French Crocodile Wins over Chinese Crocodile

In May 2007, the French company La Chemise Lacoste (Lacoste), the owner of the well-known brand "Lacoste", won in the trademark lawsuit against Guangzhou Tai'e Dress Co., Ltd (Tai'e) before the Beijing No. 1 Intermediate People's court in the first instance.

The court ruled that the defendant Tai'e should cease the production and sale of the garments with the infringed trademark and compensate RMB 500,000 (USD 62,500) to the plaintiff. The court also ruled that the defendants Beijing Nianiangao Garments Co., Ltd. (hereinafter "Nianniangao", a trading company) and Beijing Urban-Rural Trade Center Co., Ltd. (the legal person of Beijing Urban-Rural Shopping Center where the garments with the infringed trademark were sold) to cease the sale of the garments with the infringed trademark and pay a compensation of RMB 200,000 (USD 25,000) and RMB 60,000 (USD 7,500) respectively.

The French company La Chemise Lacoste was established in 1933 and registered the trademark "Lacoste & Device" in the same year. The trademark has obtained the right in 192 countries over past years and in 1980, Lacoste obtained the exclusive trademark of "Lacoste & Device" in China. At present, Lacoste has registered 12 "Lacoste & Device" trademarks in different categories in China and was recognized as Chinese well-known trademark in 2005.

At the beginning of April 2005, Lacoste found that Nianiangao sold garments with the trademark "Golden Crocodile", which infringed its trademark "Lacoste", in the affiliated counters attached to several shopping centers including Beijing Urban-Rural Shopping Center. In July 2006, Lacoste filed a trademark infringement lawsuit before the Beijing No. 1 Intermediate People's Court, alleging that Tai'e, Nianniangao and Urban-Rural Shopping Center infringed its exclusive trademark right. The plaintiff claimed that the three defendants had caused damages to its registered trademark, and at the same time, the defendants infringed its commercial reputation by diluting and damaging the trademark "Lacoste". Therefore, the plaintiff requested that the three defendants should cease the infringement activities, make a public apology in China Industrial and Commerce News to eliminate the adverse effects and compensate RMB 1,000,000 (USD 12,500).

The defendant Tai'e pled that since the register of "Lacsote" was assigned to the plaintiff in June 2006, the plaintiff did not have the exclusive right of the infringed trademark. Secondly, the plaintiff has registered 12 trademarks and it did not specify which trademark the defendant infringed. Thirdly, the plaintiff did not provide any evidence to prove that the commodities with said trademark had entered the market. Finally, the trademark "Golden Crocodile" used by Tai'e is a legal trademark and has obtained some reputation in the market. The most important is that the trademark "Golden Crocodile" does not present any similarities with "Lacoste". In a word, Tai'e did not constitute any infringement.

However, the court held that the plaintiff enjoyed the complete exclusive trademark. Tai'e owns the exclusive right of the trademark "Golden Crocodile", but such right should comply with the trademark which is rectified and registered. Tai'e, on the contrary, emphasizes on the crocodile in its trademark and weakens the water wave and the characters "". In some cases, Tai'e even uses the device of crocodile in its trademark alone. As for the similarities between the two trademarks, the court held that the head and the tail of the crocodile in "Golden Crocodile" owned by Tai'e are in the same direction with the crocodile "Lacoste" (registration number: No. 141103 and No. 1318589), which present a similar visual effect. Moreover, the scopes of the commodities bearing the two trademarks are in the same category. Therefore, the trademark of "Golden Crocodile" misleads consumers and causes unnecessary confusion. The activities of Tai'e have infringed the exclusive right of the trademark owned by Lacoste. The court concluded that Tai'e was liable for the civil responsibilities of ceasing the infringement, eliminating the adverse effects and compensating.

In addition, the court also concluded that as the distributor and seller of the commodities with the infringed trademark, Nianniangao and Urban-Rural Shopping Center were responsible for checking the validity of not only the manufacturer but also its trademark. In this sense, the two defendants did not do their examination obligation well and had subjective fault. The court held that the two defendants infringed the exclusive trademark right of the plaintiff. Therefore, they are responsible for the civil liabilities of ceasing infringement, eliminating adverse effects and compensating.

Trademark: Lacoste	Trademark: Golden Crocodile