The "Tail" of two crocodiles

Lacoste recently successfully defended its rights in the Court of Appeal (Crocodile International Pte Limited v Lacoste [2016] NZCA 111) to its trade mark which depicts both a crocodile and the word ‘crocodile’ (mark 70068) despite it never actually having used the mark.

Crocodile International Pte Limited had applied to have Lacoste’s mark revoked on the ground of non-use under 66(1)(a) of the Trade Marks Act 2002. Lacoste argued that its use of its other, more familiar mark, constituted use of mark 70068 under the Act’s extended definition of ‘use’ which includes ‘use in a form differing in elements that do not alter the distinctive character of the trademark in the form in which it was registered.’

In making its decision, the Court of Appeal agreed with the High Court that it should first assess the points of difference between Lacoste’s familiar mark that has been used and the mark as registered (70068). It must then ascertain if the differences alter the distinctive character of the mark as registered (70068).

The Court held that the differences between mark 70068 and its more familiar mark were insignificant and did not alter the distinctive character of mark 70068, which was dominated by the image of a crocodile. It held the use of the word ‘crocodile’ added nothing to the distinctiveness of the mark.

Despite the result of this case, it’s important to remember to ‘use’ your registered trade mark to prevent claims of this nature being brought by your competitors.

Image courtesy of Justin Taylor.

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