Lacoste victorious in battle of the crocodiles

Lacoste owns several Australian registered trademarks containing or consisting of a crocodile device in Classes 18 and 25 of the Nice Classification. The crocodile device mark has been extensively used by Lacoste in respect of a broad range of goods and services, both worldwide and in Australia.

 

Crocodile International is a Singaporean-based company which sells clothing, apparel and leather goods. Crocodile International dates back to the late 1940s, when its founder, Tan Hian Tsin, moved from Vietnam to Singapore and created Crocodile International. Interestingly, evidence accepted by the Trademark Office showed that Lacoste had a reputation in Vietnam (a former French colony) from as early as the 1940s. Since the late 1940s, Crocodile International’s business expanded from Singapore into most other Asian countries, including Malaysia, Indonesia, Japan and Thailand.

 

Conflict between the two companies occurred as each company expanded its trading presence around the world in respect of similar goods, with each company using trademarks that contained a depiction of a crocodile.

 

In 2006 Crocodile International applied to register the following trademarks in Australia:

Both trademark applications were filed for a wide range of goods, including clothing, footwear, headgear and leather goods in Classes 18 and 25. Neither trademark had been used by Crocodile International in Australia.

 

Lacoste opposed the applications on a number of grounds, the primary ground of opposition being Section 44(1) of the Trademarks Act 1995 (Cth) - namely, that the CARTELO and CROCODILE device marks were deceptively similar to Lacoste’s registered trademarks.

 

In respect of the CARTELO mark, Crocodile International argued that the word 'cartelo' was an “essential feature” of the mark and thus significant in determining whether the mark was deceptively similar to Lacoste's mark.

 

Crocodile International also relied on the existence of a coexistence agreement dating from 1983 in order to show that Lacoste's mark and the CARTELO and CROCODILE marks had coexisted in some Asian jurisdictions. In addition, Crocodile International argued that the absence of any evidence of consumer confusion where the marks have been in concurrent use was of considerable importance. It stated that, as a result, Section 44(1) could not be satisfied, as the CARTELO and CROCODILE marks were not likely to deceive or cause confusion.

 

In addition, Crocodile International argued that, if Section 44(1) of the act was satisfied, “other circumstances” existed which justified the registration of the CROCODILE and CARTELO marks under Section 44(3) of the act. In particular, Crocodile International maintained that a broad application of the expression “other circumstances” should apply in order to include circumstances involving honest concurrent use of the trademarks in overseas markets. Due to the extensive use that had been made of the CARTELO and CROCODILE marks in Asian markets and the coexistence of Lacoste and Crocodile International in some foreign markets, Crocodile International argued that Section 44(3) of the act applied to justify the registration of the applications.

 

When analyzing the CARTELO mark, the hearing officer was cautious in accepting Crocodile International’s argument that the word 'cartelo' was an essential feature of the mark. In addition, the hearing officer was equally cautious in giving weight to Lacoste’s consumer survey evidence in respect of the CARTELO mark. The survey results showed that, of the respondents that recognized the CARTELO mark, 18% identified the mark with Lacoste. This was, by far, the most popular company or brand-related response. However, as there was only a small actual number of respondents to this survey question, the hearing officer did not place any weight on this aspect of the results. In comparison, the hearing officer placed some weight on the survey results in respect of the CROCODILE mark, which demonstrated that 28% of respondents associated the CROCODILE mark with Lacoste. Consequently, the hearing officer returned to first principles in determining how the CROCODILE and CARTELO marks would be perceived by the average Australian.

 

First, the hearing officer accepted that ordinary consumers could expect that the crocodile element in both of Crocodile International’s applications was there to serve a trademark function. Second, the crocodile in both of the trademarks was shown in the same general position as Lacoste's device mark (albeit mirror-imaged). Having found that Lacoste had a significant reputation in Australia, the hearing officer found that ordinary imperfect recollection would leave a significant number of consumers with the view that the marks were the same crocodile device as that of Lacoste. Third, the crocodile device used in the applications was reasonably unlike other crocodile devices used or registered by third parties. Finally, the hearing officer accepted that the whole of Lacoste’s crocodile trademark made up a significant portion of Crocodile International’s trademarks. As a result, he was satisfied that a significant level of confusion would ensue and that Section 44(1) of the act as a ground of opposition was established.

 

In respect of Crocodile International’s argument that Section 44(3) applied in favour of concurrent registration, the hearing officer accepted that enough case law existed in favour of a broad reading of Section 44(3) of the act so that other circumstances could include honest concurrent use in overseas markets. However, the hearing officer disagreed that the relevant circumstances described by Crocodile International warranted the registration of the CARTELO and CROCODILE marks. Due to the inordinate amount of litigation between Crocodile International and Lacoste, it was clear that the coexistence agreement was entered into purely for pragmatic business reasons. Moreover, Crocodile International had failed to show any Australian usage of the CROCODILE and CARTELO marks. Therefore, there was no relevant concurrent use in Australia.

 

Consequently, the hearing officer did not consider it appropriate to apply Section 44(3) of the act to allow concurrent registration. Lacoste's oppositions thus succeeded.