Re Lacoste [2017] NZHC 2216

Re Lacoste [2017] NZHC 2216 [13 September 2017]IN THE HIGH COURT OF NEW ZEALANDWELLINGTON REGISTRYCIV-2015-485-563[2017] NZHC 2216UNDER the Trade Marks Act 2002IN THE MATTER OF An appeal from the decision of theAssistant Commissioner of Trade Marksdated 25 June 2015ANDIN THE MATTER OF New Zealand Trade Mark Application No.998331 in the name of Lacoste of 23-25rue de Provence 75009, Paris, FranceAppellantANDIN THE MATTER OF A notice of intention to reject trade markApplication No. 998331 under section 43of the Trade Marks ActHearing: 3 February 2016 (further submissions received 3 March 2017)Counsel: R M Wallis and T A Huthwaite for AppellantJudgment: 13 September 2017JUDGMENT OF CLARK JIntroduction[1] This appeal concerns an application by Lacoste to register a composite trade mark depicting an image of a crocodile with the word CROCODILE above the mark.[2] Lacoste owns the registrations for the component parts of the composite mark. That is, it owns the registrations for the word CROCODILE (the word mark) and for the image of the crocodile (the device mark).[3] The Intellectual Property Office of New Zealand (IPONZ) issued a notice ofintention to reject Lacoste's application. IPONZ cited as a ground for its rejection a prior application by Crocodile International Pte Ltd (CIL) to register the following mark (the cited mark).[4] The details of CIL's and Lacoste's respective applications are tabulatedbelow:Application No. Trade Mark Date Filed Class DescriptionCrocodileInternationalapplication:No. 988410"Cited mark"22 November2013Class 25:Clothing, footwear,headgearLacosteapplication:No. 998331"Composite mark"22 May 2014 Class 25:Clothing, footwear,headgear[5] CIL's application was in abeyance pending the outcome of its three active proceedings in respect of marks owned by Lacoste.1 Each of these three proceedings had at issue the same mark as the cited mark which, until its recent revocation by the1 Namely, CIL's revocation proceeding against Lacoste's mark No. 70068 (see below n 3); CIL'sopposition to Lacoste's application to register No. 837027; and CIL's application to invalidate Lacoste's mark No. 978868.Supreme Court,2 was registered and owned by Lacoste.3 I refer to the cited mark when it was owned by Lacoste as 70068.[6] The Assistant Commissioner considered it would be inappropriate todetermine Lacoste's application while the status of the cited mark was unknown. The Assistant Commissioner wished to avoid the risk of reaching a decision based on a comparison of the cited mark and the composite mark when her decision might transpire to be inconsistent with ongoing proceedings in other courts, principally the revocation proceedings brought by CIL alleging Lacoste's non-use of 70068. TheAssistant Commissioner therefore halted progress on Lacoste's application pendingthe determination of the litigation.[7] Lacoste appeals on two grounds:(a) The Assistant Commissioner erred by not determining Lacoste's application and in refusing to register Lacoste's trade mark inaccordance with s 26(b) of the Trade Marks Act 2002 (the Act); and(b) By halting the application the Assistant Commissioner erred in her application of reg 28 of the Trade Marks Regulations 2003 (the 2003 Regulations).[8] The key issues for my determination are:(a) whether the Assistant Commissioner should have overruled the citation of CIL's mark and, pursuant to s 26 of the Act, accepted Lacoste's application for registration on the basis special circumstances existed; and2 Crocodile International Pte Ltd v Lacoste [2017] NZSC 14, (2017) 14 TCLR 475.3 The revocation proceeding concerned the same stylised crocodile and word mark depicted in the cited mark. The mark was 70068 (see [5] above) owned by Lacoste. CIL claimed there had been no genuine use of the mark over several "non-use periods" and applied to have the markrevoked. Lacoste accepted it had not used 70068 in the form registered but that its use of other trade marks whose differences from 70068 were insignificant, meant it had used 70068. TheAssistant Commissioner rejected Lacoste's position. That decision was overturned on appeal in the High Court. The High Court's decision was upheld by the Court of Appeal. CILsuccessfully appealed to the Supreme Court with the result that registration of trade mark 70068 was revoked from 12 December 1999.(b) whether Lacoste's application was properly halted in reliance onreg 28 of the 2003 Regulations.[9] Appeals against decisions of the Commissioner are by way of rehearing.4 To the extent the appeal is against an exercise of discretion Lacoste is required to establish that the Assistant Commissioner acted on a wrong principle or failed to take into account some relevant matter or took into account an irrelevant matter or was plainly wrong.5 Otherwise I must reach my own view on the merits taking account of any technical expertise employed by the Assistant Commissioner in reaching her decision.6[10] The delay between the hearing and judgment is regrettable and regretted. It is explained, in part, by results in successive appeals in respect of one of the three proceedings the indeterminate status of which contributed to the AssistantCommissioner's decision to halt Lacoste's application.