Recently, the trademark dispute centering on the trademarks of a crocodile figure containing headto- left and head- to- right between the Singapore-based Cartelo Crocodile Private Limited Company (Cartelo) and the French company Lacoste have finally came to an end. In its final judgment, the Supreme People's Court of China upheld the ruling of approving the trademark registration of Lacoste's trademark crocodile figure (head- toleft) made by the Trademark Review and Adjudication Board (TRAB) under the former State Administration for Industry and Commerce (Former SAIC). The case exhausted all possible proceedings, namely first- instance, second-instance trials and retrial.
Lacoste filed an application for registration of the trademark crocodile figure (head-to-right) in China in 1979. In 1995, Lacoste applied for territorial extension of its French trademark crocodile figure (head to left) .
In 2012, Cartelo opposed the Lacoste's head-to-left by citing its prior- registered CARTELO and crocodile figure (head-to-left) trademark, claiming that Lacoste registered its head-toleft trademark by improper means, since Cartelo's head- to- left was used earlier and had already owned certain influence, and both trademarks were similar. Thus, Cartelo requested the TRAB to revoke the registration of Lacoste's head-to-left.
According to file, Cartelo, in 1993, submitted the application for its own head-to-left , which would be rejected by the Trademark Office (TMO), also under the former SAIC, citing its similarity with Lacoste's head-to-right. Cartelo, however, earned some sympathy during reexamination from the TRAB, who did not approve such similarity and allowed Cartelo's registration.
Within the statutory time limit, Lacoste lodged an opposition application to overturn Cartelo's head-to-left, but failed to gain support from TMO and TRAB. Lacoste then brought the case to Beijing No.1 Intermediate Court.
After hearing, Beijing No. 1 held Cartelo's head- to- left is similar with Lacoste's head- to- right and rejected the TRAB ruling. Both Cartelo and TRAB appealed. The appllate court, Beijing High People's Court held that although the crocodile figures in the two trademarks are similar, the distinctive identification part of the CARTELO and crocodile figure (head-to-left) trademark was the English word "CARTELO", whose coexistence with Lacoste's crocodile figure (head- toright) trademark will not cause confusion among the relevant public. The first- instance judgment was revoked accordingly.
During retrial, the Supreme People's Court (SPC) held that the two head- to- left marks are not similar for the distinctive part of Cartelo's head-toleft being the English word "CARTELO" by employing the test of overall comparison.
Source: China Intellectual Property News, CNIPA
