Caterpillar successfully opposes the registration of FUNKY CAT based on its CAT marks – WTR

Recorte del artículo sobre "Caterpillar se opone con éxito al registro de FUNKY CAT basado en su marca CAT" en WTR


DATE: 18-01-2023


-Katherine González

The National Service of Intellectual Rights (SENADI) has declared, after resolving three oppositions against applications for trademark FUNKY CAT in classes 9, 35 and 37, that said trademark is not registrable. The reason: there is a risk of confusion or association with the CAT trademark. In this case, our associate Katherine González H. writes for World Trademark Review (WTR).

On December 22, 2021, Great Wall Motor Company Limited filed applications for registration of mark FUNKY CAT. Caterpillar Inc. filed oppositions based on its trademark CAT in several classes and also claimed that its trademark CAT is well-known.

On June 7, 2022, Great Wall Motor answered the oppositions and claimed that the applied-for marks were distinctive enough, insisting on the oppositions to be rejected and the applications granted.

FUNKY CAT registration resolution

Our associate explains that, through Resolutions No. 2000627, 2000632 and 2000631, SENADI accepted the oppositions and rejected the registration of trademark FUNKY CAT in Classes 9, 35 and 37.

SENADI argued that consumers could be confused between the goods and services offered by each company, as there are similarities between the conflicting marks, and “could be led to believe that they are provided by the same company.” SENADI concluded that there is a high risk of confusion or association and accepted the oppositions. It also considered that the inclusion of the term “Funky” was not sufficient to avoid the likelihood of confusion among consumers.

González concludes her analysis with an interesting comment: “Besides recognizing the opposing’s party’s rights, avoiding registration of similar trademarks, these cases are interesting, since usually the Ecuadorian IP Office tends to dismiss oppositions just based on the coexistence of the conflicting word in the relevant classes. However, in these cases the IP Office did not focus on this aspect and considered the overall similarities between the conflicting marks as a whole, as ordered by the Court of Justice of the Andean Community.”

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