Lacoste v Crocodile International Pte Ltd
[2024] NZHC 1333
•24 May 2024
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE
CIV-2023-485-640
[2024] NZHC 1333
UNDER the Trade Marks Act 2002 IN THE MATTER OF
an appeal from the decision of the Assistant Commissioner of Trade Marks dated
21 September 2023
BETWEEN
LACOSTE
Appellant
AND
CROCODILE INTERNATIONAL PTE LTD
Respondent
Hearing: 6 March 2024 Appearances:
J Miles KC and T Huthwaite for Appellant G Arthur KC and D Moore for Respondent
Judgment:
24 May 2024
JUDGMENT OF GRAU J
A complaint about pleadings
[1] Lacoste and Crocodile International Pte Ltd (Crocodile) are engaged in proceedings in the Intellectual Property Office of New Zealand (IPONZ) that relate to Lacoste’s trade mark no 978868 in class 25 for “articles of clothing” (the Registered Mark), using what the parties call the “Crocodile Device”:
LACOSTE v CROCODILE INTERNATIONAL PTE LTD [2024] NZHC 1333 [24 May 2024]
[2] In 2018, Crocodile applied to revoke Lacoste’s Registered Mark on the basis that Lacoste had not put it to genuine use in the course of trade for three years.1 The substantive hearing of the dispute before the IPONZ is yet to take place. The hearing was originally scheduled on 8 November 2022, but was vacated after Lacoste had received Crocodile’s written submissions and raised issues about their consistency with Crocodile’s pleadings. Lacoste considered Crocodile was raising new matters in its submissions that had not been pleaded, effectively “ambushing” Lacoste, who had been denied the opportunity to respond with relevant evidence.
[3] The IPONZ declined Lacoste’s request that Crocodile should be directed to abandon what Lacoste said were un-pleaded grounds, or amend its pleadings, on the basis that pleadings and evidentiary issues should be raised at the substantive hearing. Lacoste requested an opportunity to be heard on the IPONZ’s decision to decline its request. The IPONZ declined. Lacoste then requested the pleadings issue be dealt with at a case management conference (CMC).
[4] A CMC was duly held. The Assistant Commissioner of Trade Marks (the AC) heard from the parties and concluded there was no defect in Crocodile’s pleadings and therefore no basis on which to prevent Crocodile proceeding with the arguments indicated in its written submissions. There was accordingly also no basis upon which to grant Lacoste leave to file further evidence of its use of the Registered Mark. The AC directed the application for revocation should proceed to a substantive hearing without further delay.
[5] Lacoste appeals the AC’s determination that there was no defect in Crocodile’s pleadings as well as the AC’s refusal to grant leave to Lacoste to file further evidence. Crocodile asks the Court to strike out the appeal on the basis that this Court has no jurisdiction to entertain an appeal against a direction of an AC made at a CMC.
Issues on appeal
[6] Lacoste argues that the AC made a substantive decision in respect of which it has a right of appeal. It says Crocodile’s focus on the difference between a “direction”
1 Under ss 65–68 of the Trade Marks Act 2002 (the TMA).
and a “decision” is an attempt to make a distinction without a difference when, in this case, the AC has made a final determination on a substantive issue in the proceedings. Striking out the appeal would result in an unfair trial and incomplete facts being put before the AC at the substantive revocation hearing.
[7]Lacoste says the AC erred by:
(a)misinterpreting the pleadings and failing to apply the relevant law on pleadings, as well as the fundamental requirements of natural justice protected by s 27 of the New Zealand Bill of Rights Act 1990;
(b)failing to consider the evidence; and
(c)denying Lacoste the opportunity to respond, contrary to its right to a fair trial, the interests of justice, and the public interest.
[8] Lacoste also seeks leave to adduce in this appeal the evidence that the AC declined to grant leave to file; namely the evidence Lacoste wanted to file to respond to Crocodile’s “un-pleaded and unexpected grounds” in its written submissions.
