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Crocodiles in court -- and not a smile in sight

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Although he can spot even a black cat in the dark, the IPKat has always struggled to tell a crocodile from an alligator -- and certainly can't easily tell one crocodile from another -- which is why he took a keen interest in last week's Chancery Division (England and Wales) decision of the Chancellor himself, Sir Andrew Morritt, in Crocodile International Private Ltd v La Chemise Lacoste, handed down on 8 October and noted by LexisNexis.

Lacoste, which was founded in 1933, registered in 1981 the word CROCODILE as a UK trade mark for 'shirts, not including sports shirts'. In August 2006 Crocodile International commissioned a firm to investigate use of the CROCODILE mark; that firm reported that there was no relevant use. In October 2006 Crocodile International's solicitors wrote to Lacoste, inviting it to show use of the mark. In January 2007 Crocodile International applied to revoke the mark for lack of genuine use. The parties subsequently exchanged witness statements, Lacoste's witness statement providing evidence of sale of garments bearing the mark CROCODILE. Though the note doesn't make it particularly clear, it appears that Crocodile International sought summary judgment.

The Chancellor dismissed the application. As he explained,

* 'genuine use' meant actual use of the mark and should thus be understood to denote use that was not merely token, serving solely to preserve the rights conferred by the mark. Such use had to be consistent with the essential function of a trade mark, which was to guarantee the identity of the origin of 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 had another origin.

* 'genuine use' of the mark entailed use of the mark on the market for the goods or services protected by that mark, not just internal use by the undertaking concerned.

* use of the mark might thus relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers were under way, particularly in the form of advertising campaigns. Such use might be either by the trade mark proprietor or by a third party with authority to use the mark.

* the issue as to whether Lacoste's use of the mark was genuine was one of fact to be determined at trial. In the circumstances, Lacoste had a real prospect at trial of establishing that there had been genuine use of the mark.

From this brief note it's not clear to the IPKat what the nature of the disputed use was, or why Crocodile International should have pressed for summary judgment -- unless perhaps to bring extra pressure on Lacoste to surrender (improbable, given that company's size and resources) or enter into a coexistence agreement (equally improbable, given Lacoste's previous track record here ), not to mention -- adds the historically-inclined Merpel -- the lengthy history of ill-will between the two companies.

Never Smile at a Crocodile here
Crocodiles or alligators here
Cats v crocs: who wins?

Full post as published by IPKat on October 16, 2008 (boomark / email).