Lacoste v Crocodile International Pte Limited HC Wellington CIV 2009-485-2536

[2011] NZHC 166

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

CIV 2009-485-2536

UNDER  The Trade Marks Act 1953

IN THE MATTER OF     Appeals from the decisions of the Assistant

Commissioner of Trade Marks dated 16
November 2009

AND IN THE MATTER OF New Zealand Trade Mark No 604957

BETWEEN  LACOSTE Appellant

ANDCROCODILE INTERNATIONAL PTE LIMITED

Respondent

Hearing:         24 November 2010

Counsel:         J Miles QC and K J Duckworth for Appellant

B Brown QC and D Laurenson for Respondent

Judgment:      1 March 2011

JUDGMENT OF SIMON FRANCE J

LACOSTE V CROCODILE INTERNATIONAL PTE LIMITED HC WN CIV 2009-485-2536 1 March 2011

Introduction

[1]      This is an appeal by Lacoste against the refusal of its application to register the trade mark, CROCODILE.

[2]      Lacoste and the opponent, Crocodile International, both sell clothing which is branded in some way by reference to a crocodile.  The branding may be done by use of the depiction of a crocodile, or by use of the word crocodile, or a combination of both.  This decision, and another being released contemporaneously, is the latest in a long running dispute between the companies.[1]    In some jurisdictions the companies have reached an accommodation; in most they have not.

[1] Crocodile International Pte Limited v Lacoste HC Wellington CIV 2009-485-2534, 1 March 2011.

[3]      Lacoste filed the present application in December 1999.   For many years prior to that, although probably not continuously, Lacoste products had been sold in New Zealand.  Conversely, Crocodile International products have never been sold in New Zealand.  Rather Crocodile International relies on its reputation in Asia, and a spillover effect of that reputation to New Zealand as a result of migration and visitor travel.

[4]      The application is for registration of the trade mark in Class 25 goods, being clothing, footwear and headgear.  The goods covered by Class 25 are central to the activities of both companies.

[5]      In order to succeed on its appeal, Lacoste must have this Court overturn two key findings of the Assistant Commissioner:

first,   that    Crocodile International    has    sufficient    reputation    in

New Zealand  in  its  marks  to  allow  it  to  object  to  the  Lacoste application; and

second, that at the time it applied, Lacoste did not have an intention to use the trade mark.

Issue one – does Crocodile International have sufficient reputation?

[6]      The applicable test was recently confirmed in NV Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated.[2]    An opponent must show awareness, cognisance or knowledge of its mark.   It is a relatively low threshold.  The awareness must reside in a substantial number of persons within the relevant market.

[2] NV Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated (2010) 86 IPR 205 (NZCA).

[7]      Here the Assistant Commissioner considered the relevant market to be the purchasing public generally.  This is because of the broad description of the goods covered by the category, and the wide range of goods the competing companies produce within that category. There was no challenge to this assessment.

[8]      Crocodile International based its claim to reputation on a two step process.  It first sought to establish it had a prominent reputation in Asia, and then to show that this  reputation  had  come  across  to  New Zealand.    The Assistant  Commissioner accepted there was a reputation in Asia, a conclusion which does not appear to be particularly challenged. Accordingly, I will only briefly touch on this component.

[9]      My assessment of the evidence is that the company’s main prominence is found in Singapore and Malaysia.  The company began in 1947 and in the 1950’s spread to Malaysia, Thailand, Indonesia and Japan.  Taiwan came in the 1980’s and South Korea in the mid 1990’s.

[10]     Crocodile  International  uses  a  range  of  marks  but  primarily  they  are variations of the word crocodile (in either block capitals, or ordinary font, or stylised writing) together with a crocodile image.  Most commonly Crocodile International’s marks seem to combine the word and the image, often with the word written with a swirly italics effect across the back of the crocodile.  Unlike Lacoste’s which faces

the other way, Crocodile International’s crocodile image faces left.  This difference aside, the two crocodile images seem to me to be visually very similar.

[11]     Crocodile International’s   primary   deponent,   its   administration   manager Mr Lim Keng-Boon, sets out the advertising undertaken by the company.  It appears extensive but I do not understand it to be suggested that the effect of this advertising goes beyond Asia, and I have not seen evidence to that effect.   The bulk of the advertising that is referred to appears to post-date the priority date, but I imagine similar advertising also occurred before December 1999.  In the years immediately preceding Lacoste’s applications, Crocodile International’s worldwide sales were in the hundreds of millions.  Its advertising spend was about six to eight percent of its sales.

