Making off with the Lacoste trademark

Lacoste is a good example of a strong brand in terms of both its name and its logo.

Founded by the French tennis player René Lacoste, this fashion house has become famous over the years for its iconic polo sweaters and sportswear. With these kinds of brands, you can be almost certain that trademark rights are well protected. However, we occasionally see parties that attempt to take advantage of a famous brand.

In just such a case, a Chinese party recently filed an application in the European Trademark Register for LACOSTE, but instead of being for clothing, this European trademark was for electric bikes, folding bicycles and cross-country motorcycles. Not unsurprisingly, Lacoste filed an opposition, and because the products (clothing as opposed to bicycles) were different, this opposition was based on the reputation built by the older Lacoste trademark for clothing.

Any argument citing reputation rests on the assumption that the user of the disputed trademark would either obtain an unfair advantage or be detrimental to the original trademark’s distinctive character and reputation, by their use of the mark. If it is possible to prove that consumers would make a connection between the two trademarks, it no longer matters whether they are for identical or similar products.

Trademarks with a reputation enjoy a higher degree of protection, and it is not therefore necessary to prove any similarity between items – in this case, clothing and electric bicycles – if the distinctive character and reputation of the earlier mark are at risk. This may, for example, be a concern if there is a risk of ‘dilution’ for the older trademark. Proof of reputation is crucial, however, and this is where often the difficulty lies.

 Lacoste presented very convincing evidence in this proceeding, including news articles, proof of a very large following on social media, sponsorships and several court rulings within the European Union affirming its reputation. The European Trademarks Office agreed, determining that the Chinese applicant was indeed attempting to ride on the coattails of the well-known Lacoste brand in order to benefit from its prestige. This would give them an unfair advantage. As a result, the entire European application filed by the Chinese applicant was rejected.

A clear victory for Lacoste. Will the "other" Lacoste contest this ruling? We don’t rate their chances of success very highly if they do. But you never know! We’ll keep you updated...

Author: Matthias Van Den Broek

Bio: Matthias van den Broek is a trademark attorney and specialist in advising in online brand protection and domain name disputes. His client portfolio includes well-known names in the financial sector, ranging from crypto startups to market makers. Matthias enjoys writing about current intellectual property issues, with an affinity for design law.