Crocodiles at War......again!

The long running battle between Crocodile International Private Limited (“Crocodile”) and La Chemise Lacoste (“Lacoste”) over the use of their respective CROCODILE marks continues.

The battle between Crocodile (a clothing manufacturer based in Singapore) and Lacoste (a French clothing manufacturer) has been ongoing for over 40 years and was originally centred around use of the crocodile marks in the Asian market. In the most recent battle, however, Crocodile has contested the validity of Lacoste’s UK trade mark for the word CROCODILE and has sought revocation of the mark for lack of genuine use.

Lacoste was founded in France in 1933 by Mr René Lacoste who was a member of the French tennis team that won the Davis Cup Final in 1927. This win earned Mr Lacoste a nickname which has been translated in France as Crocodile or Alligator. Mr Lacoste subsequently went on to design a tennis shirt called the 1212 on which Lacoste applied an alligator mark and motif. In 1981, Lacoste registered its CROCODILE word mark in class 25 for “shirts, not including sport shirts”.

In 2006, Crocodile commissioned a firm to investigate Lacoste’s use of the trade mark. This firm found there to be no relevant use. Crocodile subsequently wrote to Lacoste requesting evidence of use but received no response. Crocodile issued proceedings in 2007 under s46(1)(a) of the Trade Marks Act 1994 which allows for revocation of a trade mark where the trade mark has not been put to genuine use in the UK in respect of goods or services for which it has been registered within a period of 5 years following registration.

Crocodile made an application for summary judgment which was dismissed. In dismissing the claim, Sir Andrew Morritt referred to the case of Ansul BV v Ajax Brandbeveiliging BV, where it was stated that ‘genuine use’ was not merely token use and that “such use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. It follows that ‘genuine use’ of the mark entails use of the mark in the market for the goods or services protected by that mark and not just internal use by the undertaking concerned”.

Sir Andrew Morritt concluded that there was a real prospect that use of the CROCODILE trade mark by Lacoste on the swing tag or label attached to a shirt is ‘genuine use’ of Lacoste’s trade mark and that the issue was one that should be determined at trial.

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accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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