Protection of highly distinctive trademarks
Conceptual similarity between trademarks may be sufficient to find a risk of confusion even when there is little visual similarity between the marks, if the earlier mark has become highly distinctive through its use.
Eugenia Mocek, Jadwiga Wenta KAJMAN Firma Handlowo-Usługowo-Produkcyjna v OHIM (Case T-364/13, judgment of the General Court of 30 September 2015)
The Polish partnership of Eugenia Mocek and Jadwiga Wenta, operating under the name KAJMAN Firma Handlowo-Usługowo-Produkcyjna, applied to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for registration of a Community trademark for “Kajman” (no. CTM 005686845), with the following graphics:
The trademark was filed for goods in classes 18 (including such items as clothing for pets and leather wallets, purses and handbags), 20 (e.g. pet cushions and beds), 22 (bags for packaging), 25 (e.g. footwear and belts) and 36 (including office rental).
Objection was filed by the French company Lacoste SA. Lacoste argued that the Kajman mark was confusingly similar to its earlier Community trademark no. CTM 2979581, presenting a crocodile, and would be detrimental to the distinctive character or repute of the earlier mark. The Lacoste mark was registered for goods in classes 18 (e.g. leather handbags), 20 (e.g. furniture, mirrors and picture frames), 24 (cushion covers) and 25 (clothing, footwear and headgear). The Lacoste mark appears as follows:
OHIM ruling
The OHIM Objection Division rejected Lacoste’s opposition, finding that the marks are visually and phonetically different. While there is a conceptual similarity, it is low and insufficient to find a likelihood of consumer confusion.
Lacoste appealed. The OHIM Board of Appeal partially upheld the appeal, finding that there was a risk of confusion with respect to goods in classes 18 and 25, and refused to register Kajman’s mark for leather goods, clothing and footwear. This was because of the conceptual similarity between the marks in their visual and semantic elements (both presenting a “reptile of the order of crocodilians”) and because the Lacoste crocodile has increased distinctiveness and repute with respect to certain goods in classes 18 and 25. Otherwise the Board of Appeal dismissed Lacoste’s appeal, finding that there was no risk of confusion with respect to the goods and services in classes 20, 22 and 36 because these items are not similar to the goods in classes 18 and 25 for which the Lacoste mark has heightened distinctiveness and repute. Moreover, Lacoste did not demonstrate with respect to classes 20, 22 and 36 that the repute or distinctiveness of its mark was injured or that Kajman was gaining an unfair advantage.
Thus the OHIM Board of Appeal held that the Kajman mark could be registered for goods from classes 20, 22 and 36 but not for goods from classes 18 and 25.
Kajman filed an action against this decision with the General Court, seeking protection of its trademark also in classes 18 and 25. Lacoste intervened and applied for rejection of the Kajman trademark also for goods in class 20.
Ruling of the General Court
The General Court dismissed both Kajman’s action and Lacoste’s application.
Firstly, the court disagreed with Kajman that customers for goods in classes 18 and 25 display a higher level of attention because the goods sold under Lacoste’s earlier mark are “expensive, high-class goods” that can be purchased mainly in Lacoste boutiques.
The court found that the goods in classes 18 and 25 are ordinary consumer goods aimed at a broad public. The list of items covered by the Lacoste mark does not indicate that they are expensive or high-class goods. If Lacoste goods are sold mainly in its own boutiques, this just shows that the company has selected a specific marketing strategy, but this is not the “normal” marketing strategy for goods of this type. Lacoste could modify its strategy in the future, so its current strategy may not be relevant in evaluating the level of attention of average consumers.
Thus the court found that the level of attention of customers for goods in classes 18 and 25 is “average.”
Second, the court found (like the OHIM Board of Appeal) that the graphic marks were similar because they both show the image of a reptile from the order of crocodilians, in profile, with a twisted tail. But the logos differ, as the Kajman mark shows a reclining reptile in a stylised form, with its torso made up of letters spelling “kajman,” while the Lacoste crocodile is more realistic and aggressive. These differences made the visual similarity low. The court held that the marks could not be compared on the phonetic level because Lacoste’s earlier mark has no verbal element.
The court agreed with the Board of Appeal that average consumers would perceive the marks at a conceptual level as referring to a reptile from the order of crocodilians. This perception of the visual element is reinforced by use of the word “kajman” (meaning “caiman” in several EU languages, and similar to the words in many other EU languages for this reptile, a member of the order of crocodilians). This meant that the marks were of average similarity on a conceptual level.
Third, the court agreed with the Board of Appeal that Lacoste’s earlier mark enjoys a “highly distinctive character” for leather goods in class 18, particularly bags, and clothing and footwear in class 25, acquired through use of the mark.
The court found that due to the conceptual similarity between the Kajman and Lacoste marks and the highly distinctive nature of the Lacoste mark, use of the Kajman mark for the same or similar goods in classes 18 and 25 could be misleading to consumers. The court agreed with Kajman that in the case of goods offered in self-service stores, as with goods from classes 18 and 25, where consumers rely primarily on the image of the trademark, the visual similarity between the marks, which was not high in this case, is most significant. However, similarity on this level is only one of the factors considered in the overall assessment of the risk of confusion. Broad familiarity with Lacoste’s earlier mark means that the Kajman mark could be perceived by consumers as a variation on the crocodile from Lacoste’s mark. The court rejected Kajman’s argument that upholding Lacoste’s opposition would amount to awarding Lacoste a monopoly on the image of a reptile from the crocodilian order. As the court pointed out, the Community trademark scheme permits proprietors of earlier marks to oppose later marks that take unfair advantage of the distinctiveness or repute of their marks. This allows proprietors to protect the significant expenditures they have made to promote their earlier marks.
In dismissing Lacoste’s application to reject the Kajman mark in class 20, the court found that Lacoste had not proved increased distinctiveness for goods in class 20, i.e. furniture. Lacoste had presented evidence of repute only for bed linens from class 24.
Summary
The judgment in the Kajman case confirms that in evaluating the risk of consumer confusion, a great role is played by the distinguishing power acquired through use of a trademark, as well as the repute of the mark. Strong distinctiveness of the earlier mark enables a finding that the later mark is confusingly similar if the marks refer to the same concept, even if the visual presentations of the concept of the two marks differ in many aspects.
The judgment also confirms that in determining the level of awareness of the average consumer, whether the goods are of particularly high quality or sold at a particularly high price is irrelevant if based on the trademark classification they are regarded as ordinary consumer goods.
Katarzyna Pikora, Intellectual Property Practice, Wardyński & Partners
