Lacoste defeated in trade mark ruling
July 2008
The French fashion label Lacoste has failed in its attempt to block a Cheltenham dental practice using an image of a crocodile in its advertising.The label, famed for its use of a crocodile logo since 1933, had objected to an application by the Dental Practice to secure exclusive rights to use a crocodile for advertising dental services. The clinics owners, Dr Simon Moore and Dr Timothy Rumney, argued in response that it was unreasonable for a single company to expect to have sole and exclusive rights to use crocodile images. An adjudicator at the UK Intellectual Property Office agreed, ruling that people who sought dental care would not be fooled into thinking that the clinic was linked to the label.
Awards
Lacoste was ordered to pay £1,000 towards the clinics costs. This, combined with their own substantial legal fees, has left the label with a significant financial loss, as well as requiring them to re-think their approach to protecting their intangible assets.
The ruling is expected to increase the demand for insurance products to assist companies in protecting their intellectual property. SAMIAN Underwriting Agencies Limited, the provider of market leading intangible asset protection solutions, regards this as yet more evidence of the need for their products. Chief Executive, Ian Lewis, said that "This again shows the need for companies, even market leaders such as Lacoste, to take all necessary steps to ensure that their intellectual property assets are fully protected, but without the risk of the severe financial penalties that can ensue from this. An appropriate policy would provide far greater protection at a much smaller cost, enabling companies to plan for the future in the knowledge that their risk exposure is minimised and their assets protected."
This view was backed by Andrew Clay, Head of Intellectual Property at top 20 law firm Hammonds. He stated that "Intellectual Property lies at the heart of the value of many household names, but they remain at risk on the costs of enforcing and defending these key rights. Many of our clients are now realising this, and are now recognising the value of Intellectual Property insurance in helping them to smooth the costs of this type of action. There has been a huge amount of interest in Intellectual Property insurance products in the last year, but many large companies are still unaware of the benefits of obtaining cover, or are not familiar with the innovative solutions that are now available."
