Lacoste has successfully appealed against the refusal of its application to register the trademark ‘Crocodile’ in the High Court of New Zealand Wellington Registry. Lacoste and Crocodile International both sell apparel which is branded with reference to a crocodile, with the latest court decision stemming from a long running dispute between the two companies both in New Zealand and globally.
Lacoste first filed its New Zealand application in December 1999, attempting to register the mark across clothing, footwear and headgear. In aprevious court hearing, Crocodile International was successful in blocking the application, proving its reputation in New Zealand was significant enough to cause confusion between the two brands; and that Lacoste did not intend to use the ‘Crocodile’ mark at the time of its filing.
Freshly released documents from the appeal hearing revealed Crocodile International, which does not have a commercial presence in New Zealand, had established its reputation by referencing migration and visitor travel from Asia, where it enjoys a strong reputation and multimillion dollar sales. Justice Simon France conceded while other fashion brands had been successful in proving reputation based on spillover, this was not the case here.
“There are no features...that suggest it will have any sort of niche following in New Zealand. Its products have never been sold in New Zealand and it has not otherwised maintained any presence here. Undoubtedly some people familiar with the clothing market in Asia will be aware of it, but I cannot see that the evidence establishes awareness in anything like a substantial number of the relevant market [the clothes buying public of New Zealand].”
Justice France also dismissed a survey filed in the previous hearing, which asked New Zealand consumers what associations they had with the word crocodile, deeming the survey “not worthy of weight”. A previous reading of evidence put forward by a Lacoste witness was also clarified, with the original interpretation claiming visitors to a New Zealand Lacoste store had mistakenly thought it was selling Crocodile International.
“In short [the witness] meant the opposite, namely that the visitors wrongly thought their Crocodile International clothing was Lacoste,” Justice France said.
Lacoste was also successful in proving it intended to use the ‘Crocodile’ trademark at the time of filing its original application. The previous hearing found that its use of the word ‘Crocodile’ on swing tags for Lacoste’s L1212 white polo shirt, a long running fixture for the label, did not constitute trademark use and was “purely descriptive of the saurian device”.
“I am of the view that there was ample evidence to support Lacoste’s intention to use the trademark,” Justice France ruled. “It plainly intended to affix it to the swing tag. It used the word crocodile in many forms, and there was no reason to conclude it would not continue to do so.”
Justice France ruled costs in Lacoste’s favour and deemed an appeal by the brand should be allowed.
Assia Benmedjdoub