Crocodile International Pte Ltd v Lacoste
[2013] NZHC 2265
•2 September 2013
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
CIV 2010-485-2477 [2013] NZHC 2265
UNDER the Trade Marks Act 2002 IN THE MATTER OF
an appeal from the decision of the Assistant Commissioner of Trade Marks dated 12 November 2010
AND
New Zealand Trade Mark Registration No
70068 CROCODILE and DeviceBETWEEN
CROCODILE INTERNATIONAL PTE LIMITED
Appellant
AND
LACOSTE Respondent
Hearing: 20 May 2013 Counsel:
B W F Brown QC and A J Evans for the Appellant
J G Miles QC, R Wallis and T Huthwaite for the RespondentJudgment:
2 September 2013
JUDGMENT OF MALLON J
Table of Contents
Introduction ....................................................................................................................................... [1] Background........................................................................................................................................ [2] Other Lacoste and CIL New Zealand applications ...................................................................... [12] Application to revoke ...................................................................................................................... [14] The Assistant Commissioner’s decision ......................................................................................... [16] Other events ..................................................................................................................................... [18] Meaning of aggrieved person ......................................................................................................... [20] The law ......................................................................................................................................... [20] Application of the law................................................................................................................... [29]
Result ................................................................................................................................................ [37]
CROCODILE INTERNATIONAL PTE LIMITED v LACOSTE [2013] NZHC 2265 [2 September 2013]
Introduction
[1] The appellant (“CIL”) seeks to have a trade mark registered by the respondent (“Lacoste”) revoked for non-use. The issue on this appeal is whether CIL has standing to make that application. That in turn depends on the meaning of “aggrieved person” as it is used in s 65 of the Trade Marks Act 2002. The trade mark concerned has the words and image of a crocodile. CIL says that it is an aggrieved person because it is the registered proprietor of that mark and other crocodile marks in other countries, it uses that mark and other crocodile marks in other countries, some of its products with its crocodile marks are in this country, and it intends to sell its products in New Zealand under one or more of its crocodile marks. Lacoste says that CIL is not an aggrieved person because it will not be able to use its crocodile marks in New Zealand and so is not legally or practically affected by Lacoste’s registration of the mark which it seeks to revoke.
Background
[2] This issue arises in the context of a long standing contest between the parties, and another company Crocodile Garments Limited (“CGL”), here and elsewhere in respect of their crocodile marks.1
[3] The particular mark at issue here is trade mark no 70068 in class 25 for “articles of clothing”. CGL obtained the registration on 20 June 1963. Lacoste acquired the mark from CGL in 2003 (in settlement of international litigation and disputes between them), with the assignment of the mark to Lacoste being recorded on the trade marks register in 2004. The mark is as follows:
1 At some stage CGL has raised whether Lacoste’s mark is an alligator rather than a crocodile which Lacoste strongly rejects. For present purposes there is no need to discuss this issue further. For simplicity this judgment will refer to the mark as a crocodile (rather than a Saurian mark.)
[4] In New Zealand, in addition to the above mark, Lacoste has a number of registrations in various classes with the image of a crocodile, some appearing with the words Lacoste and some not. In relation to class 25 (in addition to the above mark), its registered marks include:
[5] For its part, CIL does not have New Zealand registrations for any crocodile marks. Its registered marks in New Zealand are mainly for its Cartelo mark and these registered marks do not include the image of a crocodile.2 It has three registered marks in class 25, but they are different from the crocodile marks which are of relevance to this case. It has registered marks in other countries which use the words and/or image of a crocodile. For example, its marks elsewhere include the same mark as that which it seeks to remove for non-use here (for reasons explained below). Its marks in other countries also include, for example:
[6] CIL’s evidence includes the following:
2 In other countries CIL does have registered marks for Cartelo that include the image of a crocodile.
(a) Its crocodile mark was created by Tan Hian-Tsin, the founder of CIL, in 1947. Tan Hian-Tsin chose the word “CROCODILE” and the image of a crocodile for its symbolism (strength, persistence and easy identification). Tan Hian-Tsin obtained the first trade mark registration of the particular mark that is at issue in this case in Singapore in 1951. The registration was for “shirts and singlets”. He also obtained copyright registrations for crocodile mark(s) in China, India and Indonesia.
