Jorge Vicente Martínez. Intellectual Property Lawyer. PONS IP Litigation Department

The EUIPO has rejected the opposition filed by the French company Lacoste against the application to register figurative mark 018761615 “Dr. Caiman” for cosmetics (class 3), requested by the Valencian company Kir Royal Natural Cosmetic S.L. The decision, issued earlier this year, puts a stop to the crocodile brand’s attempt to prevent the registration of a sign intended to identify cosmetics and cosmetics for men. Lacoste has not appealed the decision, so the EUIPO has already issued the registration certificate for the Dr. Caiman trademark.

Lacoste based its opposition on three earlier figurative marks in the European Union, all representing different versions of its iconic crocodile figurative mark.

Lacoste alleged both the likelihood of confusion between the signs and the reputation of its trademarks, invoking Articles 8(1)(b) and 8(5) of the European Union Trade Mark Regulation.

In support of its reputation, Lacoste provided extensive documentation to prove the repute of its trademark: press articles, advertising campaigns, references in international media and its sponsorship of major sporting events such as Roland Garros. The EUIPO found that Lacoste’s crocodile enjoys a solid reputation in the fashion industry, given that the main evidence related to polo shirts and other items of clothing. However, recognition was not extended to other products, such as cosmetics or perfumes, even though Lacoste also operates in those sectors, but the evidence was not as compelling as that presented for clothing.

Ultimately, the EUIPO determined that the crocodile trademark was only well known for clothing. Furthermore, the reputation was understood to be established mainly in France, although this territory can be considered representative of a substantial part of the territory of the European Union, and therefore recognised the reputation of the trademark for the EU.

Based on a reputation limited to fashion only, the EUIPO noted that, although both feature reptile figures, there are clear visual and conceptual differences. The Lacoste trademark shows a realistic crocodile in a sideways position, green in colour with red and black details, while the trademark applied for depicts a caiman in a cartoonish style, mustard-coloured, with a friendly expression and accompanied by the words “Dr. Caiman”. Conceptually, Dr. Caiman can be understood as a semantic unit alluding to a fictional character (a caiman holding a dr. title).

The visual similarity was determined to be of a very low degree, and the conceptual similarity to be of an average degree, as they only share the generic reference to a reptile.

The office concluded that differences between the signs ruled out the possibility of the public establishing a mental link between. Although the fashion and cosmetics sectors are closely related, the EUIPO considered that the mere presence of a reptile in both logos was not sufficient to generate an association with the crocodile brand. The graphic style, colours, layout and inclusion of a verbal element in the new trademark were sufficient to rule out any connection in the mind of the consumer.

With regard to the reputation argument, the EUIPO recalled that reputation alone does not confer protection against visually or conceptually different signs. Accordingly, the use of the sign “Dr. Caiman” cannot be considered taking unfair advantage of or be detrimental to Lacoste’s reputation.

Having ruled out the prohibition of registration based on the reputation of Lacoste’s crocodile, the EUIPO analysed the second ground alleged by Lacoste: the likelihood of confusion.

With regard to the likelihood of confusion, the cosmetics were registered identically in the earlier marks. However, the similarities between the signs were too few to be misleading. Consumers, the decision noted, would not believe that the products came from the same company or from related companies.

Again, the only common element (the depiction of a reptile) was not sufficient to cause confusion or association, especially taking into consideration the marked visual differences and the prominent presence of the verbal component “Dr. Caiman”.

In short, the EUIPO rejected Lacoste’s opposition in its entirety.

The decision reinforces the idea that repute in one sector does not guarantee its automatic extension to other commercial areas, even in apparently related sectors such as fashion and cosmetics. Furthermore, a mere common idea (a crocodile or caiman) does not in itself determine similarity, as all factors present in the signs being compared must be taken into account.

Therefore, both trademarks will coexist in the European market and consumers will readily distinguish between the classic elegance of Lacoste’s crocodile and the more playful and cartoonish image of “Dr. Caiman”.