Matijević - Law Firm

Overview

On 15 January 2026, the High Administrative Court of the Republic of Croatia (Case No. Usž-213/2025-3) dismissed the appeal filed by Lacoste S.A. and upheld the registration of the COCCODRILLO figurative mark in Croatia. The decision is final.

The mark, owned by Polish company CDRL S.A., is now registered for school bags (Class 18), children’s clothing, footwear, and headwear (Class 25), games and toys (Class 28), and related retail services (Class 35). Matijević Law Firm represented CDRL S.A. throughout the proceedings.

Procedural Background

The conflict between COCCODRILLO and Lacoste has a considerable history at EU level. In 2013, the EUIPO First Board of Appeal (Decision of 17 October 2013, R 1148/2011-1) dismissed CDRL’s appeal and refused registration of the COCCODRILLO figurative mark as an EU trade mark for goods in Class 25 (footwear of textile; clothing and headgear, except clothing and headgear of leather and imitations of leather). The Board’s finding of a likelihood of confusion rested primarily on one factor: for Italian-speaking consumers, “COCCODRILLO” unambiguously means “crocodile.” That conceptual identity, the sole meaningful link between two otherwise visually dissimilar signs, was held sufficient to establish a likelihood of confusion when combined with Lacoste’s proven enhanced distinctiveness and reputation across several major EU markets.

In the Croatian proceedings, the same marks were at issue. However, the assessment was conducted from the perspective of a different relevant public, resulting in a fundamentally different outcome.

The Relevant Public and the Average Consumer as the Determinative Factor

Under Article 8(1)(b) EUTMR and its Croatian counterpart, Article 10(1)(2) of the Croatian Trade Mark Act, a likelihood of confusion presupposes that the signs at issue are at least similar. This is a threshold condition. Where the signs are found to be overall dissimilar on the basis of the global assessment, taking into account their visual, aural, and conceptual aspects and the overall impression they produce, the further examination of likelihood of confusion, including the identity or similarity of the goods and the principle of interdependence established in Canon (C-39/97), does not apply.

In the 2013 Board of Appeal proceedings, confusion was assessed from the perspective of Italian-speaking EU consumers, for whom the word “COCCODRILLO” is immediately understood to mean “crocodile.” The verbal element of the contested mark therefore pointed directly to the same concept as Lacoste’s earlier figurative crocodile device. Conceptual identity was therefore established.

The Croatian courts assessed the marks from the perspective of the average Croatian consumer, whose level of attention to the goods at issue (everyday clothing, footwear, and accessories) is average. Both the Zagreb Administrative Court (Us I-3488/2022-12, judgment of 5 July 2024) and the High Administrative Court concluded that this consumer does not understand “COCCODRILLO” to mean “crocodile.” Although there is a phonetic resemblance to the Croatian word “krokodil”, the Italian spelling and double consonants render the meaning insufficiently transparent to the relevant public.

This finding proved determinative. The word “COCCODRILLO,” which constitutes the dominant element of the contested mark, does not evoke the concept of a crocodile for the average Croatian consumer. The accompanying figurative element, composed of abstract geometric shapes, was found to be too stylised to be recognised as a depiction of a crocodile (compare BADTORO, T-350/13, where the General Court held that a fanciful, mascot-like animal character creates a fundamentally different overall impression from a naturalistic depiction of the same animal). As Lacoste’s earlier marks contain no verbal elements, an aural comparison was not possible. Based on their overall impression, the signs were found to be dissimilar.

The dominant role of the verbal element “COCCODRILLO” in the overall impression of the contested mark further supports this conclusion (compare GELENKGOLD, T-599/13, where the General Court held that a dominant verbal element in a composite mark reduces overall similarity with a purely figurative earlier mark). The Croatian courts correctly observed that EU trade mark law protects only the concrete expression of an idea, as incorporated in a sign, not the abstract concept itself (compare CMS Italy, T-711/20). Lacoste does not hold a monopoly over the idea of a crocodile, but only over its specific depiction.

Why Enhanced Distinctiveness Could Not Alter the Outcome

Lacoste invoked the enhanced distinctiveness and reputation of its earlier marks. The High Administrative Court, confirming the assessments of the Croatian State Intellectual Property Office and the first-instance court, held that Lacoste failed to prove the reputation of its marks in the Republic of Croatia. The Court further observed that, even assuming reputation had been established, the COCCODRILLO mark would neither take unfair advantage of, nor cause detriment to, the distinctive character or repute of the earlier marks.

It is useful to explain why enhanced distinctiveness, even if established, could not have changed the outcome.

In the Sabèl case (C-251/95, § 24), the Court of Justice held that conceptual similarity arising from analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either *per se* or by virtue of its reputation. This is exactly how enhanced distinctiveness operated in the 2013 Board of Appeal decision: the signs were found similar only conceptually (for Italian-speaking consumers), and the Board relied on enhanced distinctiveness to elevate that sole conceptual link to a finding of a likelihood of confusion (compare KAJMAN, T-364/13, where the General Court found a likelihood of confusion involving the same Lacoste earlier figurative mark, but expressly on the basis of both visual similarity between the crocodilian depictions and proven enhanced distinctiveness).

Similarly, under the interdependence principle set in the Canon case, a lower degree of similarity between the signs may be offset by a higher degree of similarity between the goods, and vice versa. This, however, presupposes that some degree of sign similarity exists.

In Croatia, neither mechanism is engaged. The signs were found to be dissimilar in their overall impression for the relevant public. There is no conceptual association for enhanced distinctiveness to elevate, and no degree of sign similarity for the interdependence principle to operate upon. The global assessment of the likelihood of confusion does not proceed.

Conclusion

This case illustrates the complementary nature of the EU trade mark system, in which the unitary character of the EUTM coexists with national trade mark registrations. An EU trade mark application is assessed against any part of the EU public in whose perception a likelihood of confusion may arise. A national trade mark application is assessed against the public of the relevant Member State. The same signs, covering (almost) the same goods, may therefore produce different outcomes depending on the level at which protection is sought. This is not an inconsistency in the system. It is an inherent feature of the coexistence of unitary and national protection, reflecting the linguistic and cultural diversity the system is designed to accommodate.

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Andrej Matijević is a trade mark and patent attorney at Matijević Law Firm in Zagreb, Croatia. He served as President of the Croatian Boards of Appeal for Industrial Property Rights from 2015 to 2024.

* Case references: High Administrative Court of the Republic of Croatia, Usž-213/2025-3 (15 January 2026); Zagreb Administrative Court, Us I-3488/2022-12 (5 July 2024); EUIPO First Board of Appeal, R 1148/2011-1 (17 October 2013).