Lacoste

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

CIV-2015-485-563 [2017] NZHC 2216

UNDER

the Trade Marks Act 2002

IN THE MATTER OF

An appeal from the decision of the Assistant Commissioner of Trade Marks dated 25 June 2015

AND

IN THE MATTER OF

New Zealand Trade Mark Application No.

998331 in the name of Lacoste of 23-25 rue de Provence 75009, Paris, France Appellant

AND

IN THE MATTER OF

A notice of intention to reject trade mark Application No. 998331 under section 43 of the Trade Marks Act

Hearing:	3 February 2016 (further submissions received 3 March 2017)
Counsel:	R M Wallis and T A Huthwaite for Appellant
Judgment:	13 September 2017

JUDGMENT OF CLARK J

Introduction

[1]      This appeal concerns an application by Lacoste to register a composite trade mark depicting an image of a crocodile with the word CROCODILE above the mark.

Re Lacoste [2017] NZHC 2216 [13 September 2017]

[2]      Lacoste owns the registrations for the component parts of the composite mark.  That is, it owns the registrations for the word CROCODILE (the word mark) and for the image of the crocodile (the device mark).

[3]      The Intellectual Property Office of New Zealand (IPONZ) issued a notice of intention to reject Lacoste’s application.  IPONZ cited as a ground for its rejection a prior application by Crocodile International Pte Ltd (CIL) to register the following mark (the cited mark).

[4]      The  details  of  CIL’s  and  Lacoste’s  respective  applications  are  tabulated

below:

Application No.	Trade Mark	Date Filed	Class Description
Crocodile International application: No. 988410	“Cited mark”	22 November 2013	Class 25: Clothing, footwear, headgear
Lacoste application: No. 998331	“Composite mark”	22 May 2014	Class 25: Clothing, footwear, headgear

[5]      CIL’s application was in abeyance pending the outcome of its three active proceedings in respect of marks owned by Lacoste.1   Each of these three proceedings

had at issue the same mark as the cited mark which, until its recent revocation by the

1      Namely, CIL’s revocation proceeding against Lacoste’s mark No. 70068 (see below n 3); CIL’s opposition to Lacoste’s application to register No. 837027; and CIL’s application to invalidate Lacoste’s mark No. 978868.

Supreme Court,2  was registered and owned by Lacoste.3    I refer to the cited mark when it was owned by Lacoste as 70068.

[6]      The  Assistant  Commissioner  considered  it  would  be  inappropriate  to determine Lacoste’s application while the status of the cited mark was unknown. The Assistant Commissioner wished to avoid the risk of reaching a decision based on a comparison of the cited mark and the composite mark when her decision might transpire to be inconsistent with ongoing proceedings in other courts, principally the revocation proceedings brought by CIL alleging Lacoste’s non-use of 70068.  The Assistant Commissioner therefore halted progress on Lacoste’s application pending the determination of the litigation.

[7]      Lacoste appeals on two grounds:

(a)      The Assistant Commissioner erred by not determining Lacoste’s application and in refusing to register Lacoste’s trade mark in accordance with s 26(b) of the Trade Marks Act 2002…