Not put off by its failure a few years ago to take a bite out of Baker Street Clothing’s application to register ALLIGATOR, Lacoste has partially succeeded so far in a death roll of Mocek and Wenta’s application to register the following trade mark for clothing, footwear, and leather goods.
Claiming that the Polish company’s caiman application would result in confusion with its existing trade mark, Lacoste opposed the application in the Community Trade Mark Office.
Lacoste’s initial attempt failed. However, Lacoste came back for a second strike as it appealed to the Office’s Board of Appeal.
The Board of Appeal decided that there was a likelihood of confusion due to the conceptual similarity in footwear and clothing, but not for the other goods and services for which Mocek and Wenta wanted also to register its caiman (such as pet cushions). The Board’s reasoning was the other goods and services are not similar. This resulted in a further appeal to the General Court of the European Union, this time by Mocek and Wenta.
Unsurprisingly the Court announced that there was little similarity between the two logos. But it still decided in Lacoste’s favour based on the reputational strength of the Lacoste crocodile.
Take home points
The Court’s decision is surprising – Lacoste claimed confusion but won on its logo’s reputation.
It remains open to Mocek and Wenta to appeal one more time so the case may not be over quite yet.
But if an appeal is not made (or it is unsuccessful), it opens the way to other actions where a brand with a strong reputation can crush another mark even where there is a low degree of similarity.