[9]Lacoste seeks the following relief:
(a)an order reversing the AC’s direction;
(b)an order that Crocodile has failed to plead, and is therefore not permitted to argue at the substantive hearing, the grounds of revocation based on use “as a trade mark” and “partial revocation”;
(c)in the alternative, an order that Lacoste is granted leave to file further evidence addressing use as a trade mark and partial revocation; and
(d)costs (including a reversal of the costs awarded by the AC).
[10] As above, Crocodile has applied to strike out Lacoste’s appeal. Crocodile argues that the only right of appeal under s 170 of the Trade Marks Act 2002 (the
TMA) is in relation to a “decision” of the Commissioner of Trade Marks (the Commissioner) or an AC. In contrast, there is no ability to appeal a “direction” of an AC made after a CMC.
[11] In the alternative Crocodile argues that, even if this Court finds it does have jurisdiction to hear the appeal, in this case the AC made no error because Crocodile’s pleading was clear and sufficient as the AC found, and this Court should hesitate to overrule the AC, given the AC’s particular expertise about the usual procedure and requirements for pleadings. Crocodile describes Lacoste’s application for leave to file further evidence on appeal as an attempt to circumvent the high threshold and strict procedural requirements for filing evidence out of time before the IPONZ.
Legal landscape: use and revocation of trade marks
[12] Registration of a trade mark guarantees the owner a monopoly over the use of the mark in New Zealand. “Use” of a trade mark means the use of the mark as a badge of origin used to distinguish goods dealt with in the course of trade by one person from goods dealt with by someone else.2 The appropriate question is whether the relevant sign would appear to consumers and others engaged in the relevant trade as possessing the character of a brand.3
[13] Section 66(1)(a) of the TMA allows for revocation of a registered trade mark for non-use. A registered mark can be revoked where “… at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand …”.4 This is sometimes referred to as the “use it or lose it” provision.5 The onus is on the trade mark owner to show “use”.6
2 Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd [2015] NZCA 602, [2016] 3 NZLR 145 at [163]. See also TMA, s 7.
3 Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd, above n 2, at [163].
4 TMA, s 66(1)(a).
5 Crocodile International Pte Ltd v Lacoste [2017] NZSC 14, [2017] 1 NZLR 679 at [51].
6 TMA, s 67.
[14] A decision of the Court of Justice of the European Communities (CJEC), Ansul BV v Ajax Brandbeveiliging BV (Ansul),7 is a leading authority on the issue of “genuine use”. The “genuine use” principle is stated Ansul as follows:8
“Genuine use” should be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark. Such use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling [them], without any possibility of confusion, to distinguish the product or service from others which have another origin.
[15] The leading text on trade marks in New Zealand, describes Ansul as the key CJEC decision on genuine use and sets out a summary of the findings of it and other cases:9
(1)Genuine use means actual use of the mark by the proprietor or a third party with authority to use the mark: …
(2)The use must be more than merely “token”, which means in this context that it must not serve solely to preserve the rights conferred by the registration: …
(3)The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from other which have another origin: …
The impugned “direction” of the Assistant Commissioner
[16] Assistant Commissioner Aldred began by setting out the issues before her. The first question was whether Crocodile’s pleading that the trade mark had not been put to genuine use sufficiently put in issue whether there has been use of the Registered Mark as a trade mark. The second issue was whether Crocodile pleadings had made the argument raised in its written submissions for revocation of only part of the Mark’s specifications.10
7 Ansul BV v Ajax Brandbeveiliging BV [2003] RPC 40 [Ansul] at [36].
8 At [36].
9 Paul Sumpter Trade Marks in Practice (4th ed, Lexis Nexis, Wellington, 2018) at 151 (citations omitted); with reference to Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] ETMR 28; and Pasticceria é Confetteri Sant Ambroeus SRL v G & D Restaurant Associates Ltd [2010] RPC 28 at 775.
10 Lacoste v Crocodile International Pte Ltd, Direction of Assistant Commissioner Aldred, 21 September 2023 at [3].
[17]Crocodile’s application for revocation had pleaded:11
The Applicant alleges that for a continuous period of three years expiring one month before the date of this application, the mark the subject of Trade Mark No. 978868 was not put to genuine use in the course of trade by [Lacoste] in relation to “articles of clothing”.