(b) CIL first used a crocodile mark in relation to woven shirts.
Subsequently CIL entered other segments of the clothing market, such as ladies and children’s apparel, suits, undergarments, socks, handkerchiefs, slacks, sports apparel, and accessories. It also used the mark CARTELO (with and without the crocodile image) in relation to some of these products.
(c) Since the early 1950s CIL has had a presence in various parts of Asia.
Presently CIL has over 50 licensees across Asia, including in Singapore, Korea, Bangladesh and China. Across these countries there about a thousand retail outlets where CROCODILE and CARTELO & CROCODILE brand products are sold.
(d)CIL has sponsored several international sports events (widely covered by international media and in which representatives of New Zealand and Australia have participated), it has received awards and recognition, and it receives enquiries from all over the world (including from New Zealand and Australia).
[7] As to CGL the evidence includes the following:
(a) Tan Hian-Tsin was a member of the Chen family. Another member or members of that family, who had immigrated to Hong Kong, established CGL. CGL obtained a trade mark registration in Hong
Kong for the same mark that is the subject of CIL’s New Zealand
application to revoke for non-use at issue here.
(b) The CIL and CGL companies operated independently but cooperated
closely and agreed not to encroach upon each other’s territories.
(c) The Chen family largely sold out of CGL in 1987/88, although the children continue to have some shares. The majority shareholder is now Lai Sun Group which also manages CGL.
[8] Lacoste’s evidence includes the following:
(a) Its crocodile marks originated in France, from the French tennis player, René Lacoste. He was a top-ranked player in the mid-1920s. He was nicknamed the “crocodile” following a bet he made with the captain of the French Davis Cup team concerning a suitcase made from crocodile skin. A friend then drew a crocodile for him, which was embroidered onto the blazer he wore on tennis courts.
(b)In 1933 René Lacoste formed a partnership with another associate to distribute polo shirts embroidered with the crocodile design, which had been created for René Lacoste’s personal use. The partnership became a company in 1946.
(c) In addition to polo shirts, the crocodile mark was used in relation to other tennis products developed by René Lacoste in the 1960s and later (a string damper, a steel racquet, a handle damper and the Equijet racquet). Lacoste has also extended into other product lines, such as perfumes, eyewear, leather products, footwear, household linen, belts and watches, under or with reference to its crocodile marks.
(d)There are approximately 850 Lacoste boutiques worldwide, which exclusively sell goods under or by reference to Lacoste’s crocodile marks. There are also in excess of 2,000 Lacoste stands in larger
in many thousands of retail sports shops and by other specialist retailers around the world.
(e) Following a distribution agreement in 1982, Lacoste goods have been sold in New Zealand under its crocodile marks. These goods have been sold through retailers and, from 1991, through boutiques. By
1996 there were three such boutiques in New Zealand.
(f) Lacoste’s extensive advertising and marketing includes large scale sponsorship of various international events and competitions (eg the French Open at Roland Garros) and sponsorship of numerous sportsmen and women throughout the world.
[9] The evidence includes details about the various litigation and disputes in countries around the world involving Lacoste and CIL or CGL. Agreements were reached in respect of some countries. Lacoste and CIL reached a Mutual Coexistence Agreement in 1983 in relation to Singapore, Malaysia, Indonesia and
Taiwan.3 In that agreement CIL and Lacoste acknowledged their respective marks.
One of those marks for CIL was the mark at issue here. In 1985 the 1983 agreement was extended to cover use and registration of Lacoste and CIL’s respective trade marks in India, Pakistan, Bangladesh and Korea.
[10] Lacoste and CGL entered into agreements in 1980 and in 2003. Under the
1980 agreement Lacoste and CGL agreed terms on which they would settle their dispute in Hong Kong, the United Kingdom and Denmark. The terms of that agreement are summarised in the 2003 agreement, which they entered into as a result of a further dispute (in part concerning CGL’s New Zealand registration of the mark at issue here), as follows:
Whereas, in the late 1970’s LCL [Lacoste] started selling its products in Hong Kong and, as a result of such sales, a dispute arose with CGL, who claimed that the use of the Lacoste Emblem infringed its prior rights upon a
3 A copy of this agreement is not provided in the material for the High Court. The agreement is described, however, in the evidence for CIL.
trademark representing a crocodile device facing to the left as depicted in
Schedule II hereto (hereinafter referred to as the “CGL Crocodile Device”).
