The Crocodile Trademark War – The End!
The recent landmark ruling by the Beijing Higher People’s Court in favor of French fashion brand Lacoste (reg. no. 141103) against Chinese apparel company Cartelo ( reg. no. 5358242 and reg. no. 10499067) has brought an end to a decades-long intellectual property dispute over the use of the iconic crocodile logo.
Origins and Early History
Lacoste, founded in 1933 by tennis player René Lacoste, adopted the crocodile logo facing right, inspired by his nickname “the Crocodile” on the court. The brand quickly gained global recognition and entered the Chinese market in the 1980s, establishing a loyal following among consumers.
Cartelo, originally established in Singapore in 1947 as Lee Sheng Min Company, also used a crocodile logo facing left. The brand expanded into China in 1993 and was later acquired by Nanji E-Commerce in 2016.
Trademark Disputes and Legal Battles
The legal battle between Lacoste and Cartelo dates back to at least 2003, with Lacoste initially facing setbacks in lawsuits against Cartelo in China. However, the French brand persisted in its efforts to protect its intellectual property rights.
In 1983, Lacoste and Cartelo reached a settlement agreement, allowing them to coexist and use their respective crocodile logos in five markets: Taiwan, Singapore, Indonesia, Malaysia, and Brunei. However, this agreement did not include mainland China, leading to continued disputes.
The 2024 Landmark Ruling
In the recent case, the Beijing Higher People’s Court ruled that Lacoste’s crocodile trademark facing right had achieved well-known status in China by 2006, while Cartelo’s use of a crocodile logo facing left constituted malicious intent and caused market confusion, infringing upon Lacoste’s legitimate trademark rights.
As a result, Cartelo and its parent company Nanji E-Commerce were ordered to cease all infringing activities in China and pay Lacoste $2.05 million (14.8 million yuan) in compensation.
The court also determined that Cartelo’s use of a similar crocodile logo on goods in Class 25 and Class 18 constituted trademark infringement, emphasizing that the only notable difference between the two parties’ marks was the direction the crocodile was facing, which was insufficient to prevent confusion.
Implications and Takeaways
This landmark ruling underscores the importance of protecting well-known trademarks and preventing market confusion in China’s rapidly evolving market. It also demonstrates China’s commitment to upholding intellectual property rights, as highlighted by Lacoste’s statement praising the court’s determination.
Cartelo continues to sell apparel featuring crocodile logos on its Tmall flagship store, with a logo polo shirt priced at $20 compared to Lacoste’s $110 classic polo shirt.
This case serves as a reminder for brands to vigilantly protect their intellectual property rights and monitor potential infringements, especially in rapidly evolving markets like China. It also highlights the importance of consulting government resources and legal experts to navigate complex trademark disputes.
As noted by the World Trademark Review, the Lacoste v Cartelo case sets a precedent for clarifying the rules on confusion and co-existence of trademarks in China. A change in marketing strategy may destroy distinct market perceptions that previously enabled the marks’ co-existence, leading to a likelihood of confusion and association.
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