[11] The Court of Appeal issued its judgment in the revocation proceeding in April 2016. CIL appealed to the Supreme Court. The appeal was heard in August 2016 and on 21 February 2017 the Supreme Court delivered judgment.[12] The Supreme Court accepted there was a conceptual similarity between 70068 and Lacoste's device mark but there were significant visual differences between the marks. This finding appeared to run counter to one of the arguments Lacoste advances in this appeal and I sought further submissions which Lacoste filed in March 2017. I return to those submissions later in the judgment. The short point at this stage is that Lacoste maintains the position it maintained before the Assistant Commissioner namely that the issues in the earlier litigation are not relevant to consideration of its application nor to this appeal.4 Trade Marks Act 2002, s 173; High Court Rules, r 20.18.5 May v May (1982) 1 NZFLR 165 (CA) at 170; Novartis New Zealand Ltd v Aktiebolaget Hassle[2004] 2 NZLR 721 (CA) at 733–734.6 Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [3] and [5].The two companiesLacoste[13] The Lacoste business was founded by René Lacoste, a French tennis player who, in the mid-1920s, became the world's top-ranked player. He was nicknamedthe "Crocodile" reflecting the tenacity he displayed on the tennis courts in neverletting go of his "prey". In 1933 René Lacoste formed a partnership, La ChemiseLacoste, to distribute polo shirts with the crocodile design which had been initiallycreated for René Lacoste's personal use. La Chemise Lacoste was subsequentlyincorporated and from 2005 has been known simply as Lacoste.[14] Lacoste has developed an international presence with approximately 1,200 dedicated Lacoste boutiques worldwide and in excess of 2,000 Lacoste stands in larger retail outlets selling goods other than Lacoste products. Lacoste diversified from clothing apparel to incorporate the product lines for which it is well known: perfume, leather products, belts, glasses, shoes, household linen and watches.[15] Lacoste has had a presence in New Zealand since the 1970s. Since 1976 distributors appointed by Lacoste have distributed Lacoste products to various retailers in New Zealand. Lacoste's first boutique in New Zealand opened in mid1991. By 1996 three boutiques operated in New Zealand.[16] Lacoste has a worldwide portfolio of trade marks and is the owner of a significant number of registered trade marks in New Zealand. I attach to this judgment the schedule of registrations which Lacoste put before the Assistant Commissioner to show Lacoste's three registrations for the word CROCODILE and several registrations for its crocodile device all of which pre-date the cited application.[17] For the purpose of this proceeding Lacoste relies particularly on trade mark registration Nos. 604957, 812834 and 722727 which are set out below:Registration No Trade Mark Date Filed Class Description604957 CROCODILE 13 December 1999 Class 25812834 CROCODILE 10 December 2004 Class 25722727 17 December 2004 Class 25Crocodile International Pte Ltd[18] Despite being the applicant for the cited mark CIL was not a party to the proceeding before the Assistant Commissioner and is not a party to this appeal.[19] CIL's cited mark was created by Tan Hian-Tsin, the founder of CIL. CIL established its business in the 1940s and is a significant clothing manufacturer in Asia. By around 2013 it had over 50 licensees across Asia including in Singapore, Korea, Bangladesh and China.[20] CIL has no trading presence in New Zealand. There has been no use by CIL in New Zealand of the mark comprising the cited application or, for that matter, useof any other crocodile related mark. As at the date of the Assistant Commissioner's decision no device mark or word marks were registered in CIL's name inNew Zealand.Process leading to Assistant Commissioner's Decision[21] In accordance with s 39 of the Act Lacoste's application was examined todetermine whether it complied with statutory requirements. On 28 May 2014IPONZ issued its report notifying it could not accept Lacoste's application because a similar mark to Lacoste's had priority and the use of Lacoste's mark would be likelyto deceive or cause confusion. The mark cited by IPONZ was the mark which CIL applied to register, that is, the cited mark.[22] In response Lacoste submitted its mark should be accepted for registration because it owned a number of trade marks substantially identical to the composite mark. Those registrations were filed prior to the cited application and included two word mark registrations for the word CROCODILE and a device mark registration.7[23] As well Lacoste had an extensive history of the use of the two elements of the trade mark making it appropriate that its application should be accepted under s 26 of the Act because special circumstances existed.