French designer fashion brand Lacoste recently lost a battle against a dental practice in England. The two parties seem an unlikely pair to have much in common, but the dispute came about when the dental practice sought to register as a trade mark a logo of a crocodile it had been using for many years along with the words 'The Dental Practice'. The logo appeared on the dental practice's sign and depicted a crocodile with a big white grin. Lacoste's well known trade mark is also of a crocodile but there are notable differences between the two.
A trade mark is any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark can be registered in a number of different classes for various goods and services and gives the owner monopoly rights to use that name in connection with the goods or services in respect of which it is registered. When the dental practice sought registration for its trade mark, presumably in the class of 'medical services', Lacoste sought to oppose it on the basis that there could be confusion because it is confusingly similar to its trade mark.
While the two marks did have similarities, when taken as a whole including the words 'the dental practice', the judge at the Intellectual Property Office who was hearing the appeal held that they were not similar and allowed the application by the dental practice to proceed.
While it may seem surprising that Lacoste should be threatened by a small town dental practice, it is important for companies to actively protect their intellectual property. Lacoste has built a good deal of brand exclusivity and while it is better known for its clothing range, it does have coverage in the 'medical services' category and so was entitled to seek to challenge this registration.