Fashion house Lacoste has lost a trade mark fight in the Supreme Court of New Zealand to Crocodile International, a Singapore based fashion label.
This is not the first time that the companies, who both use a logo with a picture of a crocodile, have clashed. In 2004 Lacoste lost to Crocodile in another trade mark fight regarding a left facing crocodile logo that Lacoste had registered in China. Lacoste made clear that this earlier decision did not impinge upon their operations in the country given their use a right facing crocodile as their main logo.
The case in New Zealand concerned a trade mark that Lacoste had registered in the country but did not use. The disputed trade mark featured a left facing crocodile with the word 'Crocodile' in stylised writing above it. Lacoste had acquired the disputed trade mark from Crocodile Garments Ltd, based in Hong Kong, in 2004 in order to prevent the use of the trade mark in the New Zealand market.
In 2008 Crocodile were initially successful in arguing that Lacoste had not used the mark and therefore sought its removal and revocation from the register. The dispute then passed on appeal to the High Court and Court of Appeal. Lacoste sought to argue that their use of their more well-known right facing logo in New Zealand could by extension constitute use of the disputed mark given that both shared a distinctive character.
However, the Supreme Court found for Crocodile, choosing to revoke the registration of the disputed crocodile trade mark from December 1999. In its conclusion, the Court held that Lacoste's right facing crocodile and the disputed trade mark were distinct given the stylized writing and the difference in the way the crocodiles were facing. Thus the Court concluded that because of this distinction between the marks, Lacoste could not argue that it had used the disputed trade mark by extension of using its iconic right facing crocodile in the New Zealand market.
The Court also made clear that there was no residual discretion allowing a court to order a trade mark which had not been used to remain on the register in order to satisfy strong public interest. Lacoste were also ordered to pay the costs which had arisen in the dispute.
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