Lacoste’s defence of its iconicn crocodile logo was widely covered last week after newspapers reported the brand was challenging the use of a similar logo by a Gloucester dental practice.
But Design Week has learned that the fashion label was, in fact, resisting moves by The Dental Practice to record its long-established logo with the trademark register. Lacoste was not seeking to challenge the use of the identity itself. In the event, the French fashion brand lost its appeal last week on the grounds that customer confusion between the two brands would be highly unlikely
Gareth Jenkins, trade mark attorney at Marks & Clerk, the lawyer representing The Dental Practice, says the case was anything but clear-cut. Lacoste only became aware of the dental firm’s similar logo when it applied to formally register the trademark. Up to this point, the smaller company had used the logo for 16 years.
He says, ‘Lacoste had been granted blanket coverage for its crocodile emblem in a Community registration which included “medical services”. ‘It was the combination of the differences between these two crocodile emblems, the prominent words in the dentist’s logo and plain common sense that saw this appeal rightly dismissed.’
Currently, designers are able to take action against another company that is ‘passing off’ a design as its own, but there has to be a proven public confusion as to the originator. This is where the Lacoste case fell short. Patricia Jones, partner with intellectual property lawyer Hammonds, says the Lacoste case reflects the extent to which brand-owners will fight to protect their logos.
‘Brand-owners will seek to protect their brands because of the huge value attached to them. In this case, it was considered that the public would not make any association with Lacoste, and that the brand is associated with other goods and services and not dental services,’ says Jones.
CHALLENGE FAILS TO BITE
• Lacoste argued that the green crocodile logo registered by The Dental Practice in 2004 could be confused with its own widely recognised logo
• On two separate hearings, the judges disagreed: in May 2007 at the Intellectual Property Office in Newport, it was ruled that the services offered by the two companies are too dissimilar to lead to consumer confusion
• But Lacoste dug its heels in, and the case was referred to the UK Intellectual Property Office in London
• Last week, judge Professor Ruth Annand again rejected Lacoste’s case on the basis that misunderstanding about what the two companies stand for is highly unlikely. Lacoste was ordered to pay £1450 in costs towards both hearings