Lizard device held to infringe Lacoste’s crocodile mark

South Africa
In Lacoste SA (formerly La Chemise Lacoste) v Long Chang Trading CC (Case 29835-05, October 3 2008), the High Court of South Africa has enjoined Long Chang Trading CC from infringing Lacoste SA's registered trademarks.
Lacoste is the registered proprietor of several trademarks, including:
  • two crocodile device marks for goods in Class 25 of the Nice Classification; and
  • the word mark LACOSTE for goods in Class 25. 
Long Chang imported a consignment of 12,000 belts which were first detained and later seized by the South African Revenue Service under the Customs and Excise Act (90/1964), read together with the Counterfeit Goods Act (37/1997), as being suspected counterfeit goods. The basis of the detention and seizure was that the belts bore a mark that was similar to Lacoste's registered crocodile device.
Lacoste instituted an action against Long Chang, seeking an order:
  • interdicting Long Chang from infringing Lacoste's rights in its trademarks;
  • declaring the goods to be counterfeit under the Counterfeit Goods Act;
  • directing that Long Chang deliver all offending goods to Lacoste under the Trademarks Act (194/1993) and the Counterfeit Goods Act; and  
  • ordering Long Chang to pay the costs of the suit.
Lacoste's claim was based on Section 34(1)(a) of the Trademarks Act, which reads as follows: 
"the rights acquired by registration of a trademark shall be infringed by the unauthorized use in the course of trade in relation to goods or services in respect of which the trademark is registered of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion."
Long Chang contended that:
  • its mark did not resemble Lacoste's trademark; and
  • deception or confusion was thus unlikely.
The court had to determine whether the marks used by Long Chang on the belts infringed Lacoste's trademarks. Long Chang's belts came under Class 25; Lacoste's trademarks are registered for goods in the same class. The enquiry as to whether Lacoste's exclusive rights had been infringed was thus confined to a comparison between the two marks. The issue was whether the two marks resembled each other to such an extent that it was likely that the average consumer might be deceived or confused.
The court considered the following facts:
  • Lacoste's mark is a crocodile device, while Long Chang's mark is a lizard device;
  • Both creatures face towards the right if viewed from the front and both marks depict two visible feet of the creature;
  • Both marks have stripes running lengthwise along the creature, which extend to the tail;
  • Both creatures have a tail on the left-hand side, if viewed from the front, and both tails are raised and turned above the body of the creature to point in the same direction as the head is facing;
  • The crocodile on Lacoste's device mark has an open mouth, while Long Chang's lizard does not; and
  • Long Chang's mark comprises the word 'Anole' in the centre of the device.
The question was thus whether the differences between the respective marks were such that they were clearly visible to the average consumer.
The court referred to Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd (184 (3) SA 623 (A)), where the court held that:
"in an infringement action, the onus is on the plaintiff to show the probability or likelihood of deception or confusion. It is not incumbent upon the plaintiff to show that every [...] customer [...] would probably be deceived or confused. It is enough for the plaintiff to show that a substantial number of persons will probably be confused as to the origin of the goods or the existence or non-existence of such a connection."
The court also referred to Distilleerderij Voorheen Simon Rijnbende en Zonen v Rolfes Nebel & Co (1913 WLD 3), where it was held that:
"to constitute an infringement of a trademark, there must either be an adoption of a trademark or of its essential particulars, or one of them, or else a colourable imitation of the mark or one or more of its essential particulars." 
In the present case, the court found that:
  • Long Chang's mark presented more than one of the essential particulars of Lacoste's mark; and
  • the marks were very similar, if not identical. 
The court concluded that the impression of the two marks, even to an average consumer acquainted with Lacoste's mark, was likely to cause confusion, as there were no dominant or striking features that immediately served to distinguish one from the other.
Long Chang was thus interdicted from infringing Lacoste's registered rights in the crocodile device mark and was ordered to pay the costs of the proceedings.
Darren Olivier and Msawenkosi Gaxo, Bowman Gilfillan Inc, London

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