Crocodile International Private Ltd v La Chemise Lacoste

For summary judgment on trade mark non-use, the applicant must show that the proprietor has no real prospect of establishing genuine use within the registered specification. Genuine use is real commercial use fulfilling the mark’s origin function. It may occur at a wholesale stage and need not be substantial or communicated directly to the ultimate consumer. Internal use and token use solely preserving registration rights are excluded.

Where goods are registered subject to an exclusion, the court must interpret the specification as at registration in its trade context, then determine the character of the goods to which the mark was actually applied during the relevant period. Use on goods sold both for sport and as casual wear is not automatically irrelevant to the registered goods.

The claimant sought summary judgment under CPR Rule 24.2 on its claim under section 46(1)(a) of the Trade Marks Act 1994 to revoke the defendant’s registration of CROCODILE for shirts excluding sport shirts.

The registration was completed in 1985, and the relevant five-year period ended in 1990. The defendant relied on use of CROCODILE in internal commercial documents, invoices, swing tags attached to L1212 shirts, and colloquial references to the shirts. The claimant argued that the use was neither genuine nor use in relation to the registered goods.

The central questions were whether the defendant had a real prospect of proving genuine use and whether the L1212 shirts were used otherwise than as sport shirts.

1. Application dismissed. The defendant had a real prospect of establishing at trial both genuine use and use in relation to goods within the registration. The claimant was ordered to pay the costs of the application, summarily assessed at £24,615.90, payable within 21 days. Permission to appeal was refused.
2. Section 46(1)(a) of the Trade Marks Act 1994 gives effect to Articles 10 and 12 of Council Directive 89/104 and must be interpreted accordingly. Genuine use means real use consistent with the essential function of a trade mark, namely indicating the origin of goods. Internal use by the proprietor or licensees, and token use serving only to preserve registration rights, must be disregarded.
3. The assessment of genuine use requires consideration of all relevant facts and circumstances. Use need not be substantial, significant, or communicated to the ultimate consumer. Use in a wholesale market may suffice, provided the mark is used on an economic market in relation to goods marketed or intended to be marketed.
4. The swing tag attached to the L1212 shirt provided a real prospect of proving trade mark use. The instruction to hide the label concerned shop display and did not establish token use, since the label remained available for consumer inspection. The evidence of more than 106,000 orders also gave a real prospect of proving substantial use.
5. The words “shirts but not including sport shirts” had to be interpreted as at the date of registration, in the light of their practical trade meaning. The court would then have to determine the character of the goods to which the mark was applied during the relevant period. Evidence that the L1212 was described as sportswear was not conclusive.
6. Use of the mark on a shirt marketed for sport did not, as a matter of law, exclude consideration of use on the same shirt marketed as casual wear. The defendant therefore had a real prospect of proving genuine and substantial use in relation to goods falling within the registration.

First-instance decision. The application for summary judgment was dismissed. Permission to appeal was refused because neither proposed ground had a real prospect of success and an interlocutory appeal would risk disrupting the fixed trial.