[24] Second and third compliance reports were issued. In the end IPONZ maintained its objection under s 25(1)(b). The cited mark was said to be verbally and conceptually identical and visually similar to the mark Lacoste wished to register. Nor did special circumstances exist: the registered word and device markseach incorporated different verbal, visual and conceptual ideas to Lacoste'scomposite mark. The evidence filed by Lacoste showed use of the wordCROCODILE, and the device mark, but not use of the composite mark.[25] In a fourth report issued 24 September 2014 IPONZ notified Lacoste that the matter had been considered by a principal examiner. IPONZ remained of the view that the cited mark and the composite mark are visually similar and conceptually and verbally identical and was not satisfied that the mark should be registered on the basis of special circumstances.[26] In summary, IPONZ considered mark 722727was visually dissimilar from the composite markbecause the composite mark contained the word crocodile and 722727 did not.7 See [17].Members of the public would identify them differently.[27] Ultimately IPONZ issued a notice of intention to reject Lacoste's applicationand the matter proceeded to a hearing. The hearing on 13 May 2015 was before the Assistant Commissioner who, on 25 June 2015, issued the determination which is the subject of this appeal.8The decision under appeal[28] The Assistant Commissioner referred to Lacoste's evidence in support of itstrade mark application. Thirteen statutory declarations had been filed with almost 1400 pages of exhibits. Some of the statutory declarations had been filed in earlier proceedings involving Lacoste and before the Assistant Commissioner only the exhibits relevant to that proceeding were provided.[29] In her decision the Assistant Commissioner referred to the significant number of registered trade marks which Lacoste owned in New Zealand and its evidence of use in New Zealand of a number of those trade marks but she did not find it necessary to detail that use for the purpose of the proceeding before her.[30] Turning to Lacoste's submissions the Assistant Commissioner regarded them as providing a "detailed and thoughtful analysis of a complex area of law where there are few guiding authorities".[31] The only obstacle to registration of Lacoste's combined mark appeared to be the cited mark but if the cited mark were rejected that appeared to be a completeanswer to IPONZ's concerns. Alternatively, if the cited mark were registered (anoutcome which Lacoste contended, and maintains, is extremely unlikely, if not impossible) then Lacoste would find it difficult to prove its mark is not likely to cause deception or confusion because the two marks are confusingly similar.[32] After summarising Lacoste's submissions the Assistant Commissioner askedherself whether it was appropriate to reach a decision on the application forregistration at that juncture. The Assistant Commissioner disagreed with Lacoste's8 Re Lacoste [2015] NZIPOTM 7.assessment that a decision would not impact on the other proceedings. The Assistant Commissioner observed that the present dispute is one of the many disputes between Lacoste and CIL that are long-standing, wide-ranging and in some cases ongoing.The Assistant Commissioner declined to regard Lacoste's application as a "typicalstand-alone application". Rather, the case was part of a "much wider, complex, and ongoing dispute between the parties" and therefore it would be premature to reach adecision at that stage.[33] The Assistant Commissioner additionally wished to avoid the risk of reaching a decision based on a comparison of the cited mark and composite mark when that decision might transpire to be inconsistent with an anticipated judgment of the Courtof Appeal determining the application to revoke Lacoste's mark 70068. Relying onreg 28 of the 2003 Regulations the Assistant Commissioner halted the proceeding pending the outcome of the court proceedings and determination of the status of the status of the cited mark.