La Chemise Lacoste v Rong Tai Trading CC (36037/2003) [2007] ZAGPHC 27; 2007 BIP 175 (T) (13 April 2007)

La Chemise Lacoste v Rong Tai Trading CC (36037/2003) [2007] ZAGPHC 27; 2007 BIP 175 (T) (13 April 2007)

The court found that the plaintiff failed to prove that the defendant's use of the word 'Crocodile' on belts infringed its registered trade marks. The evidence established that the relevant public associates the Lacoste brand with a specific crocodile device, not merely the word 'crocodile'. The defendant's belts, bearing only the word 'Crocodile', are visually, aurally, and conceptually distinct from the plaintiff's device marks. The plaintiff does not have a monopoly over the concept or word 'crocodile', and there was no likelihood of deception or confusion among the average purchaser. The court distinguished prior case law and held that conceptual similarity alone is insufficient for...

Citation
[2007] ZAGPHC 27
Parties
Plaintiff: La Chemise Lacoste; Defendant: Rong Tai Trading CC
Court
High Courts - Gauteng
Jurisdiction
South Africa
Judgment Date
13 April 2007
Case Number
36037/2003
Procedural Posture
Civil Trial / Judgment After Separation of Issues
Outcome
Plaintiff's claim dismissed with costs, including costs of two counsel where so employed.
Judges
Ebersohn
Legal Topics
Trade Mark Infringement, Likelihood of Confusion, Conceptual Similarity, Device Vs Word Mark, Nice Classification, Damages
Intellectual Property Commercial and Corporate Trade Mark Infringement Likelihood of Confusion Conceptual Similarity Device Vs Word Mark Nice Classification Damages

Case Brief

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Parties

La Chemise Lacoste

Plaintiff

Rong Tai Trading CC

Defendant

Procedural Posture

Civil Trial / Judgment After Separation of Issues

Legal Issues

  1. 1 Whether the defendant's use of the word mark 'Crocodile' on imported belts infringes the plaintiff's registered device and word trade marks under section 34(1)(a) and (b) of the Trade Marks Act.
  2. 2 Whether there is a likelihood of deception or confusion among the relevant public between the defendant's goods and those of the plaintiff.
  3. 3 Whether the plaintiff is entitled to a monopoly over the concept or word 'crocodile' in relation to its trade marks.

Ratio Decidendi

The court found that the plaintiff failed to prove that the defendant's use of the word 'Crocodile' on belts infringed its registered trade marks. The evidence established that the relevant public associates the Lacoste brand with a specific crocodile device, not merely the word 'crocodile'. The defendant's belts, bearing only the word 'Crocodile', are visually, aurally, and conceptually distinct from the plaintiff's device marks. The plaintiff does not have a monopoly over the concept or word 'crocodile', and there was no likelihood of deception or confusion among the average purchaser. The court distinguished prior case law and held that conceptual similarity alone is insufficient for...

Court Disposition

Plaintiff's claim dismissed with costs, including costs of two counsel where so employed.

Orders

  • The plaintiff's claim is dismissed with costs, such costs to include the costs of two counsel where two counsel were employed by the defendant.