Lacoste SA (Formerly La Chemis La Coste) v Long Chang Trading CC (29835/05) [2008] ZAGPHC 292; 2008 BIP 254 (T) (3 October 2008)

Lacoste SA (Formerly La Chemis La Coste) v Long Chang Trading CC (29835/05) [2008] ZAGPHC 292; 2008 BIP 254 (T) (3 October 2008)

The court found that the Defendant's device incorporated more than one of the essential particulars of the Plaintiff's registered crocodile device trade marks. The similarities in the orientation, features, and overall impression of the marks were such that the average consumer would likely be deceived or confused as to the origin of the goods. The differences cited by the Defendant, such as the closed mouth and the word 'Anole', were not sufficiently dominant or striking to distinguish the marks in the eyes of the average consumer. The Plaintiff discharged its onus of proving likelihood of confusion, and the Defendant's use of the device constituted infringement under section 34(1)(a) of...

Citation
[2008] ZAGPHC 292
Parties
Plaintiff: Lacoste S.A (Formerly La Chemis La Lacoste); Defendant: Long Chang Trading CC
Court
High Courts - Gauteng
Jurisdiction
South Africa
Judgment Date
3 October 2008
Case Number
29835/05
Procedural Posture
Civil Trial / Separation of Issues; Determination of Trade Mark Infringement
Outcome
Plaintiff succeeded; Defendant interdicted from infringing Plaintiff's trade marks and ordered to pay costs.
Judges
L M Molopa
Legal Topics
Trade Mark Infringement, Counterfeit Goods Act, Likelihood of Confusion, Device Mark Comparison
Intellectual Property Trade Mark Infringement Counterfeit Goods Act Likelihood of Confusion Device Mark Comparison

Case Brief

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Parties

Lacoste S.A (Formerly La Chemis La Lacoste)

Plaintiff

Long Chang Trading CC

Defendant

Procedural Posture

Civil Trial / Separation of Issues; Determination of Trade Mark Infringement

Legal Issues

  1. 1 Whether the Defendant's use of a reptile device on belts constitutes infringement of the Plaintiff's registered crocodile device trade marks.
  2. 2 Whether the Defendant's mark is so similar to the Plaintiff's mark as to be likely to deceive or cause confusion among consumers.
  3. 3 Whether the Plaintiff has discharged the onus of proving likelihood of confusion or deception.

Ratio Decidendi

The court found that the Defendant's device incorporated more than one of the essential particulars of the Plaintiff's registered crocodile device trade marks. The similarities in the orientation, features, and overall impression of the marks were such that the average consumer would likely be deceived or confused as to the origin of the goods. The differences cited by the Defendant, such as the closed mouth and the word 'Anole', were not sufficiently dominant or striking to distinguish the marks in the eyes of the average consumer. The Plaintiff discharged its onus of proving likelihood of confusion, and the Defendant's use of the device constituted infringement under section 34(1)(a) of...

Court Disposition

Plaintiff succeeded; Defendant interdicted from infringing Plaintiff's trade marks and ordered to pay costs.

Orders

  • The Defendant is interdicted from infringing the registered rights of the Plaintiff in the LACOSTE crocodile device trade marks.
  • The Defendant is ordered to pay the costs of this matter, including the costs of two Counsel.