anouchka-istockphoto-com-lacoste-
21 February 2017Trademarks

Lacoste trademark revoked by New Zealand’s highest court

The Supreme Court of New Zealand today  revoked a trademark depicting a crocodile that is owned by fashion brand  Lacoste.

Crocodile International, another fashion company, applied to revoke Lacoste’s trademark (number 70068), which features an image of a crocodile and the word ‘crocodile’, in 2008.

Although Lacoste accepted that it had never used the trademark in the form registered, it argued that it had used trademarks that “differed in ways that did not alter the distinctive character of [the] trademark”.

New Zealand’s assistant commissioner of trademarks had agreed to revoke it, holding that Lacoste’s use of another trademark did not constitute use of the 70068 mark.

But that decision was overturned by New Zealand’s High Court, where Justice David Collins considered a Lacoste device mark and a device-and-word mark (which features an image of a crocodile and the word ‘Lacoste’).

He held that points of difference between the trademarks used by Lacoste and the 70068 mark were insignificant and didn’t alter the distinctive character of the 70068 mark.

Crocodile International appealed, but the High Court’s decision was upheld by the Court of Appeal in 2016.

The court held that “the crocodile is the central idea and message” of the trademark, not the word ‘crocodile’ or the combination of the word and image.

In July last year, Crocodile International was granted leave to appeal to the Supreme Court, asking the question: “Did the Court of Appeal err in upholding the High Court decision to set aside the order made by the assistant commissioner of trademarks revoking trademark 70068?”

The Supreme Court concluded that there were “significant visual differences” between the 70068 mark and the other Lacoste marks that altered the “distinctive character”of the mark.

“The court was bolstered in its conclusion by considering the survey evidence, policy considerations and the rest of the Trade Marks Act,” said a  press release.

Registration of the 70068 mark was revoked from December 12, 1999, given that there was no use in the three-year period ending on that date.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Trademarks
2 September 2019   A US-based children’s clothing company has asked a court to pass judgment that its products do not infringe Lacoste’s famous crocodile trademarks.
Trademarks
23 May 2023   Antipodean clash over honey’s trademark rights described as “a tussle of extraordinary proportions” | Feud between the two countries spans nearly a decade.