PRACTICE OF PROTECTION OF WELL-KNOWN TRADEMARKS A case study Paul RANJARD Wanhuida 9 September 2008

LACOSTE 1927 René Lacoste “the crocodile” 1933 creation of the Lacoste shirt 1933 to 1970 European and American markets 1970 Asia

印度 蒙古 香港 鳄鱼恤 日本 新加坡鳄鱼 ( 利生民 ) 新加坡鳄鱼 ( 利生民 ) 台湾 文莱 越南 马来西亚 印度尼西亚 柬埔寨 老挝 孟加拉 不丹 乌兹别克斯坦 土库曼其斯坦 尼泊尔 菲律宾共和国 In the early 70s Lacoste entered the Asian markets and noticed that a similar left facing crocodile had been registered

印度 蒙古 香港香港 日本 台湾 文莱 越南 马来西亚 柬埔寨 老挝 马尔代夫 孟加拉 不丹 哈萨克 乌兹别克斯坦 土库曼其斯坦 尼泊尔 菲律宾共和国 陈氏家族 : 从汕头到新加坡 新加坡 ( 利生民 ) 新加坡鳄鱼 印度尼西亚 汕头 香港鳄鱼恤 The Tan family

Crocodile Garments in HK Li Seng Min/Crocodile International in Singapore

CROCODILE INTERNATIONAL 1983 agreement  Coexistence in “Territory” (Singapore, Malaysia, Indonesia, Brunei and Taiwan)  LACOSTE pays 1,500,000 USD  Cooperation against third parties (no geographical limitation)

 1994 : applications (Refused by CTO)  1995 : Lacoste discovers boutiques - warning  1997 : TRAB accepts Cartelo publication - opposition  2000 : LACOSTE legal (infringement) action Beijing High Court  (device alone and Cartelo + device)  2003 : CTO rejects opposition against “Cartelo + device)  2005 : TRAB confirms CTO decision (long coexistence)  2006 : Beijing Intermediate Court in favour of Lacoste  2007 : Beijing High Court reverses decision in favour of Cartelo  (devices are similar, but long coexistence) Summary of litigation in China

Litigation before OHIM 31 March 2003 : application Classes 14, 18, 25 7 June 2005 : Lacoste opposes  Article 8.1 b)  Article 8.4 and 5

Article 8.1 b)  “…because of its identity or similarity… there exists a likelihood of confusion…”  EU Court of Justice in “Thomson vs. Thomson life”  …it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element”  In such case, …likelihood of confusion must be held established  AT … EAT … HEAT

OHIM 27 Feb 2007  The two crocodiles are very similar  No phonetic similarity  But trademarks are similar because the subsequent trademark uses the crocodile of the earlier trademark  Likelihood of association between the two marks  General Motors Corporation vs. Yplon (“Chevy”)  Possible association + reputation of earlier mark  Prejudice to the distinctive character or repute of earlier mark  Unfair advantage  No due cause

Review Board 12th June 2008 confirms first instance Analysis of article 8.5  Three cumulative conditions :  Identical or similar trademarks  Earlier trademark must have a reputation  Risk that use without due cause  Takes unfair advantage of distinctive character  Take unfair advantage of reputation  Causes damage to the earlier trademark

Third condition divided into three alternative risks :  Prejudice to distinctive character  Prejudice to repute  Take unfair advantage of distinctive character or repute

Comparison between the trademarks  Decisions of European Court of Justice in “Chevy” (1999) “Adidas” (2003) In Article 8.5 no need to establish a risk of confusion. It suffices to establish that the degree of similarity is such that the public concerned would make an association between the two marks

The similarity between the two marks,  The verbal element is not negligible, but the device component keeps an autonomous role in the global sign  Although they are not phonetically similar, there is an obvious similarity at the intellectual level (use of a saurian)  The presence of the saurian in the Cartelo mark gives a global impression of similarity

The reputation of the Lacoste trademark  The earlier trademark is known by a significant portion of the public concerned  Decisions INPI and Court of Appeal about Lacoste reputation in France  Amount of publicity spent (25 M€ between 2000 and 2004)  Sponsorship to sports  Book “The Lacoste legend”  Turnover 780 M€  In a significant part of the EU

Unfair advantage of the distinctive character  All the products concerned are related to fashion  The association will allow the subsequent marl to take unfair advantage of the power of attraction of the earlier trademark  The Lacoste trademark is extremely distinctive  Abusive situation

Absence of due cause  Analysis of the agreement signed in 1983  Coexistence only for 5 countries  Cooperation “when possible”, is only technical and concerns third parties counterfeiters

CONCLUSION  This case applies article 8.5 (which concerns situation of conflict where products/services are not similar) to a case where the products are identical or similar  This is the result of  Sabel case - similar products (deletion of the last sentence on article 8.2 about “the risk of confusion includes the risk of association”),  “Davidoff” and “Adidas” cases of 2003 (extension of protection of a well- known trademark to cases where there is a risk of association, on identical or similar products)

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