Lacoste wins the battle for the Crocodile before the General Court
Whenever we talk about a piece of clothing that shows a crocodile logotype, it will inevitably come to our minds a specific trademark: LACOSTE. No one questions the reputation of this trademark. However, until the end of September of 2015, this was less clear in legal terms.
Judgment of the General Court of the European Union of 30 November, T-364/13 “Lacoste”, which confronted the French Company and the Polish Company Eugenia Mocek, Jadwiga Wenta KAJMAN Firma Handlowo-Usługowo-Produkcyjna (“Mocek and Wenta”), leaves no room for doubt about who has the monopoly on the crocodile in connection with clothing, footwear and leather goods. This is a good example to explain how the reputation of a trademark affects when assessing distinctiveness.
In 2007, Mocek and Wenta filed a trademark application before the Office of Harmonization in the Internal Market (OHIM) for the mixed trademark “KAJMAN” reproduced below:
This trademark was applied namely to distinguish, among other products, pieces of clothing, footwear, bags and real estate leases.
The French company Lacoste filed an opposition against the application above mentioned on the basis of the prior community trademark registration of the well-known crocodile that we show below:
In the first instance, the Opposition Division of the OHIM considered that there was no risk of confusion between both distinctive signs and alleged, among other things, that the “conceptual link between the trademarks is not enough to counteract the visual and phonetic differences”.
Nevertheless, at the appeal stage the Fourth Board of Appeal of the OHIM partially upheld Lacoste´s opposition and rejected the registration of the sign applied by Mocek and Wenta for leather goods, clothing and footwear.
Due to this decision, Mocek and Wenta filed an appeal before the General Court claiming for its annulment.
Amongst the grounds stated by the Polish company, it was alleged that the graphic representation of both crocodiles was completely different, being the Lacoste reptile more realistic and in an aggressive position. On its part, the crocodile of Mocek and Wenta is represented laid down in a completely different color and the middle part is made with letters which do not appear in the reptile of the famous clothing trademark.
Having even considered the observations above, the judgment of the General Court rejects the appeal and confirms the refusal of the registration of the sign applied by Mocek and Wenta for clothing, footwear and leather goods.
For the purposes of determining the risk of confusion between the signs, the Court was focused on the degree of conceptual and graphic similarity, taking into consideration that, for the type of products at stake, the average consumer usually sees the trademark as a whole, without analyzing the details. In this sense, the Court considered that the graphic likeliness between the signs entails a medium risk.
Thus the determining factor that has been considered, without any doubt, was the unquestionable reputation gained by the LASCOSTE trademark in the market. Therefore, although the degree of likeliness is low, and the degree of conceptual likeliness is medium, the high degree of trademark distinctiveness in relation with the sale of leather goods, clothing and footwear means a substantial increase in the risk of confusion, misleading the client who might believe that such trademark is a variant of the crocodile representation of LACOSTE.
Bearing in mind the above, the Court concludes that there is risk of confusion between the signs regarding the tree types of products and rejects the appeal filed by Mocek and Wenta and ratifies the refusal of the trademark registration “KAJMAN”.
This judgment provides stronger legal certainty to LACOSTE because from now on, any other trademark application that shows a crocodile in order to distinguish these same types of products is very likely to be refused.
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