[12]     These sorts of figures support the conclusion of the brand being well known in Asia.  The conclusion of a significant reputation in Asia is further reinforced by nine “lay” witnesses who have lived in Asia at various times and who provided evidence    of    their    knowledge    of    what    Crocodile International    calls    the “CROCODILE brand”.

[13]     Referring to the opponent’s evidence, Mr Miles QC criticised the constant lack of specificity in what was meant by this term the “CROCODILE brand”.  He submits it is unclear what marks are being referred to.  Mr Brown QC responds that the opponent’s reputation is in all the marks, characterised as they all are by a link to the crocodile.  He emphasised that the company’s name is also, of course, Crocodile. Whilst I see merit in Mr Miles point, nothing from my viewpoint turns on it.  There are other factors that are decisive.

[14]     As   noted,   there   were   nine   lay   witnesses   who   gave   evidence   for Crocodile International.  They were generally people who had lived in Asia and then migrated  to  New Zealand.    All  spoke  of  a  familiarity  whilst  in  Asia  with  the CROCODILE brand.   Some appended photos of items of Crocodile International apparel they own.  They explain that their familiarity with Crocodile International is reinforced by exposure to the brand whenever they make what seem to be reasonably frequent visits back to Asia.

[15]     A feature of this evidence is that a large percentage of the witnesses either lived in Singapore, or reference  their knowledge of Crocodile to  travel through Singapore.   Another feature of the evidence is that all had substantial periods of residence in Asia, and it is through living there that they acquired awareness of the brand.

[16]     The  purpose  of  this  evidence  is  to  support  Crocodile  International’s proposition that it can establish awareness of its brand in New Zealand by reliance on migration and visitor statistics.  The proposition is that the evidence shows that residence in Asia leads to awareness of the Crocodile brand, and that there is then sufficient  travel  from  Asia  to  New Zealand  to  mean  one  can  infer  sufficient awareness in New Zealand of Crocodile International from that travel.

[17]     Turning first  to  the  migration  on  which  Crocodile International  relies,    I consider there are difficulties in attaching weight to these figures.   First, I do not accept   that evidence from nine or ten people is enough to establish on a reliable basis that residence in Asia will lead to awareness of the Crocodile brand.

[18]     Second, the overall migration figure Crocodile International relies on is said to be the 80,000 people who migrated from Asia from 1984 to 1999.  However, the vast bulk of these migrants came from either India and China, yet the evidence from the lay witnesses is sourced primarily in Singapore and Malaysia.  By that I mean it was in these countries  where these witnesses learned  of Crocodile International. Further, of the 80,000, less than 2,000 migrants were from Singapore and only 7,500

from Malayisa.[3]     The 80,000 figure must therefore be treated with caution, and

overall I do not consider the specifics of the migration evidence particularly assist

the respondent’s case.

[3] I note also that the evidence of Mr Lim Keng-Boon annexed incidences of advertising throughout Asia. Solely on a numerical basis the most countries in which advertising occurred were likewise Singapore and Malaysia, with perhaps Taiwan to be added to these. My general impression from the evidence is that Singapore and Malaysia are the main markets, but I was not pointed to any breakdown of the countries encompassed by the term “Asia”.

[19]     Turning to  travel  statistics,  the evidence shows  that  in  the same 15 year period,  166,000  New Zealand  residents  left  New Zealand  describing  their  main destination as Singapore.  A further 118,000 did so describing their main destination as Malaysia.  To put these statistics in some comparative light, I note that in a recent decision of this Court the equivalent total of New Zealand residents leaving for Australia for just one year, 2002, was 600,000.  It was also recorded that in the same year the same number of Australian residents came to New Zealand having listed it

as their primary destination.[4]  The vast difference in scale is obvious.

[4] Valley Girl Co Ltd v Hanama Collection Pty Ltd (2005) 66 IPR 214 (HC) at [7].

[20]     More generally, there is very little one can do with bald visitor statistics.  It is not known what the purpose of the trips were, nor how likely it was that the visit would leave the visitor with a sufficient awareness of Crocodile International brands such that they would bring it back to New Zealand and associate a crocodile with the Asian brand.   There was evidence that Crocodile International advertised on the main travel map that visitors to Singapore are likely to have.   However, the advertisement consisted only of the word Crocodile without any reference to what it related to.

