Branding on clothing and the importance of acquired distinctiveness

Print publication


The EU General Court has upheld an opposition by Lacoste to an application for registration as a Community trade mark of the name “Kajman” (meaning caiman in Polish) inset into a crocodile-shaped figure for leather goods, clothing and footwear. [1]

Lacoste relied on its earlier Community trade mark and argued that there was a likelihood of confusion between the two marks. The two marks can be seen here. Each mark consists of the representation of a reptile of the order of crocodilians presented in profile with the tail curved.

The Court considered that the two signs had a low degree of visual similarity, given that both signs have in common a representation of a reptile of the order of crocodilians and that the general public keeps in mind only an imperfect picture of a mark. The Lacoste mark did not contain any verbal elements so there was no question of phonetic similarity. Overall, there was at least an average degree of similarity, given that the figurative elements of both signs referred to a reptile of the order of crocodilians.

There was no dispute that the Lacoste mark had acquired through use a highly distinctive character for leather goods, especially bags, clothing and footwear. As regards to those three types of goods, there was a likelihood of confusion between the two marks, given that the general public was likely to believe that the goods came from the same undertaking or economically linked undertakings.

The interesting aspect of this decision is that the Court reached its conclusion despite its acknowledgement that there was a low degree of visual similarity between the signs. In the clothing context, the visual element is usually particularly important when conducting the assessment of likelihood of confusion. The key factor in this case was the enhanced distinctive character of Lacoste’s crocodile logo. The case recalls to mind the UK High Court judgment in Jack Wills Ltd v House of Fraser (Stores) Ltd [2], which we reviewed previously, where the issue was whether House of Fraser’s use of a pigeon logo on clothing infringed Jack Wills’ registered trade mark, also used on clothing, and which featured a silhouette of a pheasant with a top hat and cane.


[1] Case T-364/12 Eugenia Mocek, Jadwiga Wenta KAJMAN Firma Handlowo-Uslugowo-Produkcyjna v OHIM
[2] [2014] EWHC 110 (Ch)