, that is not so in the present case. The word element ‘cat’, by virtue of its size and position, is not negligible within the earlier mark and has distinctive character. Thus, the element ‘cat’ has a stronger impact on the consumer than the figurative elements of that mark, without those figurative elements being rendered negligible. The applicant’s arguments that the figurative elements are highly distinctive in so far as the intervener’s various registrations contain a yellow triangle, which, in the applicant’s view, the intervener describes as famous, are not capable of calling that finding into question. In the context of the analysis of the likelihood of confusion and thus of the analysis of the various marks at issue, only the intrinsic qualities of the marks are relevant and not the circumstances relating to the conduct of their proprietor or to the earlier use of other marks (see, to that effect, judgments of 2 September 2010, Calvin Klein Trademark Trust v OHIM , C‑254/09 P, EU:C:2010:488 , paragraph 46, and of 2 March 2022, Banco de Investimento Global v EUIPO – Banco BIC Português (EUROBIC) , T‑125/21, not published, EU:T:2022:102 , paragraphs 21 and 23). Likewise, contrary to what the applicant submits, the fact that the Court took the view in paragraph 37 of the judgment of 12 September 2012, erkat (T‑566/10, not published, EU:T:2012:419), that the earlier mark had an original graphic design does not call into question the Board of Appeal’s finding that the word element ‘cat’ has a stronger impact on the consumer than the figurative elements of that mark. In that judgment, the Court did not take the view that the figurative elements of the earlier mark were more distinctive than the word element ‘cat’. In addition, it should be noted that the figurative elements of the earlier mark are essentially decorative and have only a limited impact on the relevant public’s visual perception of that mark. Accordingly, the Board of Appeal was therefore right to conclude that the figurative elements of the earlier mark are not capable of diverting the attention of the relevant public from the word element ‘cat’. In any event, and in that regard, it should be found that, as is apparent from paragraph 60 of the contested decision, the figurative elements of the earlier mark were duly taken into account by the Board of Appeal when assessing the visual similarity of the signs; accordingly, the Board of Appeal cannot be criticised for not having carried out a comparison of the signs at issue as a whole. Visual similarity As regards the visual comparison of the signs at issue, it should be borne in mind, first, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM – Star TV (STAR TV) , T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited). In the present case, the Board of Appeal noted that the signs at issue had the element ‘cat’ in common, whereas they differed in the presence of the first element of the mark applied for, namely the word element ‘tiger’, and in the figurative elements of the earlier mark. It concluded from that that they had an average degree of visual similarity. That assessment is irreproachable. Although the applicant takes the view that the signs at issue are visually different because of their different length and the presence of capital letters and of figurative elements in the earlier mark, the fact remains that they coincide in the element ‘cat’, which constitutes the only word element of the earlier mark and has distinctive character. The fact that the earlier mark is wholly included in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue (see judgment of 14 June 2018, Lion’s Head Global Partners v EUIPO – Lion Capital (LION’S HEAD global partners) , T‑310/17, not published, EU:T:2018:344 , paragraph 31 and the case-law cited), even where the relevant public has a high level of attention (see, to that effect, judgment of 20 February 2018, Kwang Yang Motor v EUIPO – Schmidt (CK1) , T‑45/17, not published, EU:T:2018:85, paragraphs 45 to 47). The presence of the element ‘tiger’ – which is not dominant – at the beginning of the mark applied for does not lead to the conclusion that the signs at issue are dissimilar. It follows that the Board of Appeal was right to find that the signs at issue were visually similar at least to an average degree. None of the applicant’s other arguments is capable of calling that finding into question. First, contrary to what the applicant submits, there is no absolute rule that signs must be regarded as different if an identical group of letters is preceded by different letters (see, to that effect and by analogy, judgment of 18 December 2008, Les Éditions Albert René v OHIM , C‑16/06 P, EU:C:2008:739 , paragraph 92). Thus, where, as in the present case, the earlier mark is wholly included in the mark applied for, the fact that a group of identical letters is preceded by different letters is not sufficient to conclude that there is no similarity between the signs at issue. Secondly, contrary to what the applicant submits, the presence of the yellow triangle in the earlier mark is not capable of counteracting the visual similarity between the signs at issue. As found in paragraph 59 above, the figurative elements of the earlier mark are not capable of diverting the attention of the relevant public from the word element ‘cat’. Thirdly, the fact that the Court concluded, in the judgment of 12 September 2012, erkat (T‑566/10, not published, EU:T:2012:41), that the word elements ‘erkat’ and ‘cat’ were different is irrelevant. In that case, the earlier mark was not contained in the mark applied for and the signs coincided only in the letters ‘a’ and ‘t’. Phonetic similarity Phonetically, according to the Board of Appeal, the signs at issue have the pronunciation of the word ‘cat’ in common, which is indisputable. It also noted that the