[21]     The difficulties with using visitor statistics to establish reputation have often been highlighted.   Observations by Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Limited retain their validity and general applicability.[5]    In that case the

topic was a burgeoning frozen foods market, and his Honour observed (at 347-348): [6]

Evidence of this kind has considerable difficulty, it seems to me, as proof of reputation.  It is not possible to assess how many travellers on short visits to the United States would have watched television either at all or at the times of the appellant’s advertising, or would have visited shops or supermarkets, whether in the frozen food section or elsewhere.  One does not know how many of the travellers would have been interested in the appellant’s product itself, especially seeing as it was not available in Australia ... the most that one could conclude from this evidence in my opinion would be that some of the persons departing Australia for the United States or departing the United States for Australia, whether for short term or long term visits, would be aware of the appellant’s frozen food products, but whether it would be a small or large number of the travellers is virtually impossible to assess.

[5] ConAgra Inc v McCain Foods (Aust) Pty Limited (1992) 32 FCR 302.

[6] Mr Miles rightly placed reliance on this extract. Other cases referred to include Deutsche Telekom AG v E! Entertainment Television [2006] ATMO 33; [2006] AIPC 92-204; Shoe Studio Group Ltd v Wittner’s Australia Pty Ltd (2007) IPR 578; Bickford’s Australia Pty Limited v Hansen Beverage Company [2008] NZIPOTM 22; Le Cordon Bleu BV v Cordon Bleu International Ltd (2000) 50 IPR 1; Tibotec Pharmaceuticals Limited v Siderca Sociedad Animona Industrial/Commercial [2009] NZIPOTM 1.

[22]     There are two recent New Zealand cases that have found a reputation based on spillover.  Before commenting on those it is also to be recalled that in the well known Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Limited the opponent was not  trading  in  New Zealand.[7]    There  was,  however,  in  that  case  evidence  of advertising in foreign magazines which had a circulation in New Zealand. The Court rejected the idea that actual use of the mark in New Zealand was necessary, noting

that reputation or awareness is a factual issue.  In Pioneer Hi-Bred there was also, as here, evidence from New Zealand residents involved in the relevant market that they were aware of the opponent’s brand.  However, the size and nature of the market in Pioneer Hi-Bred was sufficiently small as to make that sample a pertinent one.  The same cannot be said in the present case where there is a very broad market.

[7] Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Limited [1978] 2 NZLR 50; [1979] RPC 410 (CA).

[23]     Next, the Council of Ivy Group Presidents (t/a The Ivy League) v Pacific Dunlop (Asia) Limited involved an application to register the mark IVY LEAGUE in Class 25  (clothing,  footwear  and  head  gear).[8]      The  opponent  was  a  non-profit organisation which, for more than 50 years, had used and controlled the name the “Ivy League” as a reference to eight well known universities in north-eastern United

States.  Included amongst the eight are such prominent names as Yale and Harvard.

[8] Council of Ivy Group Presidents (t/a The Ivy League) v Pacific Dunlop (Asia) Limited (2000) 66

IPR 202 (HC).

[24]     John Hansen J accepted the proposition that it was not necessary to show the mark had been used in New Zealand and concluded that the evidence in that case established sufficient awareness in the New Zealand market.  What the evidence was is not traversed in detail in the decision, but in general it included the history of the use of the term the “Ivy League” as an umbrella label for the universities, dictionary definitions of the term which associated the label with the universities, and examples of the use of the term as a trade mark in other countries.  His Honour concluded that the well educated in New Zealand would be aware of the term “Ivy League” and that constituted a substantial number of persons.

[25]     In Valley Girl Co Ltd v Hanama Collection Pty Ltd, the opponent’s reputation in New Zealand was established on the basis of a spillover effect from its reputation in Australia.[9] Apart from some advertising in magazines distributed in New Zealand, and some small sales via the internet, the basis for New Zealand awareness was Australian reputation.

[9] Valley Girl Co Ltd v Hanama Collection Pty Ltd (2005) 66 IPR 214 (HC).

[26]     I  accept  Crocodile International’s  submission  that  these  cases  show  that spillover can found a sufficient awareness in a different market.  One can point to differences in those cases that place them, at least in my view, further along the spectrum than the present case but the concept of basing awareness largely or solely on spillover is the same.   Mr Miles described Valley Girl as the high water mark, although I would tend to see the Ivy League case as being at least on a par.  That label,  however,  does  not  overcome  the  plain  fact  that  the  cases  succeeded  on spillover reputation.

