Judgment of the General Court (Fifth Chamber) of 12 September 2012 — Ertmer v OHIM — Caterpillar (erkat)

(Case T‑566/10)

Community trade mark — Invalidity proceedings — Community word mark erkat — Earlier Community and national word and figurative marks CAT — Relative grounds for refusal — Likelihood of confusion — Damage to reputation — Article 8(1)(b) and (5) of Regulation (E) No 207/2009 — Duty to state reasons

1.                     Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 15, 19-20)

2.                     Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 18, 27)

3.                     Community trade mark — Definition and acquisition of the Community 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 erkat — Word and figurative marks CAT (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 40, 42-45, 51-55)

4.                     Community trade mark — Definition and acquisition of the Community 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 207/2009, Art. 8(5)) (see para. 58)

5.                     Community trade mark — Definition and acquisition of the Community 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 — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see paras 59-60)

Re:

ACTION brought against the decision of the First Board of Appeal of OHIM of 7 September 2010 (Case R 270/2010-1) relating to invalidity proceedings between Caterpillar, Inc. and Jutta Ertmer.

Operative part

The Court:

1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 7 September 2010 (Case R 270/2010-1);

2. Dismisses the action as to the remainder;

3. Orders OHIM and Caterpillar, Inc. to pay the costs.