PUMA, LEE OR LACOSTE’S COCODRILE: the concept of relevant public in Latin America from a jurisprudential perspective.

April 2021

When we speak of the relevant public in trademark law, we refer to the consumer public at which the product in question is intended to be sold. The concept of relevant public is generally analyzed by the Courts when the infringement of the trademark rights of an owner is at stake because a third party intends to register a trademark similar or identical to the owner’s trademark and this may lead to a risk of confusion in the target public when identifying the business origin of the product.

Therefore, in order to determine the relevant public for a certain product, it is necessary to consider other factors, such as those mentioned above: the similarity or identity with the earlier mark (and with the product) and the risk of confusion.

In the European Union, Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trademark states that: “Upon opposition by the proprietor of an earlier trademark, the trademark shall not be registered: (b) if because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks there exists a risk of confusion on the part of the public in the territory in which the earlier trademark is protected, the risk of confusion includes the risk of association with the earlier trademark“.

Thus, when determining the relevant public of a trademark in Europe, it will be necessary to analyze the identity or similarity of the trademarks in dispute, as far as the distinctive signs and the goods are concerned, as well as the risk of confusion that may exist and that could, consequently, lead the public to mistake a certain sign for its true owner. We will now look at this with examples.

But what is the legal situation in Latin America?

In the case of Latin America, given that there is no harmonized legislation for all the countries in the region, as is the case in the European Union, it is necessary to look at the trademark legislation corresponding to each of the countries in question (with the exception of the Andean Community, whose compendium of rules is applicable to the countries that make it up: Bolivia, Colombia, Ecuador, Peru). However, the factors to be analyzed when determining the relevant public are the same as in Europe:

– identity or similarity with an earlier mark;

– identity or similarity of the goods;

– risk of confusion;

– and, of course, the target public.

To make it easier, we will analyze the concept of relevant public with real cases and of well-known brands.

Puma case

The first case we will analyze is a case involving the Puma brand, in which the sports giant, to its regret, did not emerge victorious. In this case, the opposing marks are NEW TROPPY HART NTH vs PUMA.

The trademark NEW TROPPY HART NTH sought to register the distinctive sign shown below – together with that of PUMA on the right – for goods distinguishing clothing, footwear and headgear (Class 25 of the Nice International Classification).

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However, following the jurisprudential analysis carried out by the Superior Court of Justice of Lima, after consultation with the Court of Justice of the Andean Community on the preliminary interpretation of the key aspects of the conflict, it was ruled that:

even though there is identity between the goods that the sign applied for and those that distinguish the registered trademarks in class 25 of the Nice International Classification, i.e. clothing, footwear and headgear; from a successive and joint comparison of the trademarks, it is concluded that, although both signs have as a figurative component the image of a moving feline, given the notable particularities with which each of them are represented, together with the fact that the sign applied for also has additional elements that are not present in the registered trademarks, such as: the denomination “NEW TROPPY HART NTH” and the rectangular element with a red background containing both the denomination and the feline figure, and considering the higher degree of attention that consumers will pay when purchasing the goods, determines that the signs are dissimilar to each other and, therefore, the risk of confusion is diluted“.

Therefore, the Court alleges that the sign applied for (NEW TROPPY HART NTH) would not constitute a reproduction, imitation, translation or partial transcription of the well-known mark as it presents a feline figure different from the one appearing in the applicant’s mark (PUMA). PUMA, of course, opposed this by appeal on various grounds. However, the ground of interest here is the jurisprudential consideration of the concept of the relevant or target public, which the CJEU clarified, as we mentioned at the beginning of this article, based on the identity or similarity of the signs and the goods, and on the risk of confusion.

In this regard, the Latin American Court ruled that the risk of confusion is characterized by the possibility that the consumer, on acquiring a specific product or service, believes that he is acquiring another, when we speak of direct risk of confusion. And that the risk of confusion also arises when the consumer attributes to said product, contrary to the reality of the facts, a different business origin to the one it really has, when we speak of indirect risk. All this by assessing the identity or similarity of the signs in terms of their spelling, phonetics, concept, ideology, graphics or figurative expression.

Thus, once this comparison has been made, we place ourselves in the place of the consumer and, depending on his degree of perception, depending on the goods in question – which in this case are included in class 25 – we analyze what type of relevant public or consumer is affected:

Criterion of the average consumer: if we are dealing with mass consumption goods and/or services, the criterion of the average consumer could be the support of the confusability analysis. According to the maxims of experience, the average consumer is presumed to be reasonably well informed and reasonably attentive, whose level of perception varies in relation to the category of goods or products, which must be analyzed and weighed by the competent national authority.

The average consumer’s level of attention is an important parameter for the analysis of the confusability of signs that differentiate products or services of mass consumption, on the understanding that it can vary or be graduated according to the type of product in question, since, for example, “the same level of attention is not paid when purchasing cosmetic products as when buying party snacks”, states the Court.

