Keywords: CJEU, Conceptual Similarity, Likelihood of Confusion, Visual Similarity
On 30 September 2015, the General Court of the European Union (T-364/13) ruled that the caiman logo that Polish apparel company Mocek and Wenta sought to register with the Office for Harmonisation in the Internal Market (OHIM) was similar enough to Lacoste's iconic crocodile logo to cause confusion. Thus, the Court upheld the OHIM's refusal to register the sign of Mocek and Wenta for leather goods, clothing and footwear.
According to the General Court, the global assessment of a likelihood of confusion must be based on the overall impression given by the signs at issue, taking into account all factors relevant to the circumstances of the case, and, particularly, the marks' distinctive and dominant elements. In this case, the relevant factors to be considered in the assessment of similarity between two marks were phonetic similarity, graphic similarity and conceptual similarity. In the Court's opinion, it had to be observed that visually the marks at issue had in common a representation of a reptile of the order of crocodilians. Since, in their component figurative elements, the marks at issue were both perceived as representing an animal of the order of crocodilians, they also had an "analogous semantic content" and, thus, indicated a certain conceptual similarity.
While the Court accepted the argument that in the caiman logo the reptile is represented in a sleeping position, with the torso made up of the letters of the word "kajman," whereas in the earlier Lacoste mark there is a rather realistic representation of a crocodile in an aggressive position standing on its feet, the Court felt that the level of attention of the relevant consumers was not high. The goods covered by Lacoste's earlier mark were consumer goods and, thus, were directed at a wider public. For such goods, the consumer's level of attention was only average. Therefore, a consumer of the goods covered by the marks at issue would most likely think that, on a conceptual level, the contested marks simply refer to reptiles of the order of crocodilians, if not just crocodiles, irrespective of the specific characteristics of those visual representations.
Despite a rather low degree of visual similarity between the marks, the Court felt that the degree of conceptual similarity of the signs at issue might lead to confusion given the highly distinctive character that Lacoste's mark had acquired for leather goods, clothing and footwear.
Originally published October 21, 2015
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