Jordan – Conflict Between Cat Wax and CAT Caterpillar

Our client, MOHMMAD IMAD MAOULAWI & CO., has registered its trademark Cat Wax in Latin & Arabic characters and Device, in class 3 under number 85220 on 3 April 2006, with disclaimer of the word wax in respect of shoe cream, shoe polish, and shoe wax.

On 23 March 2011, Caterpillar Inc., has filed a cancellation action before the Registrar against the said registration based on the following points:

• Confusing similarity between Cat Wax in Latin & Arabic characters and the trademark CAT Caterpillar;
• The registration of said mark is against the law since it misleads the public and confuses the consumer of its origin and results in unfair competition;
• The plaintiff has the prior identical/similar registration for the same class and list of goods, and
• The opposed trademark cannot be registered because it is identical and consists of the identical translation of the famous mark (CAT Caterpillar), which will eventually confuse consumers, mislead the public, and damage the plaintiff’s interests.

We submitted our counterstatement based on:

• Our client’s trademark is not confusingly similar with the plaintiff’s even if it is assumed to be a well-known mark;
• Our client’s mark is registered and is used in the home country (Syria) since 1957;
• The plaintiff did not submit sufficient evidence to proof that his mark is well-known;
• The defendant has actual long time use for its trademark in Jordan, and
• There is no likelihood of confusion since the defendant’s core business is heavy vehicles while our client’s products are under class 3.

The Trademark Registrar has issued its decision to cancel our client’s trademark considering the plaintiff’s mark CAT Caterpillar is well-known and Cat Wax is confusing similarity thereof.

The decision was appealed before the Supreme Court, and after full prosecution the Court made its judgment in our client’s favor justifying its decision as follows:

• In this case, it is assumed that the plaintiff’s trademark is famous and that there is no similarity between both marks that could confuse the public or leads to unfair competition;
• Additionally, there is a big difference in the shape between both trademarks as well as their goods, and
• Due to the vastly different channels of trade between the allegedly infringing mark and the famous mark, there will not be confusion between the marks.

If you have any questions, please contact us at jordan@qumsieh.com.