High-end outdoor clothing brand Patagonia Inc is taking on fast fashion retailer Gap for copying its “iconic” fleece jacket design. Patagonia Inc has filed court proceedings in the Federal Court.
In a complaint filed on 22 November 2022, Patagonia alleges that Gap willfully and deliberately copied the fleece design through the creation and sale of its “Mockneck Pullover” jackets, mimicking the flap pocket and rectangular logo of Patagonia’s classic “Snap-T” fleece jackets (both shown below).
After recently suing Aldi over allegations of intellectual property infringement based on its Colin the Caterpillar cake and Christmas glitter gin, Marks & Spencer (M&S) now faces a “liti-gator” itself as it has recently been sued by Lacoste for allegedly infringing its crocodile logo (shown below) and related rights on a number of clothing and household products.
The Allegations We set out below a representation a selection of the alleging infringing products the subject of the complaint.
Lacoste, the luxury sportswear brand, wrote to M&S last year demanding that it cease advertising and selling various goods bearing crocodile logos or signs. M&S refused and now Lacoste is seeking an injunction on M&S and damages (among other things).
The Lacoste brand, which is named after the well-known tennis player René Lacoste who was nicknamed “the Crocodile,” has existed since 1933. As such, it has an extensive reputation worldwide and has ownership of a number of UK trade mark registrations, dating back to 1984. Lacoste is arguing that by using similar versions of its crocodile logo, which has built up a considerable reputation by the brand, M&S are not only creating a likelihood of confusion between the brands, but importantly, are taking advantage of the Lacoste mark.
What is interesting about Lacoste’s claims is that although the brand only owns trade mark registrations in the UK for the word CROCODILE and various representations of its logo, they are claiming that M&S’ use of different crocodile signs on products and the use of the word CROCODILE in relation to those goods constitutes trade mark infringement and passing off. These allegations are particularly interesting since M&S’ feature varying depictions of crocodiles. The claim is also in relation to a number of products sold by M&S that feature Roald Dahl’s crocodile character from The Enormous Crocodile, whose image would be licenced to M&S to use (shown below).
What’s to Come? Whilst M&S is yet to file its defence in the proceedings, statements from the brand indicate that it is likely that they will argue that their products merely feature depictions of real life animals and are not an infringement of Lacoste’s rights.
However, whatever the outcome of this case (if it is not settled in the meantime), it will be interesting to monitor it as the decision could have important lessons for trade mark owners and third parties on the scope of protection granted over not just their trade mark, but similar marks.
Reference: Lacoste, Lacoste E-Commerce and Lacoste UK Limited v Marks and Spencer P.L.C. (IL-2021-000093)
The Australian Federal Court has ordered women’s active wear manufacturer and retailer, Lorna Jane Pty Ltd (Lorna Jane), to pay AU$5 million in penalties for making false and misleading representations to consumers, and engaging in conduct liable to mislead the public, in connection with the promotion and supply of its “LJ Shield Activewear”.