Whereas, LCL and CGL settled their dispute on May 1, 1980, pursuant to a Settlement Agreement, a Licence Agreement and a Distribution Agreement (hereinafter collectively referred to as the “1980 Agreements”) whereby it was agreed in particular that :
CGL would register, in its own name, the Lacoste Emblem in Hong Kong, and would grant to LCL the right to use such mark in Hong Kong, and
-LCL would appoint CGL as its distributor in Hong Kong for certain of its products bearing the Lacoste Emblem, and
-CGL would undertake not to register any trademark confusingly similar with the Lacoste Emblem outside of Hong Kong, such prohibition applying to all classes of products.
Whereas, shortly after the signature of the 1980 Agreements, a new dispute arose between LCL and CGL, with respect to registrations by CGL of the CGL Crocodile Device in class 25 in New Zealand and Saudi Arabia, prior to the signature of the 1980 Agreements, that had been overlooked by CGL during the negotiation; and whereas, LCL claimed that such attitude was against the spirit of the 1980 Agreements; and whereas, CGL refused to withdraw the above registrations.
[11] The terms of the 2003 agreement included the assignment of the mark at issue here as follows:
13.CGL shall promptly assign or transfer to LCL [Lacoste] free of charge, any trademark registration, application, copyright or other intellectual property right (including, but not limited to registration no. 70068 in New Zealand and registration no. 92/80 in Saudi Arabia) it may own directly or indirectly in the CGL Crocodile Device and any and all other representations of a crocodile device (other than the Croco Marks), whether alone or in combination with the word “crocodile”, or with any transliteration in Chinese characters of the word “crocodile” or with any other word outside of the Territory and Hong Kong.
Other Lacoste and CIL New Zealand applications
[12] Lacoste applied for registration of the word mark “CROCODILE” (application no 604957) in class 25. CIL opposed the application in June 2005. CIL was successful before the Assistant Commissioner. The Assistant Commissioner’s
(with a registration date of 13 December 1999).
[13] CIL applied to register Cartelo marks which included the image of a crocodile (application no 717557). That application was opposed by Lacoste in March 2005. The application was refused. CIL appealed to the High Court but was unsuccessful.5
Application to revoke
[14] On 27 June 2008 CIL applied to revoke the mark at issue here. The application, amongst other things, referred to CIL’s crocodile trade marks in other countries (including for the trade mark at issue here) and its intention to trade in New Zealand using these trade marks. The grounds on which CIL claimed to be aggrieved were as follows:
...
3. THEREFORE, the continued registration of the CROCODILE (Stylized) and Crocodile Device trade mark in the name of the Owner:
- may prevent or hinder the registration of the Applicant’s CARTELO (Stylized) and Crocodile Device trade mark (Application No. 717557) In New Zealand;
- may prevent or hinder the Applicant in its opposition of Registration No. 604957 CROCODILE in the name of the Owner; and
- may prevent or hinder the use and/or registration of the Applicant’s various CROCODILE word and/or crocodile device marks in New Zealand.
4. IN the circumstances, there is a reasonable possibility of the Applicant being appreciably disadvantaged in a legal and/or practical sense by the CROCODILE (Stylized) and Crocodile Device trade mark remaining on the Register in the name of the Owner. Accordingly, the Applicant is a person aggrieved by the continued registration of Trade Mark No. 70068.
[15] Lacoste filed its counterstatement seeking to maintain the registration on 3
November 2008.
4 Lacoste v Crocodile International Pte Ltd HC Wellington CIV-2009-485-2536, 1 March 2011.
5 Crocodile International Pte Ltd v Lacoste HC Wellington CIV-2009-485-2534, 1 March 2011.
The Assistant Commissioner’s decision
[16] The Assistant Commissioner dismissed CIL’s application to revoke the registration.6 Although the parties advanced their respective positions in respect of the substantive issue of use of the mark by Lacoste, the Assistant Commissioner dealt only with the threshold question of whether CIL was an aggrieved person. She found that it was not.