[18] Lacoste’s argument was that application for revocation did not plead or even allude to whether Lacoste’s use of the Registered Mark amounts to use as a trade mark.12
[19] Relying on the case of Ansul in response, Crocodile argued its pleading that the Registered Mark “was not put to genuine use” is sufficient to support both the argument that the Mark’s use was not commercially exploited—that is, its use was no more than token—and that it was not used as a trade mark (a badge of origin for the goods in relation to which it was used).13
[20] Crocodile also pointed to Lacoste’s counterstatement in which it said Lactose had effectively acknowledged that it was required to establish use as a trade mark. The counterstatement had pleaded:14
Lacoste has made genuine use of the Crocodile Device in New Zealand in relation to the goods covered by the registration during the relevant time period, and/or made genuine use of the Crocodile Device in a form differing in elements that do not alter the distinctive character of the trade mark in the form in which it was registered. For example, Lacoste has used as a trade mark the Crocodile Device …
[21]The AC agreed with Crocodile. She said:
11. I have considered the parties’ submissions for this case management conference and I agree with [Crocodile] that the words of the application suffice to plead that there has not been genuine use of the subject trade mark “as a trade mark” and that a sensible practitioner would understand the pleading in this way. In my experience, it is common for pleadings simply to recite the words of s 66 of the [TMA], namely that “at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered”, and not to add the
11 At [4] (emphasis in bold added, italics in original).
12 At [5].
13 At [6].
14 At [8] (emphasis in original).
words “as a trade mark”. It is notable that in enacting s 66 itself, Parliament did not consider it necessary to use those additional words.
[22] In short, the AC’s view was that in pleading the absence of genuine use of the Registered Mark within the relevant period, Crocodile was clearly putting Lacoste to the proof of genuine use, as described in the Ansul case, and as required by s 66 of the TMA.15 As the AC put it, that encompassed:
12.1Use that was more than merely token (the quantitative aspect of genuine use); and
12.2Use as a trade mark, or “badge of origin” for the goods in relation to which use has been proved (the qualitative aspect of genuine use).
[23] Lacoste advanced a similar response to Crocodile’s alternative submission that, at best, Lacoste could only establish use in relation to t-shirts and so the current specification of goods (“articles of clothing”) should be narrowed. Lacoste argued that if Crocodile wished to seek partial revocation of the mark it should have pleaded “an alternative, partial revocation” (alongside its general order for revocation of the mark in its entirety).16 The AC again found for Crocodile stating:
20.In proceedings for revocation based on alleged non-use, it is common for the applicant to plead that the mark has not been used in relation to all of the goods of the specification, which then has the effect of putting the owner to the proof of use to justify the specification, whether narrow or broad. If the owner then adduces evidence of use that demonstrates genuine use of the mark during the relevant period only in respect of some of the goods or services of the specification, the parties in submissions must then address the issue of a fair specification.
[24] The AC therefore considered that none of the matters raised by Lacoste indicated any defect in Crocodile’s pleadings, and concluded: 17
There is accordingly no basis on which to prevent [Crocodile] from proceeding with the arguments indicated in its written (substantive submissions), and no basis upon which to grant [Lactose] leave to file further evidence of use of the trade mark in issue.
15 At [12].
16 At [15].
17 At [23].
The application to strike out Lacoste’s appeal
Strike out: legal principles
[25]The Court may strike out all or part of a pleading where it:18
(a)discloses no reasonably arguable cause of action, defence, or case appropriate to the nature of the pleading; or
(b)is likely to cause prejudice or delay; or
(c)is frivolous or vexatious; or
(d)is otherwise an abuse of the process of the court.
[26] The relevant guiding principles are well established. For the purposes of a strike out application, it is assumed that the pleaded facts are true, provided they are not purely speculative. The jurisdiction to strike out is exercised sparingly and only in clear cases, for example when the cause of action or defence is so clearly untenable it cannot possibly succeed. Nevertheless, an order for strike out will not be precluded by a requirement for the court to determine questions of law.19
Did the AC make a decision or a direction in this case?
