Unusual grounds pleaded in opposition proceedings involving crocodile logo

New Zealand

Crocodile International Pte Ltd has raised some rather unusual opposition grounds, based on a rather unusual set of facts surrounding a trademark application made by Lacoste in New Zealand. 

Crocodile International Pte Ltd v Lacoste ([2015] NZHC 2432, October 6 2015) is another episode in the long-running multi-national dispute between Crocodile International and Lacoste, this time over the following logo applied for by Lacoste in New Zealand:

This is the logo that Crocodile International trades under, referred to as the 'crocodile logo'. Lacoste already owns a registration for it in New Zealand, which came about as a result of an earlier settlement between the two adversaries. Crocodile International has applied to revoke that registration, and that matter is currently on appeal. 

The subject of this article is a new application for the same logo by Lacoste and an opposition to it by Crocodile International. The central issues raised in Crocodile International’s opposition include the relationship between copyright, design and trademark law, and whether Crocodile International owned the copyright and could prevent Lacoste from using the trademark, as well as whether Lacoste had an intention to use the crocodile logo. Crocodile International also claimed that Lacoste’s application was made in bad faith and that Lacoste was not the owner of the crocodile logo. Crocodile International failed on all of those grounds before the assistant commissioner in the opposition, and appealed those findings to the High Court.

In respect of copyright, Crocodile International had to show that the crocodile logo was an original work in which copyright subsisted and was owned by it. Lacoste challenged the originality of the work saying that it had been copied from Lacoste in the first place. The judge found that, although the crocodile logo was an original work in which copyright in New Zealand could subsist, no copyright did subsist as the work was a design capable of registration under the Patents, Designs, and Trademarks Act 1921-22, which precluded it from copyright protection. The judge went on to consider whether, if copyright did exist, use by Lacoste of the crocodile logo would infringe copyright.

Lacoste claimed that, by virtue of the assignment to it of the earlier trademark registration, Crocodile International was precluded, by estoppel, acquiescence, laches and the principle of non-derogation of grant, from opposing Lacoste’s application. Lacoste in effect argued that it was “implicit” in the assignment of the trademark or acquiescence to the registration by Crocodile International of the crocodile logo as a trademark in New Zealand that it could, in fact, use that mark. The judge agreed that, having transferred the trademark to Lacoste, Crocodile International could not then use a claim to copyright infringement to prevent Lacoste from using it in New Zealand. Further, Crocodile International had delayed too long in complaining about the Lacoste’s ownership of the trademark in New Zealand.

Having already been the registered owner of the same trademark for some years, it was then not bad faith to apply for the same trademark again. The judge pointed to the lack of specific evidence that Lacoste had applied for the same mark again simply to block Crocodile International.

Although Lacoste had not used the trademark in the form of the application, it had extensively used its own crocodile logo in New Zealand, and relied on that as use of a substantially similar mark. Its evidence was that it had an intention to continue using various crocodile logos in New Zealand, and the judge accepted that. As was found for bad faith, Lacoste is currently the owner of a registration for the same crocodile logo in New Zealand, and the judge did not accept that Lacoste was precluded from claiming to be the owner for a new application.

Lacoste’s appeal was allowed, and Crocodile International’s appeal was dismissed. As with the other disputes between Crocodile International and Lacoste in New Zealand, there is no doubt that this decision will be the subject of an appeal.

Kate Duckworth, Catalyst Intellectual Property, Wellington

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