Lacoste v Crocodile International Pte Ltd - [2024] NZHC 1333

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] NZHC 1333
Decision Date: 24 May 2024

CaseChat Overview and Summary

In Lacoste v Crocodile International Pte Ltd, Lacoste appeals against the decision of the Assistant Commissioner of Trade Marks (AC) that there was no defect in Crocodile's pleadings and that Lacoste was not granted leave to file further evidence. Crocodile has applied to strike out Lacoste's appeal. The court found that the AC's determination was a decision for the purposes of appeal under s 170 of the Trade Marks Act 2002 (the Act), rather than a mere procedural direction. The court declined Crocodile's application to strike out Lacoste's appeal. The court found that Crocodile's pleadings were sufficient to encompass both use of and use as a trade mark, and that the pleadings put Lacoste on notice that it had the burden of proving both. The court declined Lacoste's appeal and its application to file further evidence. The court directed the parties to endeavour to agree costs, otherwise, to file short memoranda on the issue of costs.

Orders