The Supreme Court of New Zealand has revoked registration of one of
the Lacoste crocodile trademarks, on the basis that Lacoste had not made
genuine use of the particular trademark for over three years.
This decision, handed down in February 2017, is extremely significant for
brand-dependent traders in New Zealand and is a reminder about good
practice for traders elsewhere. It sets a high threshold for what counts as
“genuine use” of trademarks. It also brings New Zealand in line with UK and
EU case law.
The rise of the crocodile
René Lacoste was a famous
French tennis player of the 1930s.
His nickname, Crocodile, was said
to convey the tenacity he displayed
on the tennis court. He developed
a business distributing shirts
embroidered with a crocodile design.
Lacoste is the successor business.
Its “crocodile” trademarks are
registered in many jurisdictions,
among them New Zealand,
Australia, Germany, Spain and
the United Kingdom.
One of the trademarks it owns is
New Zealand trademark 70068:
Crocodile International PTE Ltd,
the applicant in the revocation
application, is incorporated in
Singapore. It produces and sells
garments. There are other, originally
associated Crocodile companies.
Crocodile International and the other
Crocodile companies used various
crocodile-related trademarks in Asia
star ting in 1947, including marks
identical to New Zealand trademark
70068. These marks are well known
in some Asian jurisdictions.
Lacoste acquires and parks the mark
There have been a number of legal skirmishes between
Crocodile companies and Lacoste over branding. Lacoste in
2003 acquired trademark 70068 from Crocodile Garments
Ltd, which was not under common control with Crocodile
Lacoste never used trademark 70068. Lacoste did use a
variety of other registered marks with crocodiles in them,
but those marks were visually different from 70068. It had
two device marks:
It also had the word mark “CROCODILE”.
Crocodile International applied to have mark
70068 revoked for non-use.
It's not just the central idea and message
Lacoste accepted that it had never
used the particular mark in the exact
form that was registered. But it argued
that its use of the other crocodile
marks was use of 70068 on the basis
that its other marks, while differing in
elements, did not alter the distinctive
character of mark 70068. The central
idea and message was “crocodile” and
it was using that.
The Supreme Court of New Zealand
disagreed. Explaining the test for
determining the “distinctive character”
of trademarks in relation to their use,
it rejected Lacoste’s argument that
the “central message” of this mark
was “crocodile” and that use of other
marks which had the central concept
or message of “crocodile” was enough
to establish use of mark 70068.
The Court said that the marks being
used by Lacoste were obviously visually
different from mark 70068 in various
ways and that in determining whether
a mark is being used, one must look
more widely than simply the “central
idea and message” of the mark. Doing
that, the Court said, risked ignoring
or downplaying potentially significant
visual differences between trademarks.
The “central message” approach
would also risk extending too far
the protection enjoyed by traders
that own trademarks. It would allow
a trader to register trademarks for
multiple representations of an item
or symbol (or in this case an animal),
use only one representation, yet
retain protection over all of the marks
despite not using them.
Why revoke unused marks?
The Court discussed the public
policy behind not allowing unused
marks to remain on the trademarks
register. It noted that allowing
a single registration to remain,
unused, would produce large “nogo”
zones, creating a barrier to new
market entrants. Furthermore, the
economic logic behind trademarks
is “reap and sow”: a trader’s labour
in developing recognition of a
brand should be rewarded through
trademark protection. If there is
no use (“sowing”) of a trademark
leading to building a brand, there
are no benefits to “reap” from the
trademark. Indeed, New Zealand
policy opposes maintaining unused
trademarks on the trademarks
The court also ruled that if a mark has
not been used, New Zealand courts do
not have a general residual discretion
to decline to revoke. An unused mark
must be revoked if an application for
revocation is made.
When refreshing your marks: takeaways
The central lesson is that regular
review, scrutiny and refreshment
of your trademark portfolio is
vital. For the reasons explained in
the Lacoste case, if you don’t use a
trademark for an extended period,
you run the risk of revocation.
Businesses that refresh their brands
need to ensure they update their
trademarks to avoid the risk of old
marks being revoked for non-use.
It’s easy to overlook this.
It is not good enough to use a
freshened mark that is similar to
the old mark but uses only some of
its elements. Ensure that the marks
you use include elements which fully
retain the distinctive character of the
trademark as registered.
As well, it is generally good practice
to obtain new trademarks for the
Finally, New Zealand trademark law,
in using the prior “central message”
approach, was out of step with other
jurisdictions including the UK and
Australia. This decision gets it back in
line with UK and EU law.