NZ Supreme Court Favours Narrow Rights Resulting from Trade Mark Use

Supreme Court rules that marks used by Lacoste cannot count as use of contested mark...

In 2017 NZSC 14 Crocodile International PTE Ltd v Lacoste the Supreme Court revoked registration 70068 in the name of Lacoste for a device mark containing a stylised version of the word Crocodile and a left facing Crocodile.

Registration 70068 was initially registered by Crocodile Garmets Ltd. However, Crocodile Garments Ltd never used that mark in New Zealand and in 1999 Lacoste filed a non-use revocation action, which resulted in settlement negotiations in which Crocodile Garments Ltd assigned 70068 to Lacoste. However, Lacoste has also not used the mark depicted in registration 70068, but claimed an intention to use based on use of its own right facing crocodile logo, which is the subject of several registrations. Lacoste’s contention in this regard was upheld by both the High Court and the Court of Appeal. In particular, the Courts held that use could be established through Lacoste’s use of other marks given that the central message is the same and that the differences are insignificant and do not alter the distinctive character of the mark depicted in registration 70068.

However, the Supreme Court rejected the lower Court’s ‘central message’ approach and instead applied a ‘global appreciation’ approach, as had been done by the Assistant Commissioner in holding that 70068 should be revoked. The Supreme Court considered that the ‘central message or idea’ approach risked being too narrow by ignoring or downplaying significant differences between marks. Such an approach could result in the register becoming clogged with marks that are not used, but which would be deemed to be used on account of co-owned marks that contain the same central message or idea. Such an enlarged ambit of protection would be counter to the public policy considerations which favour unused trade marks not remaining on the register, as they constitute a pointless hazard or obstacle for later traders. It was also noted that marks can be taken to have multiple meanings and that attempting to ascertain a central message can lead to uncertainty.

In undertaking its own global appreciation of the respective marks the Supreme Court accepted that they were conceptually similar, but noted the following differences on a visual comparison:

• The depiction of the word “Crocodile” in a cursive script and on an angle in trade mark 70068 is absent in the device and device-and-word marks as used by Lacoste.
• A stylised representation of the animal is used in the Lacoste marks, compared to the more realistic representation in trade mark 70068.

The Supreme Court concluded that the trade marks used by Lacoste are sufficiently different from trade mark 70068 such that the trade marks used by Lacoste cannot constitute use of trade mark 70068.

Author: Quinn Miller

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