Facts:

This appeal was part of a long running dispute between Lacoste and Crocodile International, competing garment traders.

Various manifestations of crocodile device and word marks had been registered and used in New Zealand by Lacoste.  

Lacoste also owned trade mark no. 70068:

Trade mark no. 70068 was registered in New Zealand in 1961 by Crocodile Garments Ltd, a company related to Crocodile International Pte Ltd.  In 1999, Lacoste applied to have trade mark no. 70068 revoked for non-use.  Before that application was finalised, Lacoste and Crocodile Garments Ltd entered into a settlement agreement whereby Crocodile Garments agreed to assign trade mark no. 70068 to Lacoste.

In 2011, Lacoste applied to register trade mark no. 837027 (“the crocodile logo”), which was the same as trade mark no. 70068.  Crocodile International opposed the application on the grounds that an individual named Dr Tan owned copyright in the logo so that use of the logo by Lacoste would be unlawful copyright infringement; Lacoste’s application was in bad faith; Lacoste did not own the logo trade mark; and Lacoste did not intend to use the logo trade mark. 

The Assistant Commissioner found that no copyright subsisted in the logo; Lacoste’s application was not made in bad faith; it had not been established that Lacoste did not own the mark; and that Crocodile International had established that Lacoste did not intend to use the mark. 

Lacoste appealed on the ground that the Assistant Commissioner was wrong to conclude that it did not intend to use the mark.  Crocodile International cross-appealed inter alia on the ground that the Assistant Commissioner was wrong to conclude that copyright in the logo did not subsist in New Zealand.  This note only considers Crocodile International’s cross-appeal in relation to subsistence of copyright.

Held, allowing Lacoste’s appeal and dismissing Crocodile International’s cross-appeal:

Copyright in the logo

(1)   Crocodile International’s challenge to the Assistant Commissioner’s decision, based on what it called the “traditional hostility” of trade mark law to dual registration as both a trade mark and a design, was not successful.  The issue was not whether trade mark protection and copyright protection could co-exist, but the limited copyright provided to registrable designs, along with the exclusion of artistic copyright in designs capable of registration but not registered [83]. 

(2)   “Capable of registration” in cl 28(1)(b) of Sch 1 Copyright Act 1994 did not require that the design was actually capable of registration at the time it was made, rather, it had to have all the elements of a design and be capable, without significant alteration, to be registered as a design [91].  The test was therefore whether the work in the crocodile logo possessed the essential elements of a design as defined in the Patents Designs and Trade Marks Act 1922.

King Features Syndicate v O 7 M Kleemen Limited [1941] AC 417 and Interlego AG v Tyco International Inc [1989] AC 217 referred to

(3)   The concept of “eye appeal” did not require that the design be visible at all times.  It only needed to be visible at one point in time and have impacted on the purchaser’s decision to buy the goods [94].

Ferrero’s Design Application [1978] RPC 473, Sutton v Bay Masonry Ltd HC Tauranga CIV-2003-470-260, 28 May 2004 applied.

(4)   The crocodile logo had eye appeal and was a feature of ornament that was applied to an article.  The logo was first published in 1949 and was a design capable of registration under the Patents Trade Marks and Designs Act 1922, excluding it from copyright protection [95] – [99].

(5)   (Obiter) If however copyright could subsist in the logo, a sufficient degree of originality was shown in the crocodile logo to preclude an inference that the Lacoste logo had been copied to create it [110].  Even though other judges had found that the crocodile logo and Lacoste logos were deceptively similar, the concepts of originality in copyright law, and the concepts of deceptive similarity in trade mark law, were different [111].

(6)   (Obiter) If copyright did subsist in the logo, then use of the logo by Lacoste would not infringe that copyright.  That was because the purported owner of copyright, Dr Tan, could not argue that he had not agreed to Crocodile Garments’ registration of trade mark 70068 which was subsequently assigned to Lacoste.  Dr Tan was to be taken, by his agreement to registration, to have authorised Crocodile Garments, and any subsequent owner of the trade mark, to do the acts referred to in s 16 Copyright Act. The Judge noted that he was attracted to the proposition that the owner of copyright in a trade mark who agreed to another person registering that trade mark in a particular jurisdiction was to be taken to have given the necessary authorisation to the registrant of the mark to enable it to use the mark in that jurisdiction, unless there was a reservation to the contrary.  However, it was not necessary to go that far in the judgment given the facts [120].

Intention to use the trade mark

(7)   The Assistant Commissioner had held that while an application is prima facie evidence of intention to use, as Lacoste had pleaded that it had used the Crocodile logo because it had used its Lacoste logos, this rebutted the presumption.  This was an incorrect approach.  At the point of application it was appropriate to adopt a broad interpretation of intention to use.  The Assistant Commissioner’s decision had effectively created an onus on any applicant who pleaded intention to use to provide some evidence of this, which had been rejected in the case law.  Lacoste owned several crocodile device marks and word marks relating to crocodiles.  The evidence had been that it intended to develop different ways in which to use the crocodile device and word marks in the future.  To hold that Lacoste had no intention to use a trade mark made up of these two things would place an onus of proving intention that had been rejected [135], [137] – [138].

Effem Foods Ltd v Cadbury Ltd HC Wellington CIV-2005-485-1487, 21 March 2007 referred to.