In the modern society of constant innovation and increasing need for quality marketing, intellectual property rights are becoming more and more important. Since trademark protection is one of the prerequisites for creating a successful and recognizable business, the case of Lacoste against Thai brewery Full Moon Brewworks Co. Ltd., regarding the protection of the trademark “CHA LA WAN PALE ALE & device”, is worth mentioning.
In this case before the Taiwan’s Intellectual Property Office, in January 2024, Taiwan’s IP Office granted protection to the brewery’s trademark consisting of an image of a crocodile (an animal recognizable from the Lacoste logo) and a woman, accompanied by the words “CHA LA WAN”, which essentially mean “King of Crocodiles”. In relation to this trademark, Lacoste filed for cancellation in April 2024.
Deciding on the request filed by Lacoste, Taiwan’s Intellectual Property Office decided that it was unfounded, providing several reasons in the explanation of its decision. Namely, although there was a certain indisputable similarity between the recognizable crocodile from the Lacoste logo and that from the trademark of the Thai brewery, the Office nevertheless determined that in the specific case the sign is composed of a depiction of an animal – a crocodile accompanied by additional elements such as the words “King of Crocodiles” and a depiction of a silhouette of a woman, which makes the sign sufficiently different from the recognizable sign (registered trademarks) of Lacoste, i.e. that the brewery’s trademark also contains other distinctive elements, due to which the chances of causing confusion among consumers are insignificantly small, i.e. that the trademarks can coexist in parallel on the market without causing an association.
Furthermore, as an additional decisive fact, the Office also took into account the fact that the trademark protected by Lacoste is recognizable among consumers in the fashion industry, i.e. it is protected for clothing, footwear and other fashion accessories. In contrast, the Thai brewery’s product range includes various types of beer and other beverages. Therefore, although Lacoste submitted evidence that could establish the recognizability of the sign (the crocodile) outside the field of clothing (such as surfboards, bicycles, etc.), the Office nevertheless assessed that such evidence was not sufficient to consider that there was a likelihood that Lacoste would expand its activity into the field of production of beers and other beverages, and that the Thai brewery’s trademark could cause confusion among consumers in that area.
In reality, what was of crucial importance in the decision was the fact that the existence of visual similarity (especially in the part of the depiction of a crocodile), in itself is not sufficient to cause confusion.
Given the increasing relevance of intellectual property in the legal world, but also in the business world, this and similar cases are quite interesting for analysis, primarily from the aspect of the way in which state institutions interpret legal rules and the way in which they apply them in practice.