Selective consumer criterion: This is based on a consumer who is more informed and attentive than the average consumer, as he/she chooses goods and services under certain specific parameters of quality, positioning or status. This is a consumer who has been clearly educated about the characteristics and qualities of the products or services he/she wishes to purchase. They know aesthetic details of quality and performance that the average population would not. For example, the consumer of gourmet restaurant services is aware of the service they provide, as they know about customer service, the cost of the dishes, advertising, promotions, etc.

Specialized consumer criterion: This is based on a consumer who is fully informed and attentive to the technical, functional or practical characteristics of the products or services he/she purchases, supported by a high degree of technical or professional training. This consumer makes a more thorough evaluation of the good or services he/she wishes to acquire, which must be considered by the competent national authority when carrying out the respective confusability analysis[1].

LEE case

The same analysis was made by the Superior Court of Justice of Lima in the LEE case (LEA vs. LEE) in which the well-known trademark also lost, stating in this case the Court, in relation to the relevant public that:

Being that, although the registered trademark and the sign applied for distinguish some of the same goods in class 25 of the International Classification, it must also be analyzed whether there is phonetic, graphic and conceptual identity between them, which has been ruled out in the present analysis; and thus the presence of a risk of confusion between the signs in dispute.

This analysis has been carried out considering the degree of attention of the consumer public of goods in class 25, which is reflexive when making their choice of purchase, as this depends on criteria such as price, quality, durability, designs, colors, season, tastes, fashion, trademarks, among others.

Therefore, there is less risk of confusing the desired product with another”[2].

Lacoste Crocodile case

And finally, the same little luck was suffered by SPORLOISIRS S.A., owner of the iconic trademark consisting of the Lacoste Crocodile, in the case against Antonio Laban Lehmann (Chile), who applied to register the trademark for the product consisting of the figure in accordance with the model set out below, to distinguish clothing, underwear, outerwear, sportswear, sportswear, slippers, footwear of all kinds, in class 25, to which the owner of the famous crocodile opposed, on the grounds, among others, of its notoriety in the eyes of the public.

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In this case, the TJCA stated, referring to one of its old decisions (Process 12-IP-20053) that a well-known trademark is one that enjoys wide dissemination among the consuming public of the type of product or service in question, thus placing it at a higher level than few trademarks are able to reach due to its special qualities, which allows it to obtain a high degree of acceptance by the consuming public.

It also remarked, based on another of its former decisions (Process 06-IP-20094), that a notorious trademark is characterized as one that is known by a group of individuals belonging to a certain group of consumers or users of the type of goods or services to which it is applicable, because it is widely diffused among said group, so that its mere mention should provoke in the public a direct association with the product or service that it identifies.

Therefore, what would be considered the relevant public in this case, in relation to the reputation of the mark, must be based on what consumers appreciate when they think of or remember the signs of the two marks at issue. Thus, when comparing two distinctive signs, consideration should be given primarily to those features that are likely to be remembered by the consuming public, the most important being similarities and not differences, as the latter will only influence the overall impression if they are so strong in comparison to the similarities that they leave a memory in the minds of consumers.

In the present case, in the case of goods in class 25 (clothing, footwear and headgear), the Court holds that it is reasonable to assume that the consumer public will pay particular attention when purchasing them, since their choice will depend on the occasion on which the goods will be used (for example, the choice will depend on whether the occasion is casual or formal) and, in addition, the material from which the goods have been made, as well as the quality and cost of the goods will be taken into consideration. Likewise, you may consider the suggestions or recommendations of third parties when making your choice[3].

In addition, it should be specified that he will also be guided in his selection by the labels and prints that are sewn or attached to the products in question.

For all these reasons, the Court finally decided in this specific case that the similarities between the two signs were not sufficient to deny the trademark application filed by Antonio Laban, although it is true that in other cases the famous Lacoste Crocodile has won on the basis of its notoriety.

What is clear is that, even with the key concepts of what is considered jurisprudentially relevant public on the table, this will always be analyzed according to the goods and marks in question, the class in which they are classified and, of course, according to the specific circumstances of the case.

Eduardo Zamora / Sara del Río


[1] Resolution of the TJCA, process 49-IP-2017 of 8 April 2018 and Resolution of the Superior Court of Justice of Lima, File no.: 08731-2014-0-1801-JR-CA-25, of 5 December 2018.

[2] Resolution of the Superior Court of Justice of Lima, Case No. 15621-2015, of 17 October 2018.

[3] (INDECOPI, Perú) Tribunal de Defensa de la Competencia y de la Propiedad Intelectual, Sala Especializada en Propiedad Intelectual. Resolución nº 3971-2013/TPI-INDECOPI, Expediente Nº