February 2018. The Caterpillar construction company clearly has a watertight claim to the word Cat. On 13 February, the Opposition Division of the European Trademark Office EUIPO appeared to agree, blocking another company’s application to register the word Snowcat as a trademark for vehicle and bicycle tires.
This case shows the potential benefits of opting for wide coverage when registering your trademark. Caterpillar’s Cat trademark was registered in 2017 for a huge number of goods and services. The system of trademark registration recognises a total of 45 product groups, and Caterpillar has registered Cat in no less than 34 of them. And while it’s unlikely the Cat brand will be applied to them all, it is provisionally protected for them all, including tyres. Which is how Caterpillar managed to stop Snowcat in its tracks.
The Cat trademark was registered in 2017 for 34 of the 45 product categories.
Must be used
However, you need to be careful with this tactic, since if you want to maintain your right to trademark protection for all these products, you’ve got to use the trademark for all the categories. So if you fail to use the trademark for some of the products you’ve covered, after five years your rights for these goods could be cancelled. In other words, by 2022 the ‘Cat’ trademark could be open to challenge for a large number of products. But if that happens, there’s another card the company can play: it can simply re-register the trademark. There’s a price tag attached to that, of course, but it will cover everything for a further five years!