sign which was the subject of the trade mark application was longer than that of the earlier mark, that there were differences in terms of rhythm and that the signs at issue began with different syllables. It concluded from that that those signs were phonetically similar to an average degree. The applicant calls into question that assessment by the Board of Appeal and relies, in that regard, on the difference in the number of syllables of the signs at issue and the way in which they will be stressed when pronounced, and on the different sequence of vowels in those two signs. According to the case-law, the fact that the number of syllables is different is not sufficient to conclude that there is no phonetic similarity between the signs (judgment of 19 May 2011, PJ Hungary v OHIM – Pepekillo (PEPEQUILLO) , T‑580/08, EU:T:2011:227, paragraph 79). As regards the phonetic aspect, the mark applied for consists of the three syllables ‘ti’, ‘ger’ and ‘cat’, whereas the word element of the earlier mark, wholly included in the mark applied for, can be pronounced as the initialism consisting of the letters ‘c’, ‘a’ and ‘t’ or as a single syllable, ‘cat’ (see, to that effect, judgment of 12 September 2012, erkat , T‑566/10, not published, EU:T:2012:419, paragraph 38). In that regard, it should be borne in mind that, according to the case-law cited in paragraph 63 above, the fact that the earlier mark is wholly included in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue (see judgment of 14 June 2018, LION’S HEAD global partners , T‑310/17, not published, EU:T:2018:344 , paragraph 31 and the case-law cited). In the present case, it should be noted that the signs at issue differ in that the mark applied for contains, as an element placed at the beginning of that mark, the two syllables ‘ti’ and ‘ger’, whereas the earlier mark only contains the common element ‘cat’. Nonetheless, the fact remains that that common element could be pronounced when the goods at issue are purchased, thus justifying the Board of Appeal’s finding that the signs at issue are phonetically similar at least to an average degree. Conceptual similarity The applicant argues that the Board of Appeal erred in finding that the signs at issue were conceptually similar. More specifically, it submits that, in the context of that assessment, the Board of Appeal did not take into consideration, first, the goods for which the sign is claimed by the intervener and, secondly, the conceptual perception of the earlier mark by the relevant public. The applicant states that the relevant public will perceive the earlier mark ‘cat’ as an abbreviation of the word ‘caterpillar’. Furthermore, it submits that, since the Board of Appeal found that the earlier mark enjoyed an enhanced reputation, it could not, at the stage of the conceptual comparison of the signs at issue, overlook the fact that the relevant public could perceive that mark as an abbreviation of the intervener’s name, that is, of the word ‘caterpillar’, which means, inter alia, ‘a vehicle with caterpillar tracks’. EUIPO and the intervener dispute the applicant’s arguments. It should be borne in mind that, according to the case-law of the Court, although the average consumer normally perceives a mark as a whole and does not analyse its various details, the fact remains that, when perceiving a word sign, the average consumer will break it down into word elements which, for him or her, suggest a concrete and immediately understandable meaning or which resemble words known to him or her (see judgment of 15 September 2021, Freshly Cosmetics v EUIPO – Misiego Blázquez (IDENTY BEAUTY) , T‑688/20, not published, EU:T:2021:567 , paragraph 56 and the case-law cited). In the present case, it should be stated that, as the Board of Appeal noted, the average consumer of the relevant public will associate the earlier mark with a cat in that it contains the word element ‘cat’, which has, for that public, which is English-speaking, a concrete and direct meaning. The fact that the relevant public may also associate the earlier mark with other concepts such as the abbreviation of the word ‘caterpillar’ is not capable of calling into question the conclusion that, for at least one of its concrete and immediately understandable meanings, that mark evokes a cat for the relevant public. Since the mark applied for, which is composed of the elements ‘tiger’ and ‘cat’, also refers to the concept of a ‘cat’, it should be concluded that the Board of Appeal was correct to conclude that the signs at issue were conceptually highly similar. In any event, it should be noted that, even if, in the light of the goods at issue, the relevant public perceives the earlier mark as merely an abbreviation of the word ‘caterpillar’, in that it designates track type machines, that would also necessarily be the case as regards the element ‘cat’ of the sign Tigercat. It follows that, in that case, the signs at issue would also be conceptually similar in that they would both refer to the concept of track type machines. In that situation, the fact that the mark applied for also refers to the concept of a cat, on account of the element ‘tiger’, would not be capable of calling into question the existence of any conceptual similarity between the marks at issue, on account of the common element ‘cat’. Furthermore, the fact that, in the applicant’s view, the earlier mark has a reputation and that the element ‘cat’ is associated with the intervener’s name, Caterpillar, is irrelevant at the stage of assessing the conceptual similarity of the signs at issue, given that only the signs as they appear in the registration documents or in the contested application must be taken into consideration. As is apparent from the case-law, the reputation and the distinctive character of the earlier mark constitute relevant factors for the purposes of