[34] While the Assistant Commissioner decided it would be premature to reach a decision on the application she considered it would be worthwhile to include herobservations about the application of the developing "sandwich" principle uponwhich Lacoste relied as one of the special circumstances justifying registration under s 26(b).Statutory framework[35] Part 2 of the Act governs registrability. Trade marks generally will be registrable if an application is made in accordance with the Act, any prescribed fee is paid and there are no absolute or relative grounds in Part 2 preventing registration.9Absolute grounds for not registering a trade mark are set out in subpart 2 of Part 2. Subpart 3 contains the relative grounds for not registering. Sections 25 and 26 provide for the registrability of identical or similar trade marks.9 Trade Marks Act, s 13.25 Registrability of identical or similar trade mark(1) The Commissioner must not register a trade mark (trade mark A) in respect of any goods or services if—(a) it is identical to a trade mark (trade mark B) belonging to a different owner and that is registered, or has priority undersection 34 or section 36,—(i) in respect of the same goods or services; or(ii) in respect of goods or services that are similar to those goods and services, and its use is likely to deceive or confuse; or(b) it is similar to a trade mark (trade mark C) that belongs to a different owner and that is registered, or has priority undersection 34 or section 36, in respect of the same goods or services or goods or services that are similar to those goods or services, and its use is likely to deceive or confuse; or(2) Section 26 overrides subsection (1).[36] Lacoste relies on s 26 which, as provided in s 25(2), overrides s 25(1). Section 26 states:26 ExceptionsThe Commissioner must register trade mark A if—(b) the Commissioner or the court, as the case may be, considers that a case of honest concurrent use exists, or other special circumstances exist, that, in the opinion of the court or the Commissioner, makes it proper for the trade mark to be registered subject to any conditions that the court or the Commissioner may impose.[37] Part 3 prescribes the process by which applications are made, examined anddetermined. Except for "convention applications", applications proceed in theirorder of priority. An application will be examined for compliance with formalities and criteria bearing on registrability.[38] Section 34 is within Part 3 and provides for the priority of applications for registration of identical or similar trade marks. If different persons separately apply for the registration of trade marks that are identical or similar to each other in respectof identical or similar goods or services the first application received by the Commissioner has priority over all applications and may proceed.[39] It is also necessary to set out the regulation which confers the power to halt a proceeding:28 Commissioner may halt proceeding(1) The Commissioner may halt a proceeding, if the Commissioner thinks it appropriate, on the application of a party or on theCommissioner's own initiative.(2) The Commissioner may halt the proceeding for the period and on the terms and conditions that the Commissioner thinks appropriate, but must not halt the proceeding for more than 6 months.(3) The Commissioner may halt the proceeding for further periods, but on each occasion for no more than 6 months.(4) The Commissioner may at any stage, while the proceeding is halted, recommence the proceeding.Do special circumstances exist?[40] Section 25 prevents registration of a trade mark that is identical10 or similar11to another registered or pending trade mark that has priority for the same or similargoods or services, and use of the applicant's mark is likely to deceive or confuse. As stated earlier, IPONZ took the view that because the composite mark and cited mark were visually similar and conceptually and aurally identical it was not satisfiedLacoste's mark should be registered.[41] Section 25 is subject to s 26. Section 26 permits registration of a mark where registration is otherwise prohibited providing special circumstances exist. For the exception to apply Lacoste must establish honest concurrent use of its composite mark or that other special circumstances exist which make it proper for the composite mark to be registered.[42] I regard s 26 as requiring a two-stage approach. First, the applicant must demonstrate honest concurrent use or other special circumstances. It is then for the10 Section 25(1)(a).11 Section 25(1)(b).court, or Commissioner, to form a view as to whether the honest concurrent use, or other special circumstances, make it proper for the trade mark to be registered. It may be that at this stage conditions are thought necessary in order for the trade mark to be registered under s 26(b).Honest concurrent use?[43] Lacoste submits its use of its marks is long-standing and substantial. By contrast, CIL has no trading presence in New Zealand and has never used in New Zealand the mark it seeks to register. Lacoste concedes no use by CIL of the cited mark or any entitlement by CIL to use or register the cited mark. Lacoste submits its use of the composite mark is not concurrent with any use by CIL as no such use exists. Lacoste submits its use of the composite mark is concurrent in the sense its use existed prior to and "concurrently" with the priority date of the cited mark.