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Lacoste, the well-known French sportswear company, has won a recent trade mark victory by preventing a Polish competitor from registering its logo trade mark for clothing, shoes and leather goods.
The General Court of the European Union ruled that Mocek and Wenta’s logo (shown below) possessed an “average degree of similarity” to Lacoste’s iconic logo, and therefore it was likely to cause confusion in the minds of the public.
Lacoste’s various registered trade marks include the following logo:
When assessing the similarities between trade marks, the court is required to consider the overall impression given by the signs, taking into account their visual, conceptual and phonetic components.
In this case, the court found that the two marks had a relatively low degree of visual similarity. Mocek and Wenta’s logo consists of a representation of a crocodile with its spiked tail pointing downwards, its torso made up of the printed letters “kajman”. This can be contrasted with Lacoste’s logo which shows a more accurate crocodile image, with its tail pointing upwards.
However, given that both marks depicted a type of crocodile, the court considered that the latter mark was conceptually similar enough to Lacoste’s logo to cause confusion.
The court commented that “the representation of the Mocek and Wenta caiman might be perceived as a variant of the representation of the Lacoste crocodile” leading the public to believe that “the signs at issue come from the same undertaking or economically linked undertakings”.
The court rejected the argument that protecting the Lacoste crocodile would give an ‘unjustified monopoly” on all crocodilian figures. Instead, it highlighted the importance of allowing rights holders to oppose the registration of later marks which take unfair advantage of the distinctive character or the repute of the earlier trade mark.
The ruling serves as a reminder that the EU trade mark regime will protect highly distinctive trade marks from being exploited by other parties, especially in relation to well-established brands.
If you would like to know more about applying to register trade marks in the UK or the EU, or if you would like further advice on the protection of your company’s trade marks, please contact Cathrine Ripley in FSP’s Commercial & Technology team.