23. Feb 16

Trademark law: Crocodile snaps its jaws around a caiman

Brand recognition is a valuable asset for businesses. Accordingly, the General Court of the European Union (EGC) recognised that it is worth protecting these brands.

GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London conclude: According to a ruling of the General Court of the European Union of September 30, 2015, even a small visual resemblance or an average degree of conceptual similarity may result in it being impossible to register a brand as a trademark (Az.: T-364/13).

The instant case concerned a trademark dispute between a Polish and a French fashion house. The Polish company applied for registration of a Community trademark in 2007 at the Office for Harmonization in the Internal Market (OHIM) for its goods and services, including bags, clothing and shoes. The pictorial logo depicts a caiman, which belongs to the crocodile family.

The French company had already registered a Community trademark before the Polish company for a crocodile, which is why the former lodged an objection to the registration of its competitor’s brand. In doing so, it referred to its older rights under trademark law. The OHIM partially upheld the objection and refused to register the caiman as a trademark for shoes, clothes and leather goods. The action brought before the EGC by the Polish company against this decision was unsuccessful.

The Court assessed the likelihood of these symbols being mistaken for one another. It held that because both of them featured a reptile belonging to the crocodile family, there was a slight visual resemblance and at least an average degree of conceptual similarity, such that there was a risk of confusion. It went on to say that consumers might assume owing to the similar logos that the goods all come from one and the same firm or producers which are economically linked. Thus, the depiction of the caiman could be perceived as being a variation of the undoubtedly more well-known crocodile. The Court therefore concluded that it was not permissible to register the former as a Community trademark.

Trademarks bolster brand recognition among consumers. That is why it is crucial for businesses to protect them. Depending on the individual circumstances, it may also be important to register one’s trademark rights at an international level. On the other hand, it is necessary to ensure that no existing trademark rights will be infringed by entering a new trademark in a register. Businesses can turn to lawyers who are competent in the field of intellectual property law should trademark issues arise.

For more informations: http://www.grprainer.com/en/legal-advice/intellectual-property-law-and-trademark-law/trademark-law.html

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