Lacoste can use L.12.12 as trademark

Lacoste can use L.12.12 as trademark

SINGAPORE - French polo-shirt maker Lacoste was allowed to register "L.12.12" as a trademark in Singapore, riding over objections by New York-headquartered fashion and lifestyle boutique Carolina Herrera.

Herrera had claimed that the mark would be similar to the one it uses for its perfume-related products, such as 212 On Ice, 212 VIP and 212 Sexy.

But Assistant Registrar of Trade Marks Diyanah Baharudin of the Intellectual Property Office of Singapore (Ipos) found no "visual, aural or conceptual similarity between 212 and L.12.12".

Her judgment released on Tuesday found " insufficient evidence to show that the consumers in Singapore identify the (Herrera's) 212 marks or their '212' signs as a family or series of marks".

Lacoste has at least 11 retail outlets and various distributors here for its clothing, watches, belts and other items. It launched a perfume with the same name as its L.12.12 polo shirts worldwide in 2010.

Herrera, with several pending and registered trademarks in various countries that contain the 212 numerals, argued that the numerals in the Lacoste marks are similar to its own as they are the "common and dominant" element in these marks.

Its lawyer Angeline Raj said the number 212 is unique for its perfume items, as such products are usually referred to by name and a combination of numbers is not common. Herrera said it is the only proprietor of the 212 marks in the three classes of goods for the trademark here sought by Lacoste.

Lacoste lawyer Sue-Ann Li said that as Herrera had not registered the 212 trademark in and of itself, or simpliciter, but with added elements such as "SEXY" and "Carolina Herrera", it should not have a monopoly on the number. She said Herrera had registered 212 in and of itself in Britain and the US, giving it rights there but not in Singapore.

Ms Diyanah said there was limited evidence to show consumers in Singapore recognise 212 as a family or series mark for Herrera. She found, among other things, that the two marks sounded different from each other. For instance, when comparing the product 212 by Carolina Herrera and L.12.12, the former was pronounced with 11 syllables while the latter had five at most.

Ms Diyanah ruled that as two marks were found to be not similar, there was no need to consider if the goods of both parties are similar or whether there would be likely confusion between the two.

Lacoste won a trademark dispute with Singapore-based Crocodile International in New Zealand last year over its right to exclusively use its crocodile logo in the territory. But a Wellington court ruled in October that Crocodile can file an appeal.

This article was published on April 3 in The Straits Times.

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