Trademark: Low Visual Similarity, No Phonetic Similarity, But Still Confusingly Similar?

In 2007, a Polish company filed an application for a composite European Community trademark comprising the representation in colour of a crocodilian with its torso made up from the letters of the word “kajman” in printed characters for, among others, classes 18 (leather goods) and 25 (clothing, footwear).

The French company Lacoste, which owns a figurative Community trademark consisting of the representation of a crocodile registered for these classes, filed an opposition to OHIM (Office for Harmonization in the Internal Market) based on the likelihood of confusion between both signs and the reputation of Lacoste’s registered sign.

The opposition was rejected but Lacoste brought the case to OHIM Board of Appeal, which decided in its favour. The Polish company filed an appeal against this decision, but the General Court of the European Union confirmed OHIM Board of Appeal’s decision.

The General Court stated that, despite the low visual similarity and the absence of any phonetic similarity between the signs, taking into account the relevant public (the average consumer), the conceptual similarity between both signs (representation of a reptile of the order of crocodilian), the proven enhanced distinctiveness and the reputation of Lacoste’s trademark for classes 18 and 25, there is a likelihood of confusion between the two signs.

Press release 109/2015 concerning judgement in case T-364/13 is available here: http://curia.europa.eu/jcms/jcms/Jo2_16799/