Trying to escape the bite of the Crocodile

After the European General Court’s (EGC) ruling on September 2015, the battle of the reptiles continues in front of the Court of Justice of the European Union (CJEU). As Lacoste protects their famous crocodile logo, Kajman is trying to prove the difference of their KAJMAN logo.

Background of the case

On February 1, 2007, KAJMAN, a Polish clothing manufacturer owned by Mrs. Mocek and Mrs. Wenta, filed an application to register their logo, a figurative mark KAJMAN (EUTMA no.: 5 686 845), for classes 18, 20, 22, 25 and 36 of the Nice Classification. A caiman is a reptile from the family of alligators. The French textile giant Lacoste opposed the mark on October 20, 2010, based on their registered EUTM (no. 002979581), the well-known crocodile logo, and word mark “CROCODILE” (EUTM No. 005567821) registered for all classes of the Nice classification, except class 8. Lacoste claimed the marks are similar and the average consumer is likely to mistake Kajman for Lacoste, especially given Lacoste’s reputation. The Opposition Division of OHIM (now EUIPO) stated the goods were identical, and their marks were conceptually similar, but disputed their visual and phonetic similarity. Although the Lacoste sign might enjoy a higher level of recognizance and the conceptual similarity, the average consumer would not mistake a Kajman product for a Lacoste one, and the opposition should be rejected.

Lacoste appealed this decision. OHIM’s Board of Appeal partially disagreed with the decision of the Opposition Division. More precisely, they believed that Lacoste did enjoy reputation in the classes 18 and 25. It agreed that the goods are identical and the signs were slightly visually similar. Next, it took into the account a survey conducted by Lacoste that showed public recognition of over 70%, gained through an extensive use during a longer period of time. However, they deducted that the likelihood of confusion was inexistent for products other than leather goods, clothing and footwear.

The decision of the EGC and future action

The decision was found dissatisfactory by Kajman, and they brought the case to the General Court of the European Union (EGC, case T-364/13). Upon observing the similarity of the signs, the EGC concluded that the level of similarity is higher than estimated by the Board of Appeal, at least average, definitely not low. Adding the high similarity of goods and the enhanced distinctiveness of the earlier mark, the average consumer might mistake the Kajman product for a version of Lacoste’s product, or deem the undertakings as economically linked. Therefore, on September 30, 2015, the EGC decided that Kajman’s appeal should be dismissed.

On November 19, 2015, Mocek and Wenta filed an appeal again, and the case is expected to be heard in front of the Court of Justice of the EU (case C-619/15).