Oh là là Lacoste: Crocodile International Trade Mark Awaiting Registration in Kenya

Readers of this blog may be aware of the 50-year trade mark battle that has been going on between Lacoste S.A and Crocodile International PTE Ltd (“CIL”). These companies were formed about 10 years apart on opposite corners of the globe: one in France in 1933 and the other in Singapore in 1943. Historically, the battle has focused on Lacoste’s right-facing crocodile mark and CIL’s left-facing crocodile mark with trademark suits filed in numerous jurisdictions around the world.

In this connection, readers of this blog will no doubt have come across the advertisement of the application for registration of Trade Mark Application (T.M.A) Number 83382 a composite mark comprising of the representation of a crocodile with word: Crocodile in the September 2015 Industrial Property Journal. As a result, this blogger reckons that the stage is set for Lacoste to oppose the registration of this mark by CIL, if the French multi-national company so wishes.

Not too long ago, a local Kenyan paper reported (here) that Lacoste had successfully opposed the registration of 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).
In this case of Eugenia Mocek, Jadwiga Wenta KAJMAN Firma Handlowo-Usługowo-Produkcyjna v OHIM, it is interesting to note that 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.

Lacoste is no stranger to successfully defending its trade marks on the African continent as this blogger has come across two reported cases in South Africa namely: La Chemise Lacoste v Rong Tai Trading CC (36037/2003) [2007] ZAGPHC 27 and Lacoste SA (Formerly La Chemis La Coste) v Long Chang Trading CC (29835/05) [2008] ZAGPHC 292.

This blogger will keep readers updates on the developments in this matter pending before Kenya’s Registrar of Trade Marks.