Here’s a fun fact, reminiscent of Trivial Pursuit - René Lacoste was a famous French tennis player and the American press gave him the nickname “Crocodile”, apparently following a bet made with the captain of the French tennis team concerning a suitcase made from crocodile skin. The name however also conveyed the character of his on-court playing style and so a “crocodile” became the perfect brand image for his Lacoste clothing business (which dates back to the 1940s).

The business of course grew into a fashion icon with a global reach. During its expansion it encountered other “crocodile” brands and, at least in New Zealand, this involved Lacoste acquiring an old “crocodile” trade mark registration that dated back to 1961. That trade mark was not a Lacoste original and so not exactly as per its brand guidelines, but was indisputably a crocodile – not least because it used that word and contained a picture of said reptile. As that old trade mark registration was not exactly right, Lacoste never in fact used the trade mark in the form registered.

That was all well and good, until another “crocodile” named entity sought to remove that 1961 registration from the New Zealand trade mark register for non-use, a move which sparked a nigh on 10 year trade mark battle that was recently heard by the Supreme Court.

The key issue can be summarised as “What counts as use of a registered trade mark, i.e. how close does the sign you use, need to be to the actual registration you own?” A seemingly simple question perhaps, but dig a little deeper and complex issues abound, the details of which do not fit neatly within an article of this nature (you will be relieved to hear!)

Suffice to say that along the way, victory went first to one party and then the other, but the final Supreme Court hearing found that Lacoste had not used a sign sufficiently similar to the 1961 acquired registration and hence the mark was revoked for non-use.

Those 10 years of trade mark hearings and Court decisions have of course led to some key commercial pointers for brand owners; the main one being, “Don’t assume that just because you use a brand that has a similar / identical core element (i.e. a crocodile), that such use will be sufficient to support all and any trade mark registrations that, perhaps seemingly, bear the same core element.”. In short, use of a crocodile brand does not support each and every “crocodile” registration; despite that perceived core similarity, the use must still nearly match the form of the registrations.

The key practical lesson being that old brand due diligence adage of “Look at what you have registered; look at what you use; cross check those lists and take note of the gaps. If you use and haven’t registered, then file; if you have registered but don’t use, either let the registration go, or re-invigorate that use!" Although that process should be a regular piece of due diligence for all brand owners, the recent Lacoste decision serves as a good reminder to do that check and also had emphasises that the gaps might actually be small cracks, rather than full on gaping holes.