No Smiles for Crocodile Sandwich
Assistant Commissioner provides observations on when ‘sandwich marks’ can constitute ‘special conditions’ that can allow an exception to the priority principle...
In Lacoste  NZIPOTM 7 an Assistant Commissioner made some observations about when ‘sandwich marks’ can constitute ‘special conditions’ that can allow an exception to the priority principle.
The observations were made on a hypothetical basis after the Assistant Commissioner ordered a halt in proceedings in the determination of whether or not Lacoste’s class 25 application 998331 would be rejected on the basis of Crocodile International’s prior application 988410 covering identical goods. Application 988410 is in Abeyance on account of Crocodile International’s proceedings against 3 prior marks (identical to 988410) currently owned by Lacoste. Given that the outcome of those proceedings can affect the status of 988410 the Assistant Commissioner considered it best to halt the determination of whether 998331 would be rejected.
Had the proceeding not been halted, Lacoste argued that 998331 should proceed to acceptance given that Lacoste already has a registration for the word element and a registration for the device element contained in application 998331 covering identical goods, both of which have priority over 988410.
The Assistant Commissioner noted that there is little judicial guidance on ‘sandwich marks’ – third party marks significantly similar to and having a priority date between the first applicant’s identical or significantly similar marks, all of which cover the same or very similar goods or services. It was also noted that IPONZ has no current policy, but has been obtaining feedback on a draft policy. The Assistant Commissioner gave approval to the current draft policy, which only allows the first applicant’s later application to proceed to acceptance where both the first applicant’s earlier mark and the sandwich mark have been registered. (It is also required that the sandwich mark clearly conflicts with the first applicant’s earlier trade mark and that the earlier trade mark is not subject to proceedings.)
The Assistant Commissioner agreed with IPONZ view that if the prior marks have not been registered, then allowing the later application to proceed to acceptance would lead to uncertainty in the trade mark priority system. It is in the wider interests of all users that such uncertainty is to be avoided. Consequently, in line with the stay order, the Assistant Commissioner declined Lacoste’s request for application 998331 to proceed to acceptance, as doing so while Crocodile International’s application 988410 is still pending (or in abeyance) would be premature.