Rosie Clark

November 2014 . . . Trade marks which are not being used may be cancelled and removed from the trade marks register. A recent High Court decision involving the clothes label Lacoste casts light on the extent to which a trade mark must be used in order to maintain its registration. This case tells us that the logo being used does not need to be identical to the trade marked logo in order to maintain the trade mark registration. Instead, the use of a similar but not identical logo may be sufficient if it has the same distinctive character as the trade marked logo.
Lacoste was founded by French tennis star Rene “the Crocodile” Lacoste in 1927. Its merchandise has been distributed in New Zealand since 1983 and Lacoste crocodile trade marks are currently registered in 137 countries. Lacoste’s rival, Crocodile International Pte Ltd (Crocodile) has been based in Singapore since 1951 and trades primarily in Asia. This High Court decision is another chapter in a long running dispute between Lacoste and Crocodile over the use of their respective crocodile logos. 
- 1961: Crocodile registered a trade mark in New Zealand. For ease of reference, this trade mark is referred to as “trade mark 70068”. Trade mark 70068 featured a left facing drawing of a crocodile and the stylised word “Crocodile”. 
- 1999: Lacoste challenged the registration of trade mark 70068 which resulted in Crocodile agreeing to transfer the ownership of trade mark 70068 to Lacoste.
- 2008: Crocodile filed an application with the Intellectual Property Office of New Zealand (IPONZ) to have trade mark 70068 revoked on the grounds that it had not been used by Lacoste. 
- 2014: IPONZ and High Court decisions.
The Trade Marks Act provides that a trade mark may be revoked if it is not put to genuine use for a continuous period of three years or more. 
Crocodile alleged that Lacoste did not use trade mark 70068 between 24 May 2005 and 24 May 2008. During that period Lacoste used 3 different trade marks in New Zealand:
- an image trade mark depicting a right facing crocodile drawing;
- a combined word/image trade mark depicting a right facing crocodile drawing with the word “LACOSTE” underneath; and
- a word only trade mark utilizing the word “CROCODILE”.
IPONZ Decision
IPONZ identified a number of differences between the trade marks used by Lacoste and trade mark 70068. For example, IPONZ noted that the Lacoste crocodile “has wide open jaws as if in an aggressive posture” whereas the trade mark 70068 crocodile “appears to be in a relaxed state”. IPONZ concluded that the differences were “striking and memorable” and the use of the Lacoste crocodile did not constitute the use of trade mark 70068 in terms of the Trade Marks Act. Accordingly, IPONZ decided that trade mark 70068 should be revoked since it had not been used for at least three years.
High Court Decision
Lacoste successfully appealed this decision in the High court. The Judge noted that the main point of difference was that the Lacoste crocodile and the trade mark 70068 crocodile face in opposing directions. However, the Judge did not consider that was particularly relevant. The Judge placed more weight on the fact that in all three crocodile images “the crocodile is drawn side on, with its jaws open slightly. The tail of each crocodile curves back in a similar arch. The scales, eyes, claws and teeth details are visible on each crocodile”. 
The Judge decided that the average consumer would conclude that the message conveyed by the Lacoste marks and trade mark 70068 was similar and therefore trade mark 70068 should not be revoked. On this analysis it begs the question, if it looks like a crocodile and smells like a crocodile, could it be a Lacoste trade mark?