[44] Lacoste's disavowal of any use concurrent with CIL suggests, in my view, the honest concurrent use exception is unavailable to Lacoste. Concurrent use requires two traders to be operating (in New Zealand)12 as at the date of the cited application.13[45] The evolution of the doctrine of honest concurrent use was a response to situations where traders may have been innocently marketing their goods or services unaware that the trade mark being used closely resembled the trade mark of another. Because I consider Lord Diplock's explanation of the emergent doctrine of honestconcurrent use provides the complete answer to Lacoste's reliance on thejurisdiction, I set out in full Lord Diplock's explanation (emphasis added):14In the early nineteenth century trade was still largely local; marks which were identical or which closely resembled one another might have been innocently adopted by traders in different localities. In these their respective products were not sold in competition with one another and accordingly no question of deception of the public could then arise. With the rapid improvement in communications, however, in the first half of the nineteenth century markets expanded; products of two traders who used similar marks12 Kiwi Polish Co v Kempthorne Prosser & Co [1925] NZLR 26 (CA) at 67.13 Conduct and events after that date may, however, be taken into account to the extent they are relevant to the exercise of discretion: VB Distributors Ltd v Matsushita Electric Industrial Co Ltd (1999) 9 TCLR 349 (HC) at [82].14 GE Trade Mark [1973] RPC 297 (HL) at 326.upon their goods could thus come to be on sale to the same potential purchasers with the consequent risk of their being misled as to the origin of the goods. Furthermore, it was accepted that as an adjunct of the goodwill of the business the right to use a trade mark might be acquired by more than one successor if the goodwill of the business were divided, as it might be, for instance, where the business had formerly been carried on in partnership or from more than one manufactory or shop. To meet this kind of situation the doctrine of honest concurrent user was evolved. Under this doctrine a trade mark remained entitled to protection in cases where the use of it had not originally been deceptive but a risk of deception had subsequently arisen as a result of events which did not involve any dishonesty or other wrongful conduct upon the part of the proprietor of the mark. If, however, his own wrongful conduct had played a part in making the use of the mark deceptive, the Court of Chancery would not grant him an injunction against infringement. This was but a particular application of the general equitable doctrine that he who seeks equity must come with clean hands.[46] That an honest concurrent use cannot be established if only one user is operating in the relevant market is underscored by the analytical approach to establishing honest concurrent use. For example, the court must consider whether instances of confusion have been proved and compare the extent of use of the two marks during a relevant period. The degree of confusion likely to arise from the resemblance of the two marks and the relative inconvenience arising from registration must also be assessed. These comparative considerations presuppose more than one user of the relevant trade mark or marks.[47] Where, as here, there is no contest between users as to honest concurrent use because there is only one user, I do not think the exception can be invoked. It is not sufficient to assert, as Lacoste asserts, that its use of its trade mark is concurrent with a mere application to register a similar trade mark.[48] Honest concurrent use not being found to exist I turn to consider whetherthere are other special circumstances making it proper for Lacoste's trade mark to beregistered.Other special circumstances?[49] Special circumstances are those which justify taking the case out of the ordinary rules so that justice may be done to the applicant.15 Beyond that rationale there is little guidance on what constitutes a special circumstance.[50] Given the purpose of the "special circumstances" exception to non- registration is to recognise the justice of the applicant's case and that the legislature has not sought to stipulate any criteria for determining "special circumstances", eachcase is to be determined on its own particular facts and by reference to first principles. One such principle, it seems to me, must be the nature and extent of theapplicant's use of the trade mark it seeks to register. This is no more than one of theconsiderations when deciding whether honest concurrent use exists.Evidence of use[51] Lacoste submits its use and reputation in New Zealand is long-standing and substantial. Lacoste products invariably bear the device mark. Lacoste has also used the word mark in association with some of its products. Lacoste has used the word"crocodile" and the image of a crocodile together and claims it has for some years,including before the priority date of CIL's application, used the exact mark which isthe subject of its application.