Court of Appeal Affirms Test for Establishing Use through Use of Another Mark

In Crocodile International Pte Ltd v Lacoste the Court of Appeal confirmed that the trial Judge applied the correct test in assessing whether use of one mark counts as use of another mark...

In long running litigation between the parties Lacoste was assigned Crocodile’s registration 70068 for a crocodile device mark that includes the word Crocodile. However, Lacoste never made use of that mark. Crocodile subsequently sought to have 70068 revoked for non-use, to which Lacoste argued that 70068 is effectively in use due to Lacoste’s use of its Crocodile device marks, which feature a Crocodile facing the opposite direction.

The trial Judge held that in assessing whether a trade mark has been used within the meaning of section 7(1)(a) it is necessary to undertake a two-stage analysis:

1. First, the court must assess the points of difference between the mark as used and the mark as registered.
2. Second, once the differences have been identified, the court must ascertain if the differences alter the distinctive character of the mark as registered.

Crocodile argued that before undertaking the two-stage analysis the trial Judge should first have identified the essential elements of mark 70068, that is, those elements that give it its “distinctive character”. Crocodile advanced this argument since Lacoste’s use was either of a Crocodile device or the word CROCODILE, but not both. However, the Court of Appeal rejected that approach for resulting in a mathematical comparison rather than an evaluative one.

The Court of Appeal agreed with the trial Judge’s assessment that the differences are insignificant and do not alter the distinctive character of the mark depicted in registration 70068. In particular, it was held that the presence of the word Crocodile in that mark only serves to reinforce the dominant element and does not alter the central message because the word merely describes the device and adds nothing more.

Author: Quinn Miller

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