[27] Section 170 of the TMA states that “A person who is aggrieved by a decision of the Commissioner under this Act may appeal to the court”. As noted above, Crocodile contends the AC made a “direction” at the CMC, not a “decision”. There is only a right of appeal against the latter. Consequently, Crocodile’s essential point is that the Court does not have jurisdiction to hear this appeal.
[28] There is no definition of “decision” in the TMA. Nor is there any definition of “direction”.
[29] However, as Mr Arthur KC has pointed out, the TMA and its associated regulations distinguish between a “direction” and a “decision”.20 He pointed to reg 26, which relates to case management, and enables the Commissioner to require the
18 High Court Rules 2016 (the HCR), r 15.1(1).
19 See Couch v Attorney-General [2008] NZSC 45, [2008] 3 NZLR 725 at [33]; and Attorney- General v Prince [1998] 1 NZLR 262 (CA) at 267.
20 Trade Mark Regulations 2003 (the Regulations); in particular, regs 26 and 27.
parties to attend to give “directions” at a CMC. Regulation 27 deals with non- compliance with directions and refers to a Commissioner making a “decision” as to whether there has been (persistent or repeated) non-compliance. Thus reg 26 is about “directions”, which concern the conduct of a proceeding, but, in contrast, reg 27 deals with a “decision”, which has more serious consequences for a party (including preventing a party from taking any further step in the proceeding). The terms are not used interchangeably; they are deliberately used differently and clearly distinguished. In this case the AC has directed that the proceeding will go ahead. That is a procedural direction. Nor is it by chance that the heading is “Direction of an Assistant Commissioner of Trade Marks”. That was the power the AC was exercising.
[30] I note here that other regs, for example, reg 11A (request to amend pleadings), reg 31 (Commissioner may require production of documents), and reg 35 (application to file evidence out of time) also refer to a “decision” by the Commissioner in similar terms.
[31] Mr Miles KC submits Crocodile’s argument is an exercise in semantics. It is the substance, not the title or the description of what the AC did here, that is determinative. It was clearly in the nature of a decision—which can be defined to include a direction.21
Analysis
[32] I agree with Mr Miles that what matters is the substance of the AC’s determination, rather than the label used. This was a determination about pleadings, which is not a matter of mere procedure (such as a timetabling direction would be).
[33] Although I take Mr Arthur’s point that there is some distinction drawn in the regulations between a direction and a decision, there is no definition of either, and s 170 is otherwise worded broadly. In addition, the definition of decision is capable of including a direction. As Brown J said in New Zealand Institute of Chartered Accountants v The Chartered Institute of Management Accountants “there is no definition of a “decision of the Commissioner” and the phrase can include both
21 See, for example, r 3 of Supreme Court Rules 2004.
decisions on substantive issues and mere procedural rulings”.22 Justice Brown held that the Commissioner’s power to permit cross-examination, although a procedural decision as to the form and conduct of a hearing, was one that could be subject to an appeal.23 Although, as Mr Arthur pointed out, no submission was made in that case that there was no right of appeal, it does, in my view, support Lacoste’s position that it is the substance of the decision that counts.
[34] I consider that an odd outcome would result where Lacoste would have had a right of appeal on this point if it was dealt with at the substantive hearing, or if IPONZ had granted Lacoste’s request to be heard and dealt with it then, but it does not have a right of appeal on the same point because IPONZ, despite refusing to hear the parties formally, nevertheless did hear the parties on the issue at a CMC and determined the issue.
[35] I observe too that amendment of pleadings is a matter specifically provided for in the Regulations, and a request to amend a pleading requires the Commissioner to make a “decision” on the request.24
[36] The short point is that, despite IPONZ declining Lacoste’s request for a hearing about the pleadings, it nevertheless conducted what was in essence a hearing about the pleadings issue at the CMC. This resulted in a decision that the pleadings were sufficient, Crocodile could advance its submissions, and there was therefore no basis to grant Lacoste leave to file further evidence. The AC directed the application for revocation should proceed to a hearing, but that direction followed a decision on the issue of the pleadings.