[17] On that issue the Assistant Commissioner considered the test to be whether there was “a reasonable possibility of [CIL] being appreciably disadvantaged in a legal or practical sense by the relevant mark remaining on the register”.7 She considered that this question was not to be “divorced from the nature and extent of the relief claimed”.8 In finding that CIL did not meet this test, the Assistant Commissioner considered the three grounds on which CIL claimed it was an “aggrieved person”:
(a) In respect of CIL’s first ground (that the mark hindered or prevented CIL registering its 717557 application) the Assistant Commissioner noted that IPONZ had not cited the mark at issue here, and nor was it relied on by Lacoste in its opposition to that application.
(b)In respect of CIL’s second ground (that the mark hindered or prevented CIL’s opposition to Lacoste’s 604957 application) the Assistant Commissioner noted (amongst other things) that CIL had in fact relied on the relevant mark in its opposition to the 604957 application.
(c) In respect of CIL’s third ground, the Assistant Commissioner said that:9
First, I note that [CIL] does not currently trade in New Zealand. However, [CIL] has traded for many years (as early as 1947) in other
6 Lacoste v Crocodile International Pte Ltd IPO T23/2010, 12 November 2010.
7 The Assistant Commissioner cited The Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR
417 (NSWSC) for this test at [25].
8 Also citing The Ritz Hotel Ltd v Charles of the Ritz Ltd at [26] of her decision.
9 At [38]-[45].
jurisdictions using a mark that is identical to the relevant mark in these proceedings.
...
Second, I note that [CIL] has trade mark registrations for a mark that is identical to the relevant mark in other jurisdictions. Some of these trade mark registrations have registration dates that pre-date the deemed date of registration of the relevant mark, which is
18 December 1961.
...
However, I note that trade mark rights are territorial so the fact that a trader is the owner of a mark in one jurisdiction does not automatically make that trader the owner of the identical mark in New Zealand. This is borne out by the facts of this case: [CIL] owned a mark in certain jurisdictions, while Crocodile Garments Ltd was the registered proprietor of the identical mark (the relevant mark) in New Zealand for the period 18 December 1961 to
21 December 2004. It appears that there was an understanding between [CIL] and Crocodile Garments Ltd.
...
Third, I note that [CIL] claims that it intends to trade in New Zealand under the relevant mark. However, no details concerning the steps that have been, or will be, taken by [CIL] in relation to this proposed undertaking have been provided.
...
It appears that [CIL] is concerned about Lacoste bringing infringement proceedings against it if [CIL] were to trade in New Zealand under the relevant mark.
...
However, I note that Lacoste has been the registered owner of the relevant mark since 21 December 2004. Before that date, Crocodile Garments Ltd was the registered proprietor of the relevant mark, and it appears that [CIL] was in a co-operative relationship with that company.
[Assistant Commissioner here relied on copyright issue as a fourth point.]10
In these circumstances, I find that [CIL] has not established that it is an aggrieved person for the reason put forward by [CIL], which is that: the continued registration of the relevant mark may prevent or
10 Lacoste does not seek to rely on this point in opposing CIL’s appeal. This disposes of CIL’s application for leave to adduce evidence (which related to the copyright issue). I therefore do not discuss this further.
hinder use and/or registration of [CIL]’s various CROCODILE work
and/or device marks in New Zealand.
Other events
[18] On 1 March 2011 the High Court delivered two judgments involving Lacoste and CIL. One judgment concerned Lacoste’s appeal against the Assistant Commissioner’s decision to refuse Lacoste’s application to register the trade mark CROCODILE (that is, application no 604957).11 In overturning the Assistant
Commissioner’s decision, the High Court held that:
(a) CIL did not discharge its evidential onus to establish there was
awareness or cognisance of its marks in a substantial number of
persons in the relevant New Zealand market. (b)
The idea of a crocodile is central to the Lacoste brand, its application to register CROCODILE was intimately connected to its long
established international brand and there was ample evidence to
support Lacoste’s intention to use the trade mark.
