24 August 2018Trademarks

UKIPO sides with Caterpillar over ‘HyperCat’ TM

Machinery company Caterpillar has succeeded in its opposition against a trademark for ‘HyperCat’ at the UK Intellectual Property Office (UKIPO).

On Wednesday, August 22, the UKIPO concluded that IT company Hypercat Alliance, which sought to register ‘HyperCat’ for numerous classes covering goods such as software, pen cases, business management services and education, had applied for the trademark in bad faith.

Caterpillar opposed the trademark on four grounds. Under the first three, Caterpillar claimed that use of the applied-for mark would cause confusion, deception, or otherwise take unfair advantage.

However, the UKIPO only addressed the fourth ground—Caterpillar’s argument that the trademark application was made in breach of a binding undertaking and, consequently, that it acted in bad faith.

Lia Young, a solicitor in the legal services division of subsidiary Caterpillar UK, became aware of a (now withdrawn) UK trademark application for a figurative mark of a cartoon-like cat’s head alongside the words ‘Hyper/Cat’ which had been filed for software and sensors.

Caterpillar wrote to HyperCat Alliance in December 2015, highlighting concerns and asking the IT company to agree to undertakings—while Caterpillar said that using the words ‘Hyper/Cat’ was not acceptable, HyperCat Alliance was told it could use ‘HyperCat’ provided that the word element was used in conjunction with a feline device. The undertakings also specified that the mark wasn’t allowed to cover certain types of sensors.

Later that same month, HyperCat Alliance agreed to the undertakings.

In a submission to the IPO, HyperCat Alliance claimed that the letter misrepresented the strength of the opponent’s position, with unjustified threats being made.

Caterpillar’s representative, Jessie Bowhill, instructed by Hogan Lovells, highlighted that the unjustified threats provisions under section 21(1) of the Trade Marks Act 1994 relate to threats of infringement but that the letter made no reference to infringement proceedings, according to the IPO.

On behalf of the IPO, Oliver Morris said that Bowhill appeared to accept that if the undertakings had been signed under duress then this may have been a relevant factor in determining the bad faith claim.

“However, I agree with Bowhill that there is nothing in the letter that gets close to this, indeed, whilst the opponent seeks particular undertakings, the letter as a whole strikes me as fairly conciliatory in nature,” said Morris.

HyperCat Alliance had also argued that the applied-for mark is a permitted sign because the term ‘figurative’ is vague.

“In my view, the language is not vague. Figurative would, on any interpretation, indicate a mark which consists of more than just plain words. The applied-for mark is not a figurative mark as it does consist of purely a plain word,” added Morris.

He ordered HyperCat Alliance to pay Caterpillar £2,000 ($2,565).

Subject to appeal, the application for registration is to be refused in its entirety.

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