[37] On that basis I decline Crocodile’s application to strike out the appeal. I find that Lacoste has a right of appeal to this Court pursuant to s 170 of the TMA in the particular circumstances of this case and this Court has jurisdiction to hear the appeal.
22 New Zealand Institute of Chartered Accountants v The Chartered Institute of Management Accountants [2015] NZHC 818, [2015] 3 NZLR 692 at [37].
23 At [37].
24 The Regulations, reg 11A.
[38] In the alternative, Crocodile seeks that the Court strikes out Lacoste’s plea to admit further evidence. For the reasons that follow in relation to the substantive appeal, I consider that the issue of filing further evidence falls away. Accordingly, I also decline to strike out that aspect of Lacoste’s appeal.
Approach on appeal
[39] General appeals from IPONZ decisions proceed by way of rehearing.25 This Court is required to come to its own view on the merits of a case, and the weight it gives to the decision of the IPONZ is a matter for its own judgement. The appellant bears the onus of satisfying this Court that its decision should differ from the decision under appeal. If the Court comes to a different conclusion, it is entitled to take its own view, but it is only if the Court considers the appealed decision is incorrect that it is justified in interfering with it.26
[40] I also observe that the Court affords some deference to the AC on appeals from their decisions, given their particular expertise and experience in this area.27
Were Crocodile’s pleadings sufficient?
[41] The purpose of pleadings—here, the application for revocation and the counterstatement—is to allow for a “fair contest”.28 As explained by the Court of Appeal in Yan v Mainzeal Property and Construction (in liq):29
The pleading rules are not arid technicalities. They give effect to fundamental requirements of natural justice protected by s 27 of the New Zealand Bill of Rights Act 1990. The courts rightly emphasise substance over form. But ensuring that a plaintiff has a proper opportunity to present their claim, and have their day in court, cannot take precedence over a defendant’s entitlement to procedural fairness including fair notice of the material elements of the claim they are required to meet. The High Court Rules 2016 in relation to pleadings are designed to strike that balance, and are flexible enough to do so in the wide range of circumstances that arise in civil trials.
25 High Court Rules 2016 (HCR), r 20.18.
26 See the discussion in Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [4]–[5].
27 Austin Nichols & Co Inc v Stichting Lodestar, above n 26, at [5]; VB Distributors Ltd v Matsushita Electric Industrial Co Ltd (1999) 9 TCLR 349, (1999) 53 IPR 466 (HC) at [32].
28 Jessica Gorman and others McGechan on Procedure (online ed, Thomson Reuters) at [HR5.26.03].
29 Yan v Mainzeal Property and Construction Ltd (in liq) [2021] NZCA 99, [2021] 3 NZLR 598 at [494].
[42]Further guidance can be found in Price Waterhouse v Fortex Group Ltd:30
Pleadings which are properly drawn and particularised are, in a case of any complexity, if not in all cases, an essential road map for the Court and the parties. They are the documents against which the briefs of evidence are or should be prepared. They are the documents which establish parameters of the case, not the briefs of evidence.
We are not casting aspersions on the pleadings in this case which, leaving aside issues about necessary particularity, are well drawn on each side. Nor are we advocating a pedantic approach to the topic. Pleadings should be read as conveying what they would reasonably convey, in the context of the case, to a sensible legal mind. Even less are we advocating prolixity of pleadings, or the raising of every conceivable cause of action irrespective of its potential for success; … What we are saying is that both the Court and opposite parties are entitled to be advised of the essential basis of a claim or defence, and all necessary ingredients of it, so that subsequent processes and the trial itself can be conducted against recognisable boundaries. Neither the Court nor opposite parties should be placed in the position of having to deal with a proposition of whose substance adequate notice has not been given in the pleadings.
Positions of the parties
[43] Lacoste takes issue with Crocodile’s pleadings because Lacoste considers Crocodile does not plead “or even allude to” the substantive arguments it seeks to advance at the revocation hearing; namely, whether Lacoste’s use of the Registered Mark amounts to use as a trade mark, or whether the registration may be partially revoked and its specification rewritten.