[52] I do not regard the evidence as supporting the claim that the composite mark has been used in New Zealand prior to 22 November 2013.[53] Lacoste relies on the evidence of Ms Armstrong, store manager of the Lacoste Auckland City Boutique store, as to her store's sales of tee-shirts using the composite mark. In describing the word marks and device marks on separate itemsas being identical to the composite mark Ms Armstrong's evidence goes too far. Theword marks and device marks are not identical to the composite mark. But they are identical to the component parts of the composite mark.15 Bali Trade Mark (No 2) [1978] FSR 193 (CD) at 221.[54] Ms Armstrong filed updating evidence for the purpose of this appeal. The evidence shows that from May 2015 Lacoste has displayed a line of tee-shirts bearing a crocodile word and crocodile image. The particular exhibits bear the exact image of the crocodile in the composite mark but the word "crocodile" is stylisedscript and quite distinct from the plain font in the composite mark. There is,however, evidence of a range of clothing for sale in Ms Armstrong's boutique withswing tags bearing the composite mark. But this evidence is of clothing available for sale as at the date of Ms Armstrong's affidavit which is October 2015 and to the extent Lacoste seeks to demonstrate its use of the composite mark it must demonstrate that use as at 22 November 2013, the date of the cited application.[55] Lacoste particularly relies on its registered marks 604957 and 812834 (theCROCODILE word mark) and 722727 (the device mark).16 Each of these trade mark registrations are for the same class of goods as the composite mark and all precede it. All are registered; all are in use and none is contested. Lacoste submits the addition of the word CROCODILE to the device mark does not substantially affect the identity of the mark as a whole.[56] In the context of a proceeding in which the special circumstances exception is invoked the court can assess whether the applicant has demonstrated use of a mark having the distinctive character or elements of the mark it seeks to register. A more rigorous approach is no doubt mandated in a revocation setting where subtle differences may determine whether a mark has actually been used in the form in which it appears on the register or in a different form with the consequence that the mark on the register should be revoked for non-use. But the analysis undertaken when assessing whether special circumstances exist is likely to engage principles beyond the ordinary rules in order to do justice to the applicant.17[57] The composite mark combines two marks registered and owned by Lacoste: the CROCODILE word mark and the device mark.16 See [16] above.17 Bali Trade Mark (No 2), above n 15, at 221.[58] The amalgamation of the two registered marks which Lacoste owns produces the composite mark which Lacoste seeks to register.[59] The crocodile image in the composite mark is identical to the crocodile image in mark 722727. The CROCODILE word is not in a visually arresting form and the core message of the composite mark is communicated by the device rather than the word accompanying it.18[60] Lacoste has established its extensive and lengthy use of, and reputation for, its device mark in New Zealand. Since the 1970s it has continuously sold products bearing the exact component parts of the composite mark. The evidence produced shows that Lacoste has used the composite mark on the swing tags for clothing available for sale as at October 2015. Conduct and events after the date of Lacoste'sapplication may be taken into account to the extent they are relevant to the exercise of discretion.19[61] The extensive evidence of historical use of Lacoste's trademarks demonstrates that products bearing Lacoste's device mark and word mark have beensold in New Zealand for many years.[62] Simon France J, in his determination of an appeal by CIL challenging the refusal of the Assistant Commissioner to register its trade marks,20 examined the various bases for the Assistant Commissioner's ruling that there was sufficient market awareness in New Zealand of Lacoste's brand to discharge its onus inopposing CIL's registration. France J regarded the point as "incontestable". There is no doubt that Lacoste products bearing either the device mark or the word mark have been sold in New Zealand since 1974. New Zealanders associate the crocodile brand with Lacoste.18 See for example Crocodile International Pte Ltd v Lacoste, above n 2, at [75].19 See above n 13.20 Crocodile International Pte Ltd v Lacoste HC Wellington CIV-2009-485-2534, 1 March 2011.[63] I have concluded that Lacoste has established the existence of special circumstances that make it proper for its composite mark to be registered. In reaching this view I take into account the following factors whose relevance to the exercise of the special circumstances discretion is long settled.21(a) CIL has no trading presence in New Zealand. Apart from the cited mark, CIL owns no registered trade marks.