[19]
The
other judgment concerned CIL’s appeal against the Assistant
Commissioner’s decision declining CIL’s application to register two marks with the word Cartelo and the image of a crocodile (that is, application no 717557).12 The High Court upheld that decision, finding that the similarity of the crocodile image with that of Lacoste’s crocodile and the position of the crocodile in the Cartelo mark meant that a substantial number of persons in the relevant market would wrongly perceive the Cartelo mark to be linked to Lacoste. In making that finding the judgment addressed a concern raised by CIL that the effect of rejecting CIL’s application effectively gave Lacoste a monopoly in the crocodile. The Judge said
that if it does give Lacoste a monopoly “it is only in relation to marks that use a crocodile that is almost identical to Lacoste’s and does so in a way that insufficiently
distinguishes the proposed trade mark from Lacoste’s.”13
11 Lacoste v Crocodile International Pte Ltd, above n 4.
12 Crocodile International Pte Ltd v Lacoste, above n 5.
13 At [53].
Meaning of aggrieved person
The law
[20] Section 66 of the Trade Marks Act 2002 sets out a number of grounds on which a trade mark may be revoked. They include where the mark has not been put to genuine use in the course of trade in New Zealand. Other grounds relate to suspension of the use of the trade mark over a period of time,14 where the trade mark has become a common name in general public use, where the mark is likely to deceive or confuse the public and where a relevant patent has expired.
[21] Section 65 of the Trade Marks Act deals with who may apply to revoke a registered trade mark. It provides:
65 Application for revocation of registration of trade mark
(1) An aggrieved person may apply to the Commissioner or the Court for the revocation of the registration of a trade mark.
(2) The Commissioner or the Court may refuse any application for the revocation of the registration of a trade mark that is vexatious.
[22] The “aggrieved person” requirement was also a requirement under the Trade Marks Act 1953, the predecessor of the 2002 Act.15 However the power to refuse an application for revocation on the grounds that it is vexatious is a new provision.
[23] Earlier United Kingdom legislation also included an “aggrieved person” requirement.16 It is, however, no longer a requirement.17 Before the “aggrieved person” requirement was removed from the United Kingdom legislation, its meaning was discussed in a number of cases. The key decisions (as presented by the parties) are:
(a) In Re Riviere’s Trade-Mark holding that a person carrying on business abroad, need not allege that they intended to carry on business in
14 This ground has been repealed as at 15 September 2011.
15 Section 35(1) of the Trade Marks Act 1953 referred to a “person aggrieved”.
16 Trade Marks Registration Act 1875 (UK), the Patents, Designs, and Trade Marks Act 1883 (UK), and the Trade Marks Act 1938 (UK).
17 Section 46(4) of the Trade Marks Act 1994 (UK) provides that “any person” may make an
application for revocation
England in order to be an aggrieved person in respect of an application to remove a trade mark in England.18
(b) Re Powell’s Trade Mark where Lord Herschell stated:19
Wherever it can be shewn, as here, that the applicant is in the same trade as the person who has registered the trade-mark, and wherever the trade-mark if remaining on the register would or might limit the legal rights of the applicant so that by reason of the existence of the entry on the register he could not lawfully do that which but for the existence of the mark upon the register he could lawfully do, it appears to me he has locus standi to be heard as a “person aggrieved”.
...
But the fact that the trader deals in the same class of goods and could use it, is primâ facie sufficient evidence of his being aggrieved, which can only be displaced by the person who registered the mark, upon whom the onus lies, shewing that there is no reasonable probability that the objector would have used it, although he were free to do so.
(c) Similarly, Lord Shand said:20
It appears to me that where a person is engaged in the same trade as the trader ... and where in the development of his business he may find it advantageous to use the words claimed, he is within the meaning of the statute a “person aggrieved.”
(d) Daiquiri Rum Trade Mark where Lord Pearce said:21
Thus, the general intention and policy of the Act show, I think, that Parliament intended the words to have a wide meaning. If an erroneous entry gives to his rival a statutory trade advantage which he was not intended to have, any trader whose business is, or will probably be affected thereby is “aggrieved” and entitled to ask that the error should be corrected.