assessing, not whether the marks at issue are similar, but whether the relevant section of the public makes a link between them (judgment of 24 March 2011, Ferrero v OHIM , C‑552/09 P, EU:C:2011:177 , paragraph 58). In any event, even if the relevant public were to associate the element ‘cat’ with the intervener’s name, that same element contained in the mark applied for would also be associated by that public with that name, which would merely confirm the conceptual similarity of the signs at issue. In those circumstances, it should be found that the applicant’s arguments do not ground a finding that the Board of Appeal made an error of assessment in concluding that the marks at issue were conceptually highly similar since they both referred to a cat. The global assessment of the likelihood of confusion A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 74). In the present case, after noting, inter alia, that the earlier mark was to be regarded as having an enhanced level of distinctiveness, the Board of Appeal found, in paragraph 87 of the contested decision, that there was a likelihood of confusion on the part of the English-speaking part of the relevant public, whose level of attention was to be regarded as high. It based that finding on the identity of the goods at issue, the average degree of visual and phonetic similarity of the signs at issue and their high degree of conceptual similarity. The applicant submits that the high level of attention of the relevant public excludes any likelihood of confusion. It also states that the signs at issue are dissimilar. In particular, it submits that the conceptual differences between the marks at issue counteract their visual and phonetic similarities and, therefore, there can be no likelihood of confusion on the part of the relevant public. EUIPO and the intervener dispute the applicant’s arguments. It is apparent from the analysis referred to above, first, that the goods in question are identical and, secondly, that the signs at issue, taken as a whole, are similar. As regards the distinctive character of the earlier mark, it should be noted that, as is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark concerned on the market in question. The more distinctive the trade mark concerned, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL , C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer , C‑342/97, EU:C:1999:323, paragraph 20). The existence of a higher than normal level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the recognition of a mark by the public concerned and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT) , T‑277/04, EU:T:2006:202, paragraphs 34 and 35 and the case-law cited). In the present case, as the Board of Appeal noted in paragraph 82 of the contested decision, it is apparent from the file before EUIPO that the intervener invested in marketing and promotion campaigns and that it exhibited its goods at relevant trade shows throughout the European Union. Moreover, the applicant itself stated, before EUIPO, that the intervener had participated in numerous forestry trade shows. Thus, the applicant’s arguments seeking to challenge the relevance of certain items of evidence, in particular those relating to the German market, the intervener’s participation in the Bauma Trade Fair and to advertising in Poland, are insufficient to call into question the findings made by the Board of Appeal. Furthermore, as the Board of Appeal noted, the reputation of the earlier mark as regards Germany, Ireland, Spain and the United Kingdom has been confirmed by several decisions of EUIPO. Although, as the applicant observes, those decisions did not expressly concern machines specifically for forestry, the fact remains that they concerned machines which can be used in the field of forestry, and therefore the conclusions drawn from those decisions can be applied to the goods in question in the present case. Accordingly, it should be held that the Board of Appeal was correct to conclude that the earlier mark had an enhanced level of distinctiveness for the relevant goods in Class 7, including forestry-related equipment. In view of the identity of the goods in question, the average degree of visual and phonetic similarity of the signs at issue, the high degree of conceptual similarity and the enhanced level of distinctiveness of the earlier mark, it should be found that the Board of Appeal correctly concluded that there was a likelihood of confusion, even though the level of attention of the relevant public is high. In particular, it must be noted that, especially in view of the identity of the goods in question, it cannot be ruled out that consumers, despite having a high level of attention, might consider that the mark applied for corresponds to a variation of the earlier mark or that the goods covered by the mark applied for correspond to a line of products marketed by the proprietor of the earlier mark (see, to that effect, judgment of 10 March 2016, LG Developpement v OHIM – Bayerische Motoren Werke (MINICARGO) , T‑160/15, not published, EU:T:2016:137 , paragraph 58). Furthermore, such a conclusion cannot be called into question even if, as the applicant submits, the marks at issue were not highly similar conceptually. The fact alone that the goods are identical, that the signs at issue are phonetically and visually similar to an average degree and that the earlier mark has an enhanced level of distinctiveness is sufficient for it to be concluded that there is a likelihood of confusion between the marks at issue, including in the light of the high level of attention of the relevant public. In those circumstances, it should be found that the Board of Appeal was right to conclude that there is a likelihood of confusion. Peaceful coexistence In support of its single plea in law, the applicant also argues that the absence