Lacoste loses its Crocodile trade mark in a New Zealand Supreme Court decision
Background
Crocodile International Pte Limited (“Crocodile International”) applied to revoke Lacoste’s registration No. 70068 for the following mark on the grounds of non-use:
(the “Registered Trade Mark”)
Lacoste admitted that it had never used the above mark, but argued that its use of the following marks amounted to use of the Registered Trade Mark “in a form differing in elements that do not alter the distinctive character of the trade mark in the form in which it was registered” pursuant to section 7, thereby entitling it to maintain the registration of the Registered Trade Mark:
(the “Lacoste Trade Marks”)
The New Zealand’s Assistant Commissioner agreed to remove the Registered Trade Mark.
Lacoste successfully appealed that decision in the High Court, but Crocodile International took the case to the Court of Appeal, which affirmed the High Court’s decision. In both the High Court and the Court of Appeal, it has been held that the crocodile image was the central idea and message of the logo, not the word crocodile or the combination of the word and logo. “It is all about the crocodile” the Appeal Court said.
Decision of the Supreme Court
Crocodile International took the case to the Supreme Court of New Zealand.
First, the Supreme Court had to decide whether use of Lacoste’s Trade Marks constituted use of the Registered Trade Mark.
The Supreme Court took the view that use of a trade mark featuring only one element of the Registered Trade Mark could not constitute use of the Registered Trade Mark. While the Supreme Court accepted that there were conceptual and aural similarities between the trade marks, there were significant visual differences.
The second issue for the Supreme Court to decide was whether there was a residual discretion to retain the trade mark on the Register and if so, whether this discretion should be exercised.
The previous position of New Zealand Courts and the New Zealand Trade Marks Office was that such discretion to retain unused marks could be exercised in certain circumstances. However, the Supreme Court overturned that position and it was held that if a trade mark has not been used, there is no discretion not to revoke the registration.
It is thus clear now that use of conceptually similar trade marks for the purpose of defending a non-use action will not be accepted and that non-use is not excusable. Registered owners should ensure that their registered trade marks are used predominantly in the form in which they are registered to successfully defend potential non-use actions against their marks.