Lacoste success in crocodile clash

With the popularity of trade mark registration increasing internationally, it is no surprise that many marks are animal based.

Some of the most well-known brands have animal themed trade mark, and the fashion brand Lacoste is no exception. It could be argued that the Lacoste crocodile is the widely recognised crocodile across the world.

Bearing this in mind, Lacoste were keen to prevent any detrimental effect to their mark. For this reason, they objected to the registration of a mark submitted by Mocek and Wenta for the classes 18, 20, 22, 25 and 36.

Lacoste argued that this application would infringe their existing mark which is registered for classes 18, 20, 24 and 25.

The mark that Mocek and Wenta proposed was a stylised crocodile image with the word ‘kajman’ as a substitute for its body in a blue colour.

It is clear that this differentiates from Lacoste’s mark which is a green colour and is just a picture only mark of a cartoon style crocodile.

This said, the court ruling on this case gave its view that the general public would recognise the conceptual similarities between the marks and despite the differing visual details, there was enough to show likelihood of confusion that the proposed mark and Lacoste as a brand are associated.

This ruling upheld the decision made in the case at first instance and reflected the same sentiment.

Therefore the mark proposed by Mocek and Wenta was refused registration under classes 18 and 25 which is for leather goods, footwear and clothing but stated there was no likelihood of confusion for the remainder of classes considered in the original trial which represented furniture, ropes and financial affairs.

By Ellis Sweetenham