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found that Lacoste had not used a sign sufficiently similar to the 1961 acquired registration and hence the mark was revoked for non-use.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.