18 Re Riviere’s Trade-Mark (1884) 26 Ch D 48 (CA) at 57.
19 Re Powell’s Trade Mark [1894] AC 8 (HL) at 10 and 12.
20 At 15.
21 Daiquiri Rum Trade Mark [1969] RPC 600 (HL) at 615.
[24] Earlier Australian trade mark legislation also had the “aggrieved person” requirement.22 Like the United Kingdom, this is no longer a requirement in Australia.23 The leading authority in respect of that requirement was The Ritz Hotel Ltd v Charles of the Ritz Ltd. In that case McLelland J gave the following meaning to “aggrieved”:24
It is sufficient for present purposes to hold that the expression [“person aggrieved”] would embrace any person having a real interest in having the register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. In my opinion the concept does not admit of further refinement.
[25] More recently the requirement was the subject of consideration by the High Court of Australia in Health World Ltd v Shin-Sun Australia Pty Ltd.25 In that case Health World sold products under the name “Inner Health Plus”. Later Shin Sun began selling health products under the name “HealthPlus”. Subsequently Shin-Sun registered “Health Plus” as a trade mark and Health World registered “Inner Health Plus” as a trade mark. Health World then applied for removal of Shin-Sun’s mark.
At first instance and on appeal Health World was unsuccessful on the ground that it
was not an “aggrieved person” and so did not have standing.
[26] In allowing the appeal the High Court of Australia said that the public interest in maintaining the integrity of the register26 supported a liberal, rather than a restrictive, construction of the term “aggrieved person”.27 The “aggrieved person” requirement acts as a filter to applications by “busybodies or ‘common informers or
strangers proceeding wantonly’ or persons without any interest ... beyond gratifying
22 Trade Marks Act 1905 (Cth), Trade Marks Act 1955 (Cth) and Trade Marks Act 1995 (Cth).
23 Section 92(1) of the Trade Marks Act 1995 (Cth) “a person” may apply to have a trade mark removed from the register on the ground of non-use. Standing is also not a requirement in either Singapore (Trade Marks Act, s 22(5)) or Hong Kong (Trade Mark Ordinance, s 52(1)).
24 The Ritz Hotel Ltd v Charles of the Ritz Ltd, above n 7, at 454.
25 Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13, [2010] 240 CLR 590.
26 That is, that “the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied”: At 597.
27 At 598.
an intellectual concern or reflecting ‘merely sentimental motives’.”28 The Court considered there was no exhaustive test for whether a person was an “aggrieved person”, stating:29
The legislation has not defined “aggrieved” ... and many courts have eschewed any attempt to do so. Rather they have proceeded to deal with the particular problem before them, leaving it to later courts to deal with different problems in the light of their own peculiar circumstances. It is desirable to employ that technique in this case as well.
[27] The Court held that Health World did not need to show that it intended to use the mark registered by Shin-Sun. It was sufficient that Health World and Shin-Sun were rivals in selling the health products in question.
[28] In New Zealand there appears to be no Supreme Court of Court of Appeal decision which discusses the meaning of “aggrieved person” in this context. The issue was briefly discussed in a recent High Court decision, Chettleburgh v Siduce Group Australia Pty Limited.30 The High Court Judge referred to the passage quoted above from The Ritz Hotel Ltd v Charles of the Ritz Ltd. The Judge noted that the scope of the requirement was broad.31 In that case the Court had no difficulty in finding that the requirement was met in circumstances where the applicant seeking a declaration that a mark was invalid claimed to be the owner of the mark at the time of the respondent’s application for registration.32
Application of the law
[29] The first and second grounds on which CIL claimed to be aggrieved have been overtaken by events. Lacoste’s opposition to application 717557 was successful.33 Similarly Lacoste’s application 604957 was ultimately successful and
the mark is now registered.34 It is CIL’s third ground that remains relevant.