[27]     Factually  I  do  not  consider  the  present  case  crosses  the  relatively  low threshold referred to in NV Sumatra.   The relevant market in issue is the clothes buying public of New Zealand.  It is therefore large.  There are no features about the opponent that suggest it will have any sort of niche following in New Zealand.  Its products have never been sold in New Zealand and it has not otherwise maintained any presence here.  Undoubtedly some people familiar with the clothing markets in Asia will be aware of it, but I cannot see that the evidence establishes awareness in

anything like a substantial number of the relevant market.  The travel statistics are

unhelpful  in themselves  and  not  of such an  overwhelming size that  one would inevitably infer exposure and retention.  I have commented already on my concerns regarding the migration figures.

[28]     Before leaving this topic, it is appropriate to refer further to the ruling under appeal.   The primary difference between my judgment and that of the Assistant Commissioner is that I just assess the evidence less favourably to the opponent than she did.  I comment, however, on three aspects.

[29]     First, one of the matters on which the Assistant Commissioner relied was the evidence  of  a  Lacoste  witness,  Ms Mathieson.    That  witness  appeared  to  the Assistant Commissioner to be saying that when visitors came to her New Zealand Lacoste    store,    some    had    mistakenly    thought    what    she    was    selling Crocodile International  clothing.     Such  evidence  would  obviously  support  the Assistant Commissioner’s conclusion.  Needless to say given Ms Mathieson was one of their witnesses, this was a conclusion Lacoste were not happy with.  I allowed the witness  to  file a further brief clarifying her evidence.    In  short,  she  meant  the opposite,  namely  that  the  visitors  wrongly  thought  their  Crocodile International

clothing was Lacoste.  Mr Brown had understandably opposed the fresh evidence.[10]

Whilst the Assistant Commissioner’s reading of the original evidence was legitimate in that the evidence was poorly worded, the clarification removes one of the bases relied upon in her decision.

[10] The subject of a separate interlocutory ruling – Crocodile International Pte Limited v Lacoste

HC Wellington CIV 2009-485-2534, 12 August 2010.

[30]     A second basis relied on by the Assistant Commissioner was survey evidence filed by Lacoste which had as its focus what associations New Zealanders have with the word crocodile.   The Assistant Commissioner saw one of the answers as supporting awareness of the opponent’s brand but I agree with Lacoste it does not do so.   It is an unhelpful question that asked what brands people had heard of.   The people being questioned were prompted by a list of brands, two of which were “Lacoste” (56%) and “Crocodile” (10%).  There is no basis on which to know if the

10% who ticked Crocodile were referring to the Lacoste crocodile, the opponent’s

crocodile or anyone else’s.   In a different survey which asked a similar question,

68% said “Lacoste” and 17.9% said “Crocodile”.   For the same reason I do not consider it is worthy of weight.

[31]     Third, although it does not matter given my conclusions, I did not see the evidential base on which the Assistant Commissioner singled out two Crocodile International marks as being the ones in which it had a New Zealand reputation.  In particular, I do not see a basis on which to have held that there was a reputation in the mark CROCODILE, the very mark Lacoste was seeking to register.

[32]     Throughout  the  Crocodile International  evidence  there  was  this  continual reference to the “CROCODILE brand” but it was not a mark specific expression. Some   of   the   markets   in   which   the   mark   CROCODILE   is   registered   by Crocodile International, such as Brunei, Jordon, Uganda and the Maldives Island, do not figure elsewhere in the evidence as being prominent examples of the company’s brand awareness.   The mark is not registered by Crocodile International in larger markets such as China or India.   That the decision does single out CROCODILE highlights  the  danger  Mr Miles  referred  to  in  the  generic  term  “CROCODILE brand”.   In fairness, however, I observe Lacoste’s evidence tended to do likewise, only its generic label was “the crocodile mark”.

[33]     For the reasons identified I uphold the appeal on this point and find that Crocodile International 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.

Issue two – did Lacoste have an intention to use the mark?

[34]     A challenge to whether an applicant intends to use the mark they are seeking to register involves a challenge to what is known as proprietorship.   In order to respond, the trade mark applicant must show:

first, that the proposed  mark has not previously been used in the market         by              someone          else    and   that   no-one    else    is    asserting

proprietorship;

second,  that  the applicant  is  either already using the mark in  the

relevant market, or intends to;

third, that the application involves no fraud or breach of duty.