of a likelihood of confusion is borne out by the fact that the marks at issue have coexisted on the EU market for a long time. It submits, in essence, that the Board of Appeal did not take into account evidence submitted which shows that there has been a peaceful coexistence of the signs at issue for almost three decades. Furthermore, the applicant submits that there are many marks similar to the earlier mark and comprising the element ‘cat’ which are being used to designate identical goods in Class 7, such as the marks BOBCAT and ARCTIC CAT. EUIPO and the intervener dispute the applicant’s arguments. In that regard, it must be observed that, in the contested decision, the Board of Appeal concluded that the applicant had not, in essence, adduced any evidence demonstrating that the mark applied for had been used throughout the EU market and, further, that the applicant had not demonstrated that the signs at issue coexisted on the same market without there being any likelihood of confusion between them. It should be borne in mind that, according to the case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgments of 3 September 2009, Aceites del Sur-Coosur v Koipe , C‑498/07 P, EU:C:2009:503 , paragraph 82, and of 30 June 2015, La Rioja Alta v OHIM – Aldi Einkauf (VIÑA ALBERDI) , T‑489/13, EU:T:2015:446 , paragraph 70). However, coexistence must be based on the absence of any likelihood of confusion on the part of the relevant public, which implies that that public is aware of the fact that the marks belong to different undertakings (see judgment of 9 March 2018, Recordati Orphan Drugs v EUIPO – Laboratorios Normon (NORMOSANG) , T‑103/17, not published, EU:T:2018:126 , paragraph 86 and the case-law cited). Any argument based on coexistence requires prior demonstration, inter alia, of genuine use of the mark on which the applicant relies in the relevant territory, namely the territory in which the earlier mark is protected (see judgment of 9 March 2018, NORMOSANG , T‑103/17, not published, EU:T:2018:126 , paragraph 87 and the case-law cited). Thus, where the opposition to the registration of an EU trade mark is based on an earlier EU trade mark and the coexistence of that earlier mark with a trade mark identical to the mark applied for is relied on in support of there being no likelihood of confusion between the marks at issue, it is for the party relying on that coexistence to establish proof of it throughout the European Union. Where the earlier mark is an EU trade mark and, therefore, the relevant territory for the assessment of the likelihood of confusion is the whole of the European Union, an alleged coexistence in part of the territory of the European Union would not have the effect of ruling out a likelihood of confusion throughout the European Union (see judgment of 10 March 2021, Kerry Luxembourg v EUIPO – Ornua (KERRYMAID) , T‑693/19, not published, EU:T:2021:124 , paragraph 160 and the case-law cited). Thus, it follows from the foregoing that the burden of proof lies with the party claiming the existence of peaceful coexistence and, moreover, where the opposition to the registration of an EU trade mark is based on an earlier EU trade mark, coexistence must be proved for the entire territory of the European Union (judgment of 10 March 2021, KERRYMAID , T‑693/19, not published, EU:T:2021:124 , paragraph 161). The evidence submitted by the applicant, namely, inter alia, affidavits, the list of trade fairs in which it participated between 2004 and 2014, a publication concerning its acquisition of the company Hemek in Sweden in 2000, the registration of international trade mark Tigercat No 754834 and the correspondence between the parties in 1992 and 1997, neither concerns nor covers the territory of the European Union as a whole. That evidence therefore does not in any way allow corroboration of its assertion that there is no likelihood of confusion in the relevant territory. Furthermore, although the applicant is the proprietor of the international registration for the mark Tigercat designating Sweden, Germany or Finland, no objective evidence of concurrent use of those marks in the English-speaking part of the European Union or in the entire territory of the European Union has been adduced. The Board of Appeal was therefore right to take the view that, in order to challenge the intervener’s opposition, the applicant ought to have proved – which it failed to do – not only the coexistence of the signs at issue, but also that that coexistence was based on the absence of a likelihood of confusion between those signs. Since the applicant has not adduced, before the adjudicating bodies of EUIPO, other evidence which could have demonstrated the peaceful coexistence on the market concerned of the marks at issue, that argument should be rejected. Lastly, the Board of Appeal was right to conclude that the mere assertion of the purported coexistence of the earlier mark with third-party trade marks did not prove that there was no likelihood of confusion in the present case, given that the marks on which the applicant relies are not identical to those examined in the present case and they do not cover goods which are similar to those covered by the marks at issue. In those circumstances, the applicant’s argument relating to the peaceful coexistence of the signs at issue and to the coexistence of the earlier mark with third-party marks must be rejected. In the light of all the foregoing, the single plea in law should be rejected and, consequently, the action should be dismissed in its entirety. Costs Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Dismisses the action; 2. Orders Tigercat International Inc. to pay the costs. Tomljenović Škvařilová-Pelzl Nõmm Delivered in open court in Luxembourg on 13 July 2022. E. Coulon S. Papasavvas Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII