Lacoste has failed in its latest attempt to protect its iconic crocodile logo. On this occasion it was seeking to assert its trade mark rights in the logo against a dentist in Cheltenham. Emily Devlin fills in the holes.
Who: Drs Moore and Rumney (t/a The Dental Practice) – applicants La Chemise Lacoste SA (opponent)
Where: UK Trade Marks Registry
When: 24 May 2007
Law stated as at: 31 July 2007
What happened:
La Chemise Lacoste, the French fashion label best known for its brightly coloured polo shirts bearing a crocodile logo, has failed in its attempt to stop a Cheltenham-based dental surgery from registering as a trade mark a logo containing a crocodile for "dentistry services".
The UK Intellectual Property Office has concluded that there was no likelihood of confusion between the mark applied for and Lacoste's famous crocodile motif. Whilst the Lacoste trade mark specification relied upon covered "medical services" in class 44, which the UKIPO found to be identical to "dentistry services", it was clear that the visual, aural and conceptual differences between the two marks outweighed the similarities. In reaching that conclusion the UKIPO took into account the fact that the average consumer was unlikely to be confused, dental services being "highly personal" in nature. According to the UKIPO, one's choice of dentist is not made without considerable time and thought and so the average consumer is unlikely to confuse the services being offered by The Dental Practice with those of Lacoste.
The fact that Lacoste's crocodile motif has been in use since the 1930's, and that considerable revenue has been generated under it and advertising spent on it, it failed to prevent the dentists' logo from being registered on the grounds of its reputation and fame. The UKIPO determined the marks in question were not similar enough, emphasising further that the "average consumer" (who is reasonably well informed and reasonably observant andr circumspect – Sabel v Puma) would not mistake the originators of the two marks.
Lacoste's opposition was dismissed and it was ordered to pay costs in the sum of £1,000.
Why this matters:
This decision is a reminder to brand owners how hard it is to claim a monopoly right over an animal or other representative motif, despite considerable length of use, revenue generated under the mark and advertising spend.
Emily Devlin
Solicitor
Osborne Clarke, London
emily.devlin@osborneclarke.com
