Lacoste v Crocodile International Pte Ltd - [2014] NZHC 2349

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

CIV-2014-485-003459 [2014] NZHC 2349

UNDER the Trade Marks Act 2002

IN THE MATTER OF

An appeal from the decision of the Assistant Commissioner of Trade Marks dated 19 February 2014

AND

NEW ZEALAND TRADE MARK NO.
70068

BETWEEN

LACOSTE Appellant

AND

CROCODILE INTERNATIONAL PTE LIMITED

Respondent

Hearing: 1 September 2014

Counsel:

J G Miles QC and R M Wallis for Appellant
D A Laurenson QC for Respondent

Judgment:

25 September 2014

JUDGMENT OF COLLINS J

Introduction

[1] I am allowing Lacoste’s appeal from a decision of the Assistant Commissioner of Trade Marks (Assistant Commissioner) in which she revoked registration of Lacoste’s trade mark because she believed Lacoste had failed to
demonstrate genuine use of that trade mark during the relevant period.

LACOSTE v CROCODILE INTERNATIONAL PTE LIMITED [2014] NZHC 2349 [25 September 2014]

[2] In my assessment the Assistant Commissioner made two errors:

(1)She erred when she concluded the trade marks which Lacoste had used during the relevant periods altered the distinctive character of the challenged trade mark.

(2)She erred when she suggested that Lacoste had to demonstrate use of the challenged trade marks during all of the periods of alleged non- use.

Context

[3] Lacoste has appealed a decision of the Assistant Commissioner delivered on

19 February 2014 in which she revoked the following registered trade mark which had been assigned to Lacoste in 2004:

For ease of reference I shall refer to this trade mark as trade mark 70068.

[4] The trade mark had been registered under Class 25 of the Ninth Edition of the

Nice Classification1 in respect of “articles of clothing”.

[5] The Assistant Commissioner’s decision was made under s 66(1)(a) of the Trade Marks Act 2002 (the Act) the details of which I explain in paragraph [22]. Trade mark 70068 was removed by the Assistant Commissioner because she
concluded the trade mark had not been “put to genuine use in the course of trade in

1 The classification of goods and services for the registration of marks published under the auspices of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks adopted at Nice on 15 June 1957, as amended from time to time (see Trade Marks Act 2002, s 5).

New Zealand … in relation to the goods … in respect of which it [had] been

registered …” for three, three-year periods of non-use.2

Background

[6] Lacoste was founded by the French tennis star René “the Crocodile” Lacoste in 1927.3 In 1933 René Lacoste and André Gillier established La Chemise Lacoste to distribute polo shirts embroidered with a crocodile device. In the same year La Chemise Lacoste registered the crocodile device and the word “CROCODILE” as trade marks in France.

[7] La Chemise Lacoste expanded its business in France and abroad. It applied its crocodile device and word marks to a wide range of clothing, sporting and other goods. Currently, the Lacoste crocodile trade marks…

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: [2014] NZHC 2349
Decision Date: 25 September 2014

CaseChat Overview and Summary

Lacoste, a French clothing company, appealed a decision of the Assistant Commissioner of Trade Marks, who revoked Lacoste's registration of trade mark 70068 on the basis it had not been used in New Zealand for three three-year periods. Crocodile International, a Singaporean clothing company, had relied upon these periods of non-use to have the registration of trade mark 70068 revoked. The court was required to decide whether the Assistant Commissioner was correct to conclude that Lacoste had not established genuine use of trade mark 70068 during the period of 24 May 2005 to 24 May 2008, and whether Lacoste had to establish use of trade mark 70068 during each of the three non-use periods identified by Crocodile International. The court found that the Assistant Commissioner erred in two respects: she erred when she concluded the trade marks which Lacoste had used during the relevant periods altered the distinctive character of the challenged trade mark, and she erred when she suggested that Lacoste had to demonstrate use of the challenged trade marks during all of the periods of alleged non-use. The appeal was allowed and the order revoking trade mark 70068 was set aside. Lacoste is entitled to costs on a scale 2B basis.

Orders