(b) Lacoste's composite mark has not been copied from another or used inany suspicious or dishonest way.(c) Refusal of Lacoste's application poses considerable inconvenience toLacoste because refusal denies to Lacoste the right to register and use a mark in a form differing in elements that do not alter the distinctive character of the trade mark in the form in which it was registered.22The essential element (the crocodile image) is identical to the image in the composite mark.(d) There is no inconvenience to the public from registration because the cited mark has never been used in New Zealand and CIL has no reputation in New Zealand based on the cited mark.Conclusion[64] Lacoste has a strong reputation in New Zealand in its word mark and device mark. As the Supreme Court observed, "a strong reputation in a trade mark may mean that greater changes can be made before distinctive character is lost than would be the case for a less established brand".23 The distinctive crocodile shape andimage in Lacoste's device mark is unaltered by its presentation in a composite mark,that is, with the addition of the word mark CROCODILE.21 Re Alex Pirie and Sons Ltd's Application (1933) 50 RPC 147 (HL) followed for example inVB Distributors Ltd v Matshushita Electric Industrial Co Ltd, above n 13, at [77].22 See the extended meaning of "use" in s 7, Trade Marks Act.23 At [52].[65] I am satisfied special circumstances exist such that Lacoste should be able to have its composite trademark registered. In coming to this conclusion I have notfound it necessary to express a view on the "sandwich principle" as argued byLacoste.Halt of proceeding[66] In light of the conclusion that special circumstances exist it is unnecessary to determine Lacoste's second ground of appeal. I am also mindful of the fact that the decision to halt the application was an exercise of the Assistant Commissioner'sdiscretion in a context which she accurately described as raising issues in a complex area of the law with few guiding authorities.[67] I leave this ground of appeal after making two observations.[68] The first is that the public interest "strongly favours" proceedings beingprocessed and determined within prescribed timeframes.24 My second observation is that this principle was not lost on the Assistant Commissioner who recognised the general undesirability of parties facing delays. However, she considered the case before her was not "a typical stand-alone application" but a "case [that] is part of a much wider, complex and ongoing dispute between the parties" and she was"particularly conscious of the desirability of securing the just, speedy andinexpensive determination of proceedings as a whole".[69] Before the Assistant Commissioner, and in this Court, Lacoste stronglyargued that its composite mark and CIL's cited mark are substantially identical.Lacoste advanced the same argument in the Supreme Court albeit in the very different context of opposing revocation of 7006825 on the grounds of non-use.Contrary to Lacoste's position, the Supreme Court concluded there were significant differences between trade mark 70068 as registered and the Lacoste marks used.2624 CFG Coatings Ltd v Xella Deutschland GmbH [2013] NZIPOTM 26 at [16].25 Above n 3.26 Crocodile International Pte Ltd v Lacoste, above n 2, at [73].[70] The Supreme Court determined an issue of similarity between marks not relevant to this dispute yet the Assistant Commissioner halted Lacoste's application until the "status of the cited mark is known". The arguments before the Assistant Commissioner and before the Supreme Court were in respect of very different issues involving very different considerations. The application before the Commissioner did not involve any consideration of trade mark 70068 and whether that mark had been used by Lacoste. The issue in this proceeding is whether Lacoste is entitled to register its composite mark, irrespective of the cited mark, in light of Lacoste's rightsarising from its registrations of the word mark and the crocodile device 722727.This issue is unaffected by the Supreme Court's judgment.[71] The point is this: the Assistant Commissioner was faced with a complex and shifting backdrop. Were I required to determine this ground of appeal I would not conclude that the Assistant Commissioner erred in the exercise of her discretion in the challenging factual circumstances facing her.Result[72] I am satisfied special circumstances exist that make it proper for trade mark No. 998331 to be accepted for registration. Lacoste derives this entitlement from its use of the substantially identical mark No. 722727 registered to Lacoste in respect of the same class of goods.[73] The appeal is allowed.[74] Lacoste's trade mark application No. 998331 is to be accepted for registration._____________________________Karen Clark JSolicitors:Baldwins Law Ltd, Wellington for Appellant