Crocodiles are Allowed to eat up Caimans According to the General Court

On 30 September 2015 the General Court of the European Union passed judgement (T-364-13) in a case that, since 2007, has been opposing the Lacoste Company, with its famous crocodile logo , against the Polish society Eugenia Mocek and Jadwiga Wenta KAJMAN Firma Handlow-Uslugowo-Produkcyijna, who filed the Community trademark covering, notably, clothing, bags, and footwear, as well as property rental services or furniture.

Since the OHIM partially upheld the opposition filed by the Lacoste Company in regards to leather products, footwear and clothing, the Polish society then appealed to the General Court of the European Union to overturn the OHIM decision.

When examining the risk of confusion between the and logos, the TEU initially considered that:

• They have a low visual similarity, in light of the differences in style and posture, asleep or aggressive, of the animals but also bearing in mind that from the consumer’s point of view, both cases represent a crocodilian reptile with bent tail.
• The Lacoste brand exhibits no word element, meaning that the phonetic aspect is irrelevant
• Conceptually they present a general similarity, both logos refer to the idea of a crocodilian reptile; this is accentuated in the trademark application as the word "KAJMAN" emphasises the link between the depiction and the nature of the animal as from the crocodilian reptiles family and not that of squamata reptiles family.

The TEU weighed its analysis, taking into consideration the fact that through use the Lacoste crocodile has acquired a highly distinctive character for leather products, especially bags, clothes and footwear, and concluded that a risk of confusion exists for these types of products since the general public are likely to think that products bearing the or logo come from the same undertaking or from economically-linked undertakings. The Caiman used by the Polish society might be perceived as a variant of the representation of the Lacoste crocodile, which is widely known to the general public.

Therefore the TEU aptly sums up that confusion is all the more likely the more important the distinctive character trademark and, that this should not diminish the fact that consumers pay special attention to a known brand.

Finally the TEU rejected the Polish society’s argument that by granting the Lacoste request it would give them an unjustified monopoly on the representative use of a crocodilian reptile, regardless of the degree of artistic stylisation. 

The TEU indicated that "the advantage of the legal regime of the Community trade mark lies precisely in the fact that it enables holders of an earlier trade mark to oppose the registration of later marks which take unfair advantage of the distinctive character or the repute of the earlier trade mark. 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 elevated distinctive character and reputation of the trademark, as well as the substantial investments made for its promotion, are all elements that are taken into consideration to thwart the registration of trademarks by third parties. 

Thus, trademark law overrides the law of the jungle; nevertheless we must be able to assert it. Therefore, it is necessary to keep records on this issue throughout the life of the trademark in order to defend its monopoly in a sharp-toothed, competitive world.