LACOSTE’s Opposition to the Alligator mark fails on appeal

29 November 2010

This article was first published in World Trademark Review in November 2010.
In the scrap between Lacoste and Baker Street Clothing Limited over Baker Street’s application to register the word mark ALLIGATOR in relation to clothing, Baker Street has come out on top. The Appointed Person (Geoffrey Hobbs, QC), overturning the decision of the Hearing Officer, has ruled that Lacoste’s opposition to Baker Street’s application should be dismissed (In the matter of application nos 2338089 and 2354259 in the name of Baker Street Clothing Limited and opposition nos 94205 and 94206 by Law Chemise Lacoste SA, BL 0-330-10, 16 September 2010).
Lacoste’s opposition was based upon its earlier rights in its well-known “crocodile” device marks, registered in relation to clothing.

In the Registry, the opposition succeeded under s5(2)(b) of the Trade Marks Act 1994, the Hearing Officer deciding that the ALLIGATOR mark was close enough to Lacoste’s crocodile mark to give rise to a likelihood of confusion in the mind of the average consumer.
The Hearing Officer took into account the significant reputation in Lacoste’s crocodile mark, and the inextricable link between the mark and the “Lacoste” name. Though there was no visual similarity between Baker Street’s ALLIGATOR mark and the crocodile mark, nor an aural similarity (he concluded that consumers would be unlikely to refer to the Lacoste mark orally), the Hearing Officer found that there was sufficient conceptual similarity to give rise to a likelihood of confusion. This was despite the fact that the Hearing Officer himself had not linked the marks conceptually, nor was there any evidence of any other person having done so. In fact, the only people who had linked the marks were the Trade Marks Registry examiners. As the Appointed Person explained in his decision, theirs “is not the mindset of an ordinary consumer...”.
At the Appeal, the central issue for the Appointed Person was that of the similarity between the ALLIGATOR mark and the crocodile device. How do you determine whether a word mark is objectionably similar to the graphic representation of a non-verbal mark?
The Appointed Person held that the correct approach is to consider the question as part of the “global appreciation” test. He stressed that the visual, aural, and conceptual similarities must be viewed from the perspective of the average consumer of the relevant goods and services, and a finding of conceptual similarity could not be based upon a thought process that would not naturally occur to the relevant average consumer.
Though he accepted that Lacoste’s marks were linkable to the ALLIGATOR mark (since the word refers to a reptile of the type the mark emblematically represents), he considered that the average consumer would “not normally construe trade marks or engage in extended thought processes for the purposes of pairing and matching them”.
He considered that the most likely vocalisation of the crocodile device would be “Lacoste” rather than “alligator”. Added to that, the average consumer would naturally perceive the ALLIGATOR mark as an allusion to alligators, and would not go through the analysis of matching it with Lacoste’s crocodile marks.
As such, there was a lack of conceptual similarity in the mind of the relevant average consumer. In the absence of any evidence to the contrary, the Appointed Person held that there was nothing more than a loose, general, non confusing association.
This decision acts as a useful reminder that it is important not to stray from the mindset of the average consumer when assessing similarity. It is a sensible, well reasoned decision from the Appointed Person, which limits the extent of Lacoste’s monopoly. As he concluded in his decision, “The rights conferred by registration are centred on the registered representation of the protected mark. They do not enable the concept(s) of a mark to be protected without regard to the distinctive character of the mark as registered.”