[44] Lacoste says that it was reasonable for it to rely on Crocodile’s pleadings and evidence to conclude that the sole issue was whether there had been genuine use (in the sense of there being more than mere “token” use) of the mark. In particular:
(a)Crocodile’s pleadings constantly refer to “the mark” or “the trade mark” which indicates a presumption that Lacoste’s use of the Registered Mark was accepted as being use as a trade mark. Use of the words “sign”, “device”, or “image” could have been used if Crocodile was intending to imply otherwise.
30 Price Waterhouse v Fortex Group Ltd CA179/98, 30 November 1998 at 17–19 (emphasis added).
(b)It would be fair to expect one of Crocodile’s key arguments to have been specifically identified in its pleadings.
(c)Crocodile’s reliance on Ansul is misguided when Ansul itself was not a case that was concerned with the issue of use as a trade mark.
(d)The evidence required to respond to whether there has been use as a trade mark is different to the evidence that would be required to show genuine use.
(e)Partial revocation is different in nature to full revocation, such that a specific pleading was required:
(i)Partial revocation would need to consider the re-writing of the specification used for the Registered Mark to what a consumer or relevant person would consider a “fair” description of the goods. Lacoste was not put on notice that it should provide evidence on whether, or what, alternative specification should be used.
(ii)Because the scope of Lacoste’s specification was not put at issue, the parties and the AC are now without evidence of how consumers or the trade are likely to describe Lacoste’s use of the Registered Mark.
(iii)The relief sought in the application for revocation does not identify partial revocation, narrowing, or re-writing of the specification.
(f)The evidence the parties filed indicates what the parties understood the grounds of revocation to be. The evidence related to the use of the Crocodile Device in New Zealand during the relevant period of 9 March 2015 to 9 March 2018, and its intention to continue to do so. If Lacoste had understood an intention to challenge use as a trade mark,
it would have filed evidence about how the mark is portrayed and understood by customers.
[45] Lacoste argues that allowing Crocodile to pursue unpleaded grounds in the substantive revocation hearing would be contrary to principles of natural justice by allowing Crocodile to take advantage of ambiguities in its own pleadings. It is also submitted that there is a public interest in having all relevant evidence placed before the Commissioner in a revocation hearing.
[46] Mr Miles also submitted that the third unpleaded ground of issue estoppel— which was subsequently abandoned by Crocodile—suggests that the other two unpleaded grounds were also in the same category; they were grounds that could not reasonably be discerned from the pleadings but had been included for good measure because the primary ground for seeking revocation appeared shaky.
[47] Mr Miles pointed to Lacoste’s counterstatement as being a pleading consistent with the pleadings Lacoste was responding to; it is nothing more than an assertion Lacoste was using the Registered Mark, but without any hint that use as a trade mark was at issue.
[48] For Crocodile, Mr Arthur submits that Lacoste had itself acknowledged in its counterstatement that an allegation of no genuine use required it to plead and respond to an argument that it had used the Crocodile Device as a trade mark.
[49] Mr Arthur also says the AC did not err by relying solely on the decision in Ansul, because Ansul is the leading authority on non-use. He argues that the test set out in Ansul as to non-use makes it clear that there is a requirement for a mark to “guarantee the identity of the origin of goods or services to the consumer”, in other words, that there is a requirement for use of a mark as a trade mark.31 Mr Arthur argues it is wrong to read Ansul as only being relevant to the issue of token use. Against this background, any sensible legal mind would have interpreted the pleading that there was no genuine use as also raising the issue of whether there was use as a trade mark.
31 Ansul, above n 7, at [36].
[50] In response to Lacoste’s argument that Crocodile was required to plead refined alternative orders for Lacoste’s specification in the event of partial revocation, Mr Arthur says that this cannot be expected. Crocodile cannot plead use in relation to particular subsets of goods where it does not know what the owner will endeavour to prove it has used. By stating that the revocation application was made in relation to all goods, Crocodile has put in issue and requires proof of the use on all goods. Similarly, Mr Arthur observes that s 68 of the TMA allows for partial revocation of a mark, even where it has not been pleaded, and that broadly worded specifications are commonly later narrowed when challenged.
