René Lacoste, the famous French tennis player of the 1920's and founder of internationally recognised clothing brand Lacoste, was given the nickname "Le Crocodile" by the American press as it demonstrated the tenacity he displayed on court.
Eighty years later, Lacoste's battles are played out at a very different type of court. Crocodile International Private Limited ("CIPL"), a Singapore based clothing brand, uses a crocodile logo on its clothes which bears a striking resemblance to the famous crocodile which has adorned Lacoste's clothing ranges for nearly eighty years.
CIPL issued proceedings in the English High Court1 seeking the revocation of Lacoste's UK registered trade mark in the word "Crocodile" on grounds of alleged (i) non-use and (ii) bad faith.
"Crocodile" is the word mark applied by Lacoste to its flagship product: the iconic, white L1212 polo shirt worn by René Lacoste on court in his heyday and still sold in significant volumes in the UK and across the world today. The mark is applied to the shirt's swing tag, appears in seasonal collection plans and on invoices between Lacoste's distribution network.
CIPL made an application in the proceedings for summary judgment on the issue of non-use alone. There were two main limbs to CIPL's arguments:
- that the use of the mark on swing tags, collection plans and invoices was merely 'token' and did not constitute genuine use for the purpose of maintaining or creating a share of the market; and
- that the polo shirt to which the mark was applied was a sports shirt and so fell outside the registered specification: "shirts, not including sports shirts".
On the first of those issues, CIPL (i) relied on Lacoste's merchandising guide which instructed shop staff to hide labels and (ii) submitted that the documents on which the mark was used were for internal purposes. On the second issue, CIPL contended that the shirt was designed as and remained a sports shirt.
Finding in favour of Lacoste, the Court found on the question of genuine use that Lacoste's merchandising practice of concealing labels was aimed at achieving a satisfactory shelf display; the label was still there to be seen by the customer who would inevitably need to look at it to ascertain the price of the shirt.
As to whether there was use of the mark in relation to the goods for which it was registered, Lacoste's famous polo shirt had certainly started off life as revolutionary tennis wear, in an era where male tennis players wore long trousers and button down shirts. For decades, though, Lacoste had sold and marketed the "Crocodile" shirt as casual wear, equally comfortable with jeans as under a suit jacket. The court accepted that over the last 30 years or so clothing originally designed for sport had been embraced by the casual wear market. The judge cited as an example the football strip "commonly worn by men long past the age of participation on the pitch".
CIPL submitted that any sports use was enough to exclude all other use from being used in relation to goods for which the mark is registered. The judge did not accept that proposition and could see "no good reason why if the L1212 is marketed in one shop for wearing on the tennis court and in another as casual wear, the use of the mark in relation to the former should preclude consideration of the use of the mark in relation to the latter".
Ultimately, the judge found the issue whether Lacoste's polo shirt was a sports shirt or casual shirt was one of fact to be determined at trial and dismissed CIPL's application with costs. The decision persuaded CIPL to drop its claims in their entirety.
Game, set and match Lacoste.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
