Lacoste Crocodile vs. Caiman

The world-famous Lacoste crocodile prevails in a trade mark dispute against the caiman of a Polish company. Despite the weak visual similarity of the signs, the French label was able to successfully rely on its reputation.

The Polish company Mocek and Wenta filed a figurative sign as a Community trade mark at the HABM in 2007 for various goods and services (inter alia bags, clothing, cushions for animals, shoes, rental of real property). The sign contained a crocodile-like reptile whose body consisted of the word mark KAJMAN. Lacoste opposed this application and relied on its earlier Community trade mark – the well-known crocodile logo. The HABM thereupon rejected the registration of the Polish sign for leather goods, clothing and shoes. The action brought by Mocek and Wenta before the Court of Justice of the European Union for annulment of the HABM's decision was unsuccessful.

Court Decision

By means ofjudgment of 30.09.2015 – T364/13 the EuG dismissed the action and confirmed the rejection of the registration of the mark of Mocek and Wenta.

In examining whether there exists a likelihood of confusion between the opposing signs, the court concluded that they have a low degree of visual similarity, as both depict a reptile of the order Crocodylia and as the general public would normally retain only an imperfect image of a mark in their memory. The court considered the phonetic aspect to be irrelevant, since the Lacoste mark, unlike the applied-for mark, contained no verbal elements. Finally, the court confirmed that the two signs have at least average conceptual similarity, as the figurative elements of each of these signs conceptually correspond to a reptile of the order Crocodylia.

Despite the low degree of visual similarity and the average degree of conceptual similarity of both signs, the court concluded that a likelihood of confusion would nevertheless exist, at least for leather goods, clothing and shoes. The court justified this primarily on the ground that the Lacoste mark for leather goods (in particular bags), clothing and shoes had acquired increased distinctive character through use. The general public could believe that the goods bearing the opposing signs originate from the same undertaking or from economically connected undertakings. In particular, the depiction of the caiman by Mocek and Wenta could be perceived as a variant of the Lacoste crocodile depiction, since the latter is known to the general public.

Conclusion

The figurative mark of Lacoste was able to prevail in the present legal dispute despite the low degree of similarity of the signs, not least on account of its now more than 80-year existence and the corresponding reputation. Whether the principles of this decision apply to comparable cases involving less well-knownmarks is rather questionable.