Reptile Wars

The High Court of South Africa (Transvaal Provincial Division) has ruled in favour of Lacoste in a case involving alleged counterfeit goods and the use of a “REPTILE” device which was contended to infringe its well-known registered CROCODILE device.  Judgment was handed down on 30 September 2008 in Lacoste S.A. (formerly La Chemise Lacoste) vs Long Chang Trading CC, TPD case number 29835/05.

The Defendant, Long Chang, had imported large quantities of belts bearing the trade mark depicted below.

The South African Revenue Service (SARS) detained and then seized the consignment of belts in terms of the Counterfeit Goods Act.  Lacoste instituted a civil High Court action for an order declaring that the goods were counterfeit and for an injunction and delivery-up order against Long Chang. 

The only substantive issue in dispute was whether the REPTILE device used by Long Chang was confusingly similar to Lacoste’s well-known registered CROCODILE device shown below :

The Defendant contended, inter alia, that its mark was a LIZARD device and that that fact, together with the appearance of the word “ANOLE” on its mark, sufficiently differentiated it from the Lacoste CROCODILE device.  The court analysed numerous similarities and differences between the respective trade marks in some detail including their dominant features, the directions in which they both face, their legs and other features.

Following the approach of the court in Distilleerderij Voorheen Simon Rijnbende en Zonen vs Rolfes Nebel & Co 1913 WLD 3, the court concluded that the Long Chang REPTILE/LIZARD contained more than one of the essential particulars of the Lacoste CROCODILE device and was confusingly similar to it, expressing itself as follows :

“If one has regard to the two respective marks/devices, in my opinion and as contended by Plaintiff’s Counsel, the marks are extremely similar if not virtually identical.  The impression of the two marks, even to an average consumer acquainted with the Plaintiff’s mark, is likely to cause confusion, as there are no dominant or striking features that immediately serve to distinguish one from the other.  The depiction of the marks is relatively tiny and a casual observer is not likely to observe any differences between the two marks.  I agree with Plaintiff’s Counsel that in order for one to identify the differences between the Plaintiff’s and the Defendant’s marks/devices, one would have to specifically and closely examine the marks, side by side, with a view to identifying differences.  Any average consumer in my view and as contended by the Plaintiff’s Counsel, is likely to be confused between the two marks, if he or she is not looking for differences.”

In the result, the court found in favour of Lacoste and granted it an injunction and the costs of the case (including the costs of two counsel).

Chris Job
Adams & Adams
chris@adamsadams.co.za
13 October 2008