Logo stops word: EAU CROCO - Lacoste

Many companies register their company name and trademarks as wordmark only. Often, however, a logo is also use. If this logo is distinctive and plays an important role in communication it is advisable to register this as a trademark as well.

Lacoste sells clothing, shoes and perfume all over the world. The trademark is a logo of a green crocodile. The logo refers to the nickname -“le Crocodile”- of the company’s founder, tennis player René Lacoste. Apart from the name the stylized crocodile has been registered as a trademark as well. When the trademark EAU CROCO is filed for perfume, jewellery and clothing, by a third company, La Coste opposes. The consumer will think of the crocodile logo when confronted with this new application. Especially since CROCO is the French abbreviation of crocodile. The new application is considered similar and is therefore not registered.

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?