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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