January 2008
Dentists Smile as Croc Trade Mark Logo Beats Fashion Giant
A dental surgery in Cheltenham has once again triumphed over fashion label Lacoste who lost their recent appeal about the dentists’ use of a crocodile logo.
Since 1991, The Dental Practice has used the image of a green crocodile with white teeth as its logo, chosen for its obvious association with teeth. When they tried to register their logo in 2004, however, they came up against global fashion corporation Lacoste who claimed that in the public’s mind the crocodile image was associated with their products, particularly the logo used on their clothing range. Even though Lacoste’s crocodile was side on with red jaws, it argued that the dentists’ logo would create confusion that could harm their business.
In the first case where they represented themselves, the dentists successfully argued that customers would be unlikely to mistake buying a jersey with the need for a cavity to be fixed. In the first hearing, Judge Ann Corbett found that the average consumer being reasonably well informed would not confuse dental services with clothing. This reasoning was upheld on appeal.
Briffa’s comment
This case shows that a logo that is similar to another logo will not necessarily be prevented from registration as a trade mark. A plaintiff must prove that “there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.” In considering what would be apparent to the average consumer, the Intellectual Property Office looked at visual, aural and conceptual differences between the respective marks. A key factor that distinguished the dentists’ logo from the Lacoste crocodile was that the dentists’ mark was a composite mark that combined the words THE DENTAL PRACTICE with the reptile image.
Despite the outcome of this case, caution should be taken by small businesses who have a similar logo to another business. Aside from an action in trade mark law, a trader who seeks to take advantage of the goodwill or reputation attached to another’s mark could face a claim of “passing off.”