Lacoste Crocodile Wins EU Trademark Fight

     (CN) – The Lacoste crocodile is iconic enough to prevent other companies from putting similar figures on clothing, leather goods and footwear in the EU, Europe’s general court ruled Wednesday.
     In 2007, a Polish company asked the EU’s trademark office to register a mark containing the brand name “Kajman” inset in the figure of a crocodile. The request prompted French clothier Lacoste to file an opposition to the proposed mark.
     The trademark office agreed with Lacoste in part and refused to register the Kajman mark, prompting the Polish company to appeal to the European General Court for help.
     But on Wednesday, the EU’s lower court dismissed the action and found that the Kajman crocodile was similar enough to Lacoste’s to cause potential consumer confusion if registered – at least on clothing, leather goods and footwear.
     “The conditions under which the goods are marketed, and consequently the importance of similarity between the signs at issue which is tied in with the nature of the goods, are only one of the elements to be taken into consideration when carrying out the global assessment of the likelihood of confusion on the part of the relevant public,” the Luxembourg-based court wrote in an 11-page opinion. “Consequently, the likelihood of confusion between the marks at issue is not precluded even if it is conceded that the visual aspect is particularly important in a case such as the present in which the goods are sold mainly in stores where consumers choose the product themselves.
     “It is not impossible that the representation of a caiman in the mark applied for may be perceived as a variant of the representation of a crocodile in the earlier mark, the latter being widely known among the relevant public – a fact which, moreover, is not disputed by the applicant,” the court added.
     The court also rejected the Polish company’s claims that protecting the Lacoste alligator would give the French clothier an “unjustified monopoly” on all crocodilian figures.
     “Indeed, the advantage of the legal regime of the community trademark lies precisely in the fact that it enables holders of an earlier trademark to oppose the registration of later marks which take unfair advantage of the distinctive character or the repute of the earlier trademark,” the court wrote. “Hence, far from according an unfair and unjustifiable monopoly to the proprietors of an earlier mark, that regime enables those proprietors to protect and exploit the substantial investment made to promote their earlier mark.”
     The Polish company has 60 days to appeal the general court’s decision – on points of law only – to the European Court of Justice.

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