On 18 December 2018 The Hague District Court issued a preliminary ruling in which it held that Lacoste could not invoke its famous crocodile trademark in order to prohibit the use of a crocodile motif on children's underwear (IEPT20181218).

Facts

Lacoste brought an action against well-known Dutch department store Hema based on its EU and Benelux crocodile trademarks, which were registered for goods in Class 25 (ie, clothing), among others (Figure 1). Lacoste sought an injunction in relation to Hema's sale of children's underwear which featured a crocodile motif (Figure 2).

Figure 1

Figure 2

Lacoste argued that Hema's use of the crocodile motif on clothing was a clear infringement of its trademark rights under:

  • Article 9(2)(b) of the EU Trademark Regulation (2017/1001) ("the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark"); and
  • Article 9(2)(c) of the EU Trademark Regulation ("the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark").

Hema primarily defended itself by stating that its use of the crocodile motif on clothing was decorative and would not be perceived as trademark use.

Decision

Shirt with repetitive crocodile pattern The court held that the relevant public would perceive the multiple crocodiles on the shirt (and boxer shorts) at issue as decorations; thus, their use did not qualify as trademark use. The court based its conclusion on the following points:

  • The repetitive use of the crocodiles caused the eye to be drawn not to a single crocodile, but rather to a "sea of crocodiles".
  • It is common practice for children's clothing to feature animal motifs.

Lacoste provided a market survey which concluded that, to the contrary, the respondents did associate the crocodiles on the clothing with its trademark. However, the court disqualified the survey on the basis that it:

  • contained leading questions (the first question (ie, "Which trademark came to mind in relation to the depicted clothing?") steered respondents to the context of trademarks. As such, the key question of whether respondents would automatically associate the clothing with a (Lacoste) trademark remained unanswered); and
  • had not been answered by the relevant public, as identified by the court (the survey was conducted on members of the public ranging from 18 to 75 years old, whereas the court deemed the relevant public to be parents and grandparents of children between the ages of one and eight years old).

Based on its finding that the repeated crocodile motifs qualified as decorations, the court issued a preliminary opinion that Lacoste could not invoke Articles 9(2)(b) and (c) of the EU Trademark Regulation or the equivalent sections of the Benelux Convention concerning Intellectual Property (BCIP).

Article 2.20(1)(d) of the BCIP provides an additional ground to the EU Trademark Regulation – namely, it protects trademarks against use other than that to distinguish goods or services if, by that use, without due cause, unfair advantage is being taken or said use is detrimental to the distinctive character or reputation of a trademark. It was undisputed that Lacoste's trademark enjoys a reputation. Lacoste argued that it was obvious that Hema was taking unfair advantage of this reputation and that it therefore did not need to adduce evidence in this regard. However, the court deemed that – without further substantiation from Lacoste – it was not evident that Hema wanted to take unfair advantage of Lacoste's trademark. The court supported this finding with the following facts:

  • The clothing was sold only in Hema's (online) stores, in which only Hema-branded products were sold.
  • Each season, Hema offered a collection of children's underwear which featured different animals motifs (eg, sharks).

Further, the court noted that – due to a lack of a substantiation by Lacoste – there were no indications that Hema's use of crocodiles was detrimental to the distinctive character or reputation of the Lacoste mark.

Shirt with single crocodile As regards the shirt which featured a single crocodile in a relatively small size, the court noted that part of the public would likely perceive the crocodile to be a trademark. Consequently, the court had to assess whether Lacoste could invoke Articles 9(2)(b) or (c) of the EU Trademark Regulation.

The court concluded that there was a fair amount of visual and conceptual similarity between the trademark and the crocodile motif at issue. Further, the court held that Lacoste's trademark:

  • are inherently distinctive;
  • enjoy a well-known reputation; and
  • therefore, enjoy a broad scope of protection.

Nonetheless, the court held that there was no likelihood of confusion, as:

  • the clothing was sold only in Hema's (online) stores, in which only Hema-branded products were sold; and
  • the t-shirt which featured the single crocodile was always sold in a package with a t-shirt which featured the repetitive crocodile pattern.

Based on these findings, the court held that consumers who saw the t-shirt in a Hema store could not reasonably believe that it originated from Lacoste. Further, the court dismissed Lacoste's argument that post-sale confusion was imminent, as the products concerned were children's underwear, which is not visible by others when worn. Thus, the underwear would not be subjected to another part of the public (other than parents and grandparents who purchased the clothing from a Hema store).

For similar reasons to those set out above (ie, a lack of substantiation by Lacoste), the court held that Lacoste could not invoke Articles 9(2)(c) of the EU Trademark Regulation or Article 2.20(1)(d) of the BCIP.

Comment

This preliminary judgment is one of only a few examples in which the use of a sign has been considered purely decorative (and thus cannot be perceived as trademark use). Typically, the courts are restrictive in accepting such a defence. Given the specific subject matter of the case (ie, children's clothing, which commonly features depictions of animals) it is understandable that the court perceived Hema's repetitive crocodile pattern to be purely decorative.

The judgment illustrates that undertaking a market survey is not to be underestimated. Identifying the relevant public and refraining from leading questions can prove difficult.

As regards the shirt which featured a single crocodile, it is understandable that part of the public would perceive this to be trademark use. A finding of infringement appeared unavoidable based on the court's findings that:

  • the signs were visually and aurally similar and used for identical goods; and
  • Lacoste's marks enjoyed broad protection (based on their inherent distinctive character and reputation).

However, the court held that the specific circumstances of the case (ie, the shirt was sold only in Hema stores in which only Hema-branded products were sold and was always sold in a package with the other shirt, whose crocodile pattern was clearly decorative) meant that there was no likelihood of confusion. Such factors could normally be countered by virtue of the post-sale confusion argument. However, the court held that post-sale confusion was unlikely given that no members of the public other than those who purchased the underwear would be confronted with the clothing. Whether that is indeed the case is debatable. It will be interesting to see whether there will be a different outcome if Lacoste pursues proceedings on the merits in which it further substantiates the post-sale confusion argument and its arguments based on Article 9(2)(c) of the EU Trademark Regulation.

For further information on this topic please contact Bram Woltering at AKD by telephone (+31 88 253 50 00) or email (bwoltering@akd.nl). The AKD website can be accessed at www.akd.nl.

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