Crocodile International Pte Ltd v Lacoste

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IN THE SUPREME COURT OF NEW ZEALAND

SC 47/2016
[2017] NZSC 14

BETWEEN	CROCODILE INTERNATIONAL PTE LTD Appellant
AND	LACOSTE Respondent

Hearing:	30 August 2016
Court:	William Young, Glazebrook, Arnold, OʼRegan and Ellen France JJ
Counsel:	D A Laurenson QC, B M Sullivan and G F Arthur for Appellant J G Miles QC, R M Wallis and T A Huthwaite for Respondent
Judgment:	21 February 2017

JUDGMENT OF THE COURT

AThe appeal is allowed.  Registration of trade mark 70068 is revoked from 12 December 1999.

BCosts of $25,000 plus usual disbursements are awarded to the appellant (to be fixed by the Registrar if necessary).  We certify for two counsel.

CCosts in the courts below should be set by those courts in the light of this judgment, if they are not able to be agreed.

____________________________________________________________________

REASONS
(Given by Glazebrook J)

Table of Contents

Para
Introduction	[1]
The legislation	[6]
Background	[12]
The survey evidence	[21]
The appropriate test	[29]
Lord Walker’s test	[29]
Three stage test?	[34]
Our view	[37]
Are deletions treated differently from additions?	[38]
Submissions	[38]
Discussion	[40]
Relevance of reputation	[44]
Submissions	[44]
The authorities	[47]
Our assessment	[49]
Has there been use of trade mark 70068?	[53]
The decisions below	[54]
Comments on the decisions below	[59]
Appellate approach	[64]
Submissions	[67]
Our application of the test	[69]
Survey evidence	[76]
Policy considerations	[78]
Section 7(3)	[81]
Conclusion	[87]
Discretion	[88]
Submissions	[88]
Discussion	[92]
Result	[99]

Introduction

1. In 2008 Crocodile International Pte Ltd (Crocodile International) made an application, under s 66(1)(a) of the Trade Marks Act 2002 (the 2002 Act), to revoke trade mark 70068 (owned by Lacoste) on the basis that Lacoste had not used it for three years.[1]

   [1]Crocodile claims that there has been no genuine use of trademark 70068 in three separate “non‑use periods”.  The first non-use period is 12 December 1996 to 12 December 1999.  The second non-use period is 25 August 2001 to 25 August 2004.  The third non-use period is 24 May 2005 to 24 May 2008.  The parties were in agreement that, if use is shown during

2. Lacoste accepted that it had never used trade mark 70068 in the form registered but maintained that it had used trade marks that differed in ways that did not alter the distinctive character of trade mark 70068.  Therefore, on the basis of the extended definition of use of a trade mark in s 7(1)(a) of the 2002 Act, it had used trade mark 70068.

3. The Assistant Commissioner held that Lacoste’s use of the one other trade mark she considered[2] did not constitute use of trade mark 70068.[3]  That decision was overturned by Collins J, who also discussed two other trade marks used by Lacoste.[4]  He held that the points of difference between the trade marks used by Lacoste and trade mark 70068 were insignificant and did not alter the distinctive character of trade mark 70068.[5]  His decision was upheld…