Lacoste v Crocodile International Pte Ltd
High Court of New Zealand, Wellington, 1 September 2014, 25 September 2014, Collins J
 NZHC 2349
Trade marks – appeal – revocation – non-use – Trade Marks Act 2002 – s 66(1)(a)
This appeal was part of a long running dispute between Lacoste and Crocodile International, competing garment traders.
Lacoste appealed a decision of an Assistant Commissioner of Trade Marks which revoked the following trade mark belonging to Crocodile International (and prior to that, to Crocodile Garments), registered in class 25 for articles of clothing (the “challenged mark”):
Various manifestations of crocodile device and word marks (which differ in various respects from the challenged mark) had been registered and used in New Zealand by Lacoste. Two such examples were the following (the “device and word mark” and “device mark” respectively):
Lacoste had also used CROCODILE as a word mark.
The Assistant Commissioner revoked the challenged mark under section 66(1)(a) of the Act on the basis that it had not been “put to genuine use in the course of trade in New Zealand on the relevant goods for three, three-year periods of non-use.
The Assistant Commissioner focused only on the device mark stating that if use of that mark did not constitute use of the challenged mark in terms of section 7(1)(a) of the Act (“use 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”), then it must follow that use of the word and device and word mark and the word mark would also not constitute use of the challenged trade mark.
The Assistant Commissioner held that the trade marks used by Lacoste in New Zealand during the relevant periods differed from the challenged mark and “altered its distinctive character”. She also suggested that Lacoste had to demonstrate use of the challenged trade marks during each of three non-use periods identified by Crocodile International, spanning 12 years.
There was strong evidence before the Assistant Commissioner of Lacoste’s use of the device and word mark and device mark in New Zealand from the early 1980s.
Held, allowing the appeal and setting aside the order revoking the trade mark:
(1) When section 66(1) and 7(1)(a) are considered together, it is apparent a trade mark may not be amenable to revocation on the grounds of non-use if in fact it has been used, albeit in a form which is not precisely as depicted in the challenged trade mark, provided the used trade mark does not alter the distinctive character of the challenged trade mark. The onus is on the registered owner to provide such proof use.  and 
Morny Limited’s Trade Mark (1951) 68 RPC 55 followed.
(2) The policy underpinning section 66(1) of the Act is that trade marks which are not used should not be permitted to clog up the Register of Trade Marks and stifle competition.
Laboratoire De La Mer Trade Marks  FSR 51, Friskies Ltd v Heinz-Wattie Ltd  2 NZLR 663 and Manhaas (2000) Ltd v Fresha Export Ltd (2012) 96 IPR 560 referred to.
Use of the challenged mark
(3) In addressing whether a trade mark has been “used” within the meaning of section 7(1)(a) of the Act, it is necessary to undertake a two-step analysis. The first step involves an assessment of the “points of difference between the mark as used and the mark as registered”. Once the differences have been identified, the second part of the enquiry is to ascertain if the differences “alter the distinctive character of the marks as registered”. 
Podnik v Anheuser-Busch Inc  RPC 25, 477 followed.
(4) The crucial issue is the likely impact of the mark in question on the average consumer. This analysis is undertaken by reference to the central message of the mark which can be deduced from the visual, oral and/or conceptual qualities of the mark. 
Podnik, supra followed.
(5) It was not correct to compare only the Lacoste device mark with the challenged trade mark. Even if the Assistant Commissioner had been right in her conclusions about the significance of the differences between the Lacoste device mark and the challenged mark, it did not follow that the other marks Lacoste had been using were not relevant to the assessment. 
Points of difference
(6) The main point of visual difference was the opposing direction the crocodile devices faced. However that was not particularly relevant.  In each of the device marks the prominent feature was a crocodile depicted in a similar way, namely drawn side on with jaws open slightly. The tail of each crocodile curved back in a similar arch. The scales, eyes, claws and teeth details were visible on each crocodile. A key feature was the depiction of a crocodile with its mouth ajar and body arched as if ready to launch an attack. The addition of the stylised word CROCODILE in the challenged mark reinforced the central idea and message of the crocodile image. -
(7) The points of difference between the device mark and device and word mark when placed alongside the challenged trade mark were insignificant. The minor differences did not alter the distinctive character of the challenged mark which was dominated by the image of a crocodile very similar to the crocodile depicted in the marks used in fact by Lacoste.  The average consumer of products bearing any one of the three Lacoste marks would conclude that the visual and conceptual message associated with each of the marks was distinctively similar to that of the challenged mark. That message would lead an average consumer of the goods to the conclusion that the marks were associated with the same manufacturer. 
Duration of period of non-use
(8) It was not necessary for Lacoste to establish that, during each non-use period, the relevant mark was put to genuine use. All Lacoste needed to do was show genuine use of the challenged mark at any time between 24 May 2005 to 24 May 2008 (being the period 3 years and 1 month prior to the date of application by Crocodile International for revocation).