New Zealand Case Law: Decisions & Judgments | LexChat

Topic

Distinctive character

Legal area

Court

21 Feb 2017

CROCODILE INTERNATIONAL PTE LTD v LACOSTE [2017] NZSC 14

Citation

(2017) 14 TCLR 475
Court

Supreme Court

Applying the two-stage Lord Walker test and conducting a global appreciation of visual, aural and conceptual qualities, the Court identified significant differences between the registered mark 70068 (stylised word 'Crocodile' angled and cursive plus a more realistic crocodile device) and the Lacoste marks (stylised crocodile device and different word usage); those differences alter the distinctive character of the registered mark so Lacoste had not used mark 70068 within s 7(1)(a); furthermore there is no residual discretion to retain unused registrations under the 2002 Act; accordingly regis…
11 Apr 2016

CROCODILE INTERNATIONAL PTE LTD v LACOSTE [2016] NZCA 111

Citation

(2016) 14 TCLR 333
Court

Court of Appeal

The two-stage s7(1)(a) test is correct and there is no separate requirement to identify 'essential elements' before applying it; the crocodile device is the dominant element of registered mark 70068 and differences in orientation, font and word placement were insignificant, so use of other Lacoste marks featuring substantially similar crocodile devices constituted use of mark 70068; accordingly the revocation application fails and the appeal is dismissed.