Lacoste crocodile logo highly distinctive, says EU court

An EU court has ruled that that sportswear brand Lacoste’s “highly distinctive” crocodile logo can prevent a Polish company from registering a similar logo as a Community trademark (CTM).

In a decision handed down today, September 30, the General Court said that Poland-based Mocek and Wenta should not be granted a CTM for an image of a caiman, a reptile found in Central and South America that is closely related to alligators and crocodiles.

The Polish company had applied for a CTM in 2007 at the Office for Harmonization in the Internal Market (OHIM), prompting Lacoste to file a notice of opposition based on a CTM for its crocodile logo.

The application, which depicts a blue creature with the word ‘Kajman’ replacing the animal’s body, covered goods including bags, clothing and footwear.

OHIM’s opposition division upheld Lacoste’s opposition and refused to allow Mocek and Wenta to register the sign for leather goods, clothing and footwear.

Mocek and Wenta then applied to the General Court to have the decision annulled.

In its decision the court said that the signs at issue have “at least an average degree of similarity” given that the figurative elements of each “refer to the concept of a crocodile-like reptile”.

But the court said that the phonetic aspect is not relevant since Lacoste’s logo mark does not contain any verbal elements.

The court added: “Bearing in mind the undisputed fact that Lacoste’s mark has acquired through use a highly distinctive character for leather goods, clothing and footwear, the court considers that, as regards those three types of goods, there is a likelihood of confusion.

“In particular, the court considers that the representation of the Mocek and Wenta caiman might be perceived as a variant of the representation of the Lacoste crocodile, the latter being widely known to the public.”

Jean-Baptiste Bourgeois, a partner at law firm Bourgeois Rezac Mignon in Paris, said he agreed with the court’s ruling but said that other similarities could also be discussed.

“The visual similarities can be discussed, and on the other hand, and contrary to what the court considers, the phonetical similarities could have been invoked because the only way to ‘pronounce’ both trademarks is to use the word ‘crocodile’ or ‘caiman’”.

He added: “I join the court when they balance the degree of similarity between signs and goods with the unquestioned notoriety of the Lacoste trademark to conclude there would be a risk of confusion.”