[35]     The first requirement was not in issue.   Crocodile International raised the third requirement but was unsuccessful before the Assistant Commissioner and has not cross-appealed that aspect.  That leaves the second requirement.  As regard this element of ownership, the case has been bedevilled by Lacoste ambivalence as to whether it was asserting existing use, or relying solely on intended use.

[36]     In order to understand what has become an unnecessarily complex dispute, it is convenient to return to some of the history of Lacoste.  The founder of Lacoste was a famous French tennis player, Rene Lacoste, who had been dubbed by the American press as “the Crocodile” or “the Alligator” depending on how one translated it.

[37]     When in the 1930’s Mr Lacoste ventured into clothing, his original offering was a white polo shirt.  It was regarded as revolutionary, particularly so for its daring decision to use short sleeves.   This white polo shirt, which has become known to Lacoste as the L1212, remains one of its iconic products.  It has the crocodile image on its left breast.

[38]     The L1212 is sold with a swing tag affixed.  That has been the case for a long time.  There is considerable sales information contained on the tag such as size and price.   There is also the word CROCODILE.   The use of that word in that block capital form is reserved for the white polo.  On coloured versions of this polo there will be a different word such as CAIMAN, which is a species of crocodile. Although the word “Crocodile” features predominantly in Lacoste advertising material, and is a term sometimes used generically to describe the Lacoste brand, it seems that the

block capital version of the word is primarily or exclusively reserved for this swing tag on the white polo.[11]

[11] This was at least so in 1999, the priority year. Latterly, at least in New Zealand, Lacoste has been affixing a second tag to the shirt. That tag is emblazoned with CROCODILE and nothing else.

[39]     With that background the debate about existing use and intended use can now be explained:

despite sales in New Zealand since 1982, Lacoste is unable to say whether  prior  to  1999  the  white  polo  shirt,  as  it  was  sold  in New Zealand, had this swing tag on it.  It may have done but because of where it was manufactured, and the paucity of the records, Lacoste

is not sure.  Hence the ambivalence over a claim of existing use;

Crocodile International  agrees  Lacoste  fails  factually  to  establish existing use, but claims anyway it would not matter because the use of the word on the swing tag does not amount to trade mark use, a claim

strongly disputed by Lacoste;

the debate about whether the swing tag was trade mark use should not really now matter since  Lacoste relies on future use.[12]     However, Crocodile International, and, as I read it the Assistant Commissioner, assume that the only future use will be the swing tag.  If that is so, and

if the swing tag is not trade mark use, then it is reasoned that there can have been no settled intention at the time of application to use the

trade mark being applied for.

[12] Prior to the appeal, Mr Miles who was not counsel at the original hearing, confirmed Lacoste relied solely on future use. This is how the matter proceeded, even though the appeal notice put in issue prior use.

[40]     On this debate the Assistant Commissioner sided with Crocodile International and held that, factually prior use had not been shown; conceptually the swing tag was not anyway trade mark use; and consequently, Lacoste also failed to establish

intended use.

[41]     There is, as I see it, one further complication.  The Assistant Commissioner based her conclusion that the swing tag was non-trade mark use on the view that:[13]

I consider that the reference to CROCODILE as the style of the polo shirt is purely descriptive of the saurian device that appears on the left breast of the polo shirt and would be taken as such by the relevant market.

[13] Lacoste v Crocodile International Pte Limited [2009] NZIPOTM 23 (16 November 2009) at [89]. 

[42]     This conclusion is incorrect.   I allowed further evidence to be filed on the point to refute this conclusion.  It is clear that whatever role it performs, the term is not a description for the crocodile that appears on the clothing.   That crocodile appears on most Lacoste clothing, unaccompanied except on the L1212 white polo by the label CROCODILE.

[43]     Notwithstanding this, Mr Brown maintains his submission it is not trade mark use because, as I understand the argument, it is either merely internal labelling or it is a label that simply describes one style of a product that has a number of styles.

[44]     My first response to this debate is that it is premature to raise it at the application stage.  I am concerned that too much is being loaded into the concept of intention to use.   I am not aware that an applicant must identify, or even have in mind, at the time of application all the ways in which it may use a mark.

[45]     What can be said in this case is that the idea of a crocodile is central to the Lacoste brand.  It is in that sense an application to register a trade mark intimately connected  to  a  long  established  international  brand.    The  fact  of  application  is usually seen as carrying a presumption of intended use.[14]  That must be even more so in this case given the evidence showing the centrality of the intended mark to the

applicant’s brand.

