Application for summary judgment dismissed in CROCODILE Case

United Kingdom

In Crocodile International Private Ltd v La Chemise Lacoste ([2008] EWHC 2673 (Ch), October 8 2008), the chancellor of the High Court of England and Wales has rejected an application for summary judgment by Crocodile International Private Ltd in a case concerning the revocation of a trademark for lack of genuine use.

La Chemise Lacoste registered the word mark CROCODILE in the United Kingdom in relation to "shirts, not including sports shirts" in 1981.
Crocodile issued proceedings seeking the revocation of the CROCODILE mark for non-use pursuant to Section 46(1)(a) of the Trademarks Act 1994. Section 46(1)(a) provides for the revocation of a trademark where:
"within the period of five years following the date of completion of the revocation procedure, it has not been put to genuine use in the United Kingdom by the proprietor or with its consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use."
Lacoste relied on use of the mark in relation to a short-sleeved tennis shirt (or polo shirt) originally designed by Lacoste's founder, an international tennis player, for sportsmen. Lacoste provided evidence of use of the CROCODILE mark:
  • on a swing tag attached to the shirt;
  • on receipts provided to Lacoste's distributors to denote the shirt; and
  • in Lacoste's collection plans which were provided by the manufacturer of the shirt to licensees and distributors of Lacoste's products.
While Crocodile accepted that some use had been made of the mark, it claimed that this was not genuine use, relying on the decision of the European Court of Justice in Ansul BV v Ajax Brandbeveiliging BV (Case C-40/01). The chancellor summarized that, under Ansul, he had to:
  • identify use consistent with the essential function of a trademark (ie, as denoting the origin of the goods); and
  • in doing so, ignore use which was internal to Lacoste or token use only for the purpose of preserving rights in the trademark.
Although the chancellor did not reach a decision on this point, he expressed doubt that use of the CROCODILE mark on receipts and collection plans within Lacoste's distribution chain could be disregarded as internal use since the import of goods into the United Kingdom was evidence of an economic market for the goods (see the Court of Appeal's decision in La Mer Trademark ((2006) FSR 49)).
The chancellor found that Lacoste had a real prospect of succeeding at trial in establishing that use of the CROCODILE mark in small, but legible script on swing tags attached to the shirts was genuine use as a trademark. Although store staff were instructed to hide these tags from view when the products were displayed for sale, the chancellor noted that:
  • the tags were left on the shirts so that they could be seen by consumers;
  • price stickers were attached to the tags; and
  • customers regularly examine the tags to find out the price.
The chancellor also dismissed Crocodile's submissions that any use of the CROCODILE mark was not in relation to the goods for which the shirts had been registered on the grounds that the tennis shirt was a sports shirt. Lacoste had argued that the tennis shirt formed part of its casual wear collection. The chancellor considered this to be an issue of fact which should be determined at trial. He noted that sportswear had come to be commonly worn casually and that it would be necessary to ascertain how far that process had gone in the relevant five-year period for assessing non-use when considering the use made of the mark. However, the chancellor's view was that if a shirt was marketed in one shop as sportswear and in another as casual wear, its use for sport should not preclude consideration of use for other purposes.
These issues will receive further consideration at the full trial, which is due to commence today. The trial court will also consider Crocodile's claim for a declaration of invalidity on the grounds of bad faith in addition to the claim for revocation.
Jeremy Dickerson and Jennifer Prior, Burges Salmon LLP, Bristol

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