[51] Further, Mr Arthur says it is a misguided approach by Lacoste to rely on the evidence as showing the parameters of the substantive claim, given the owner of a mark is the first party to file evidence in revocation proceedings.32 Lacoste’s choice to file evidence only on token use cannot be visited on Crocodile, when Crocodile did not have to file evidence if it chose not to, given the owner of a trade mark has the onus of proving use.
Discussion
[52] I do not find any error in the decision of the AC. In particular, given the leading authority on genuine use, Ansul—which clearly sets out the principle that use of a trade mark includes both “genuine use” and use “as a trade mark”—I agree that Crocodile’s general pleading of non-use was sufficient to put Lacoste on notice. In other words, I agree a “sensible legal mind” would understand the pleading to encompass both genuine use of a trade mark and use as a trade mark.
[53] I observe here the AC’s comment that, in her experience, it was common for pleadings simply to recite the words of s 66 of the TMA. So too, the AC considered it commonplace for an applicant for revocation based on alleged non-use to plead the mark has not been used in relation to all of the goods in the specification. That has the effect of putting the owner to the proof of use to justify the specification, whether narrow or broad. I note the AC’s experience and expertise in this area. I consider this Court should afford some deference to that experience and expertise.
32 The Regulations, reg 96.
[54] In light of the power to revoke registration of a mark in its entirety or in relation to “only some of the goods or services” under s 68(1)(b), it would be a strange outcome if a revocation order could only be made to the extent that it is particularised in an application for revocation. For example, in a case where an applicant sought and argued for full revocation of a trade mark in regard to an entire class of goods, and the court or the Commissioner was satisfied there was evidence of use in particular sub- categories within that class of goods, Lacoste’s position would lead to an outcome whereby the Commissioner or the court would not be able to revoke the registration to the extent required on its own assessment of the evidence because of the general nature of the applicant’s pleadings.
[55] Finally, I note that I am unable to accept that the evidence filed for the revocation hearing determines the ambit of the pleadings, particularly given the onus is on the owner to prove use and they file first. It is trite law that the pleadings define the evidence, not the other way around. I accept Crocodile’s submission that pleadings do not become inadequate simply because the other party has not filed evidence that might be relevant.
[56] Accordingly, I am unable to accept that Lacoste was not adequately put on notice by Crocodile’s pleadings, both as to genuine use, which necessarily encompassed both use of and use as a trade mark, and as to the possibility that non- use might only be proved in relation to a sub-category of goods in a specification so that the AC would be required to partially revoke the trade mark.
The new evidence
[57] My view is that the issue of admission of evidence on this appeal (and so at the forthcoming substantive revocation hearing) falls away given my conclusion that the pleadings were sufficient. On appeal, the evidence Lacoste sought to adduce, while relevant and cogent, is certainly not fresh in the sense that it could not have been filed earlier. It could have been filed earlier but Lacoste appears to have incorrectly assessed the ambit of Crocodile’s pleading of non-use. Crocodile’s pleading, as I have found, encompassed both use of and use as a trade mark, therefore Lacoste was put on notice that it had the burden of proving both.
[58] In relation to the proceeding in the IPONZ, the time for filing has long passed. And there cannot be an exceptional reason for allowing late filing, given the finding of both the AC and this Court that Crocodile’s pleadings were not inadequate.
[59]On that basis, the application to admit evidence on appeal is declined.
Result
[60]Crocodile’s application to strike out Lacoste’s appeal is declined.
[61] Lacoste’s appeal and application to file further evidence are also declined, for the reasons given above.
[62] Lacoste has been successful on Crocodile’s strike out application. Crocodile has been successful on the substantive appeal. Parties should endeavour to agree costs, otherwise, short memoranda of no more than five pages should be filed within 10 working days with the issue to be determined by me on the papers.
Grau J
Solicitors:
AJ Park, Wellington for Appellant
Henry Hughes Law, Wellington for Respondent
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