28 At 598.
29 At 599.
30 Chettleburgh v Seduce Group Australia Pty Ltd [2012] NZHC 2563.
31 At [72].
32 At [2] and [74].
33 Crocodile International Pte Ltd v Lacoste, above n 5.
34 Lacoste v Crocodile International Pte Ltd, above n 4.
[30] CIL says that Lacoste never intended to use the mark. It obtained assignment of the mark to prevent CGL, and now CIL from using it. CIL, on the other hand, trade under that mark in other countries, and it would like to trade here with that mark but cannot do so because of Lacoste’s registration. Against the history outlined above, CIL asks what other entity in the world would have better standing than it to challenge Lacoste’s registration of the mark for non-use.
[31] Lacoste says that CIL’s legal rights are not affected by its registration of the crocodile mark. It refers to the High Court decision that CIL cannot use the crocodile image even when it is in conjunction with Cartelo. It says that it follows that the use of a crocodile image on its own would not be tolerated. It says that the effect of the two High Court decisions is to give Lacoste a monopoly on the crocodile image and the word crocodile, which has arisen out of Lacoste’s long history here. It says that, even without the mark at issue here, Lacoste would sue CIL for infringement of Lacoste’s marks were it to enter the New Zealand market
using the crocodile marks under which CIL sells goods in other countries.35
[32] It says that there is no point in an application for revocation being heard unless there is some commercial reality to it. It says that in all the cases relied on by CIL there is a rationale as to why the registered mark was a barrier to the person’s trading activities or intentions. Lacoste points out that CIL does not trade in New Zealand, has produced no evidence to support its intention to trade in New Zealand and will never lawfully be able to register a crocodile mark, word or device in New Zealand, because of the portfolio of marks that Lacoste has. It says that in these circumstances CIL’s interest is purely sentimental and no legal injury or damage will occur to CIL by refusing its application.
[33] CIL says that Lacoste’s response wrongly speculates on what would occur if CIL were to trade in New Zealand under the mark at issue here. It says that Lacoste does not have a monopoly in any mark with a crocodile image (the High Court’s findings did not go that far) and that, in any event, CIL might well be able to
distinguish its clothing from Lacoste (eg by specifically stating “we are not
35 Lacoste says its argument in respect of use is that use is not restricted to the precise mark. It uses the distinctive features of the mark and that is sufficient.
Lacoste”). It says it is wrong to import into the “aggrieved person” test the considerations that will arise on an application by CIL to register the mark, for example. I agree.
[34] In discussing what is meant by “aggrieved person” the earlier United Kingdom authorities were focussed on the circumstances that were before them. As Health World makes clear, whether an applicant is an “aggrieved person” will depend on the particular circumstances, in light of the purpose of the requirement and the public interest in the integrity of the register. If CIL is correct that there are grounds for removing Lacoste’s registration of the mark, it is in the public interest that those grounds are considered on their merits. This is consistent with the wide interpretation that the authorities support.
[35] CIL is not a busybody or someone who has only an intellectual or sentimental interest in the register. In circumstances where CIL has a long historical association with the trade mark, has registrations for that mark in other countries, has used that mark off-shore, has at least some products with that mark that end up in New Zealand (eg through New Zealanders travelling to Asia) and are trade rivals in the clothing market in many countries, CIL has a legitimate interest in whether Lacoste’s registration should be removed on the grounds that it is not used by Lacoste.
[36] The registration is one factor that prevents CIL from selling products in New Zealand with that mark. While there may be other factors that will prevent CIL from doing so, those are matters that are properly determined if and when they arise, rather than on the threshold issue of standing to bring the application for revocation in respect of this particular mark. The “aggrieved person” test should not be construed in a way that prevents the party most likely to be interested in whether Lacoste has used the mark from having those grounds considered.
Result
[37] The appeal is allowed. CIL is an “aggrieved person” for the purpose of its application to revoke Lacoste’s trade mark (application no 70068). The application for revocation is referred back to the Assistant Commissioner for determination of whether Lacoste’s registration of trade mark no 70068 should be revoked on the
grounds of non-use (which was argued but not dealt with). Costs should follow the event. If there is any issue as to their calculations the parties may submit brief memoranda (no more than three pages) on the matters in dispute within six weeks of the date of this judgment.
Mallon J
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