A tale of two crocodiles

Last week was an exciting week in the trade mark world, as the Supreme Court released its latest decision in a long standing dispute between Crocodile International and Lacoste. Supreme Court decisions on trade mark law are very rare, and this decision was especially welcomed as a clarification on the law on non-use of trade marks in New Zealand.

Crocodile trade mark

The case related to the question of whether Lacoste had used its trade mark registration (the crocodile mark). Lacoste owned this mark as a result of an assignment to it from a Crocodile company many years ago. Lacoste had never used the trade mark in this form, and had never used any trade mark including the word crocodile.

Lacoste trade mark

In both the High Court and the Court of Appeal it had been held that because of Lacoste’s use of its alligator mark, it had used the crocodile mark on the basis that the dominant element of the mark was the crocodile, and the word (which hadn’t been used in any form) merely reinforced that dominant image. These decisions came as a surprise to a number of trade mark practitioners in New Zealand, as previously the law had been quite settled that significant variations in use from the mark that as registered would result in the registration being revoked for non-use.

The Supreme Court clarified this law and largely reset the position to that which trade mark practitioners had previously understood it to be. This clarified again that, in New Zealand, if the mark as used has a visual, oral or conceptual quality that is different to the mark that was registered, it is likely that the registration will be revoked.

More surprising was the Supreme Court’s finding on whether the Commissioner has a discretion to not revoke a mark even if it has not been used. The previous position under New Zealand law was established by the High Court in the Cure Kids case in 2014. In that case, the High Court held that even if a mark had not been used the Commissioner had a discretion to retain the mark on the register in certain circumstances. The Supreme Court has overturned that position and has held that there is no residual discretion for the Commissioner to retain the mark on the register even if it has not been used.

Accordingly, this Supreme Court decision makes clear that if the mark has not been used in predominantly the same form as registered, then barring other exceptions specified in the Act, the mark will be removed from the register.