[14] Ashton v Harlee Manufacturing (1960) 103 CLR 319, 401; Effam Foods Limited v Cadbury Limited HC Wellington CIV 2005-485-1487, 21 March 2007.

[46]     By way of illustration of the proposition that the argument is premature, reference    can    be    made    to    Crocodile International    Private    Limited    v La Chemise Lacoste.[15]     At   the   time   of   this   decision,   Lacoste   held   in   the United Kingdom  a  registration  for  the  CROCODILE  mark  that  it  seeks  here. However, Crocodile International brought revocation proceedings on the basis that, in the preceding five years, Lacoste had not used the trade mark.  In other words they were    making    the    same    argument    Mr Brown    is    presently    advancing. Crocodile International  was seemingly confident enough  in its argument to seek

summary judgment.  Interestingly it did not pursue the full claim when its summary judgment bid was dismissed.

[15] Crocodile International Private Limited v La Chemise Lacoste [2008] EWHC 2673.

[47]     In defending the summary judgment proceedings, Lacoste relied mainly, but not exclusively, on the swing tag.   The Chancellor accepted there was “a real prospect” that Lacoste could establish the swing tag use met the requirements of genuine use.  It was not, therefore, necessary for him to consider the other uses on which Lacoste relied which included colloquial references to the white polo as “the crocodile shirt”, the use of the word in Lacoste’s bi-annual “collection plans” which are documents sent to associated companies, licensees and independent distributors, and thirdly the descriptions used in billing exchanges between the manufacturer and the company which held exclusive distribution rights in the United Kingdom.

[48]     The existence of these other uses of the word reinforces that the revocation process is the proper time at which to hold this sort of detailed inquiry.   It is otherwise an impossible burden for an applicant at the application time, and unfair because “who knows” what use will have occurred subsequent to the gaining of the registration.  Further, the context of any such use will be important, again an inquiry that must await actual use.

[49]     What can be said at the time of this application is that there was no bad faith in the application, the company had a history of using CROCODILE on the swing tag,  and  a  history  of  using  the  word  “crocodile”  in  various  forms  in  its

advertisements.   It plainly intended to use the word on the tag in New Zealand.

Crocodile is a concept that has long been associated with the applicant.  Given these factors, in my view no serious issue arose in relation to proprietorship.

[50]     I am content to decide this issue on that basis.  However, I record I tended to favour the view that the swing tag was not just internal use or descriptive of style but was a device that was intended to mark out the goods as the crocodile shirt.   The word in that form is generally reserved for that shirt.  The tag on which it appears is affixed to the shirt and the customer must go to the tag to find size and price.  Upon doing that they will encounter “CROCODILE” which cannot be seen as a token use of the word or some defensive use just to preserve rights in the mark.  It is how the shirt has long been described.  It seems to me that qualifies as using the trade mark.

[51]     Before concluding this topic, I refer to some disputed material that Lacoste had sought to have admitted in evidence.   In general terms the evidence was post priority date advertising which it was said could support the inference of intended use at the time of application.

[52]     There can be no general rules about inferring intent from subsequent actions because it depends on time, place and circumstances.  Reasonably contemporaneous actions might well assist.   Some of this material, however, fell well outside the bounds of usefulness or admissibility.  For example many years later, seemingly only in New Zealand, Lacoste started affixing a second swing tag which carried only the word CROCODILE.  No doubt useful for any renewed application, it could not be anything but self-serving if employed in relation to the 1999 application.

[53]     In conclusion I am of the view that there was ample evidence to support Lacoste’s intention to use the trade mark.  It plainly intended to affix it to the swing tag.  It used the word crocodile in many forms, and there was no reason to conclude it would not continue to do so.  Revocation proceedings would be a more appropriate time to assess some of the issues the respondent raises.

Conclusion

[54]   Lacoste’s appeal is allowed.   The two conclusions I have reached are determinative, in Lacoste’s favour, of all objections by Crocodile International to the registration of the mark CROCODILE, which should now be permitted.

[55]     Lacoste is entitled to costs.   Scale costs seem appropriate but memoranda may be filed if required.

Simon France J

Solicitors:

J Miles QC/K J Duckwork, Baldwins Law Limited, PO Box 852, Wellington,

email:  [email protected]

B Brown QC/B M Sullivan, Henry Hughes & Co, PO Box 356, Wellington, email:  [email protected]