Delhi HC Settles 23-Year-Old Trademark Dispute; Restrains Crocodile International From Using Similar Mark To Lacoste

The Delhi High Court has brought an end to a 23-year-old legal battle between two global fashion giants, ruling in favour of French luxury sports fashion company Lacoste in a trademark dispute against Hong Kong-based Crocodile International.

The Single-Judge Bench of Justice Sanjeev Narula issued a permanent injunction against Crocodile International, barring the company from using the Crocodile trademark, which the Court found to be deceptively similar to Lacoste’s well-known crocodile logo.

"A decree for permanent injunction is issued in favour of the Plaintiffs and against the Defendants, restraining them, or anybody acting on their behalf, from manufacturing, selling, offering for sale, advertising, or in any other manner using the trademark depicted in Annexure-A to the plaint that would amount to infringement of the Plaintiffs’ registered trademarks," the Court said. 

The Judgment was delivered in a trademark infringement suit filed by Lacoste in 2001, aimed at protecting its copyright and trademark rights in the crocodile device. Lacoste argued that Crocodile International’s logo, featuring a left-facing crocodile, was a mirror image of its own right-facing crocodile, creating a likelihood of confusion among consumers.

On the contrary, the Crocodile International countered by claiming that Lacoste was violating a prior agreement for peaceful coexistence in Asian countries, including India. "Keeping in view the established jurisprudence of trademark law consistently recognized by the courts in India, the striking resemblance in the overall characteristics of the Plaintiffs’ emblem with the Annexure-A device and Plaintiffs’ established prior use in India, it is held that use of Annexure-A device by the Defendants infringes the Plaintiffs’ trademark rights. However, given the failure of Plaintiffs to prove their reputation in India, a case for passing off of the Plaintiffs’ trademarks is not made out," the Court said. 

However, the Court found that while a case for passing off and copyright infringement was not established, Lacoste’s trademark rights had indeed been infringed.

The Court stated that the visual and conceptual similarities between the two marks constituted trademark infringement under Section 29(1) of the Trade Marks Act, 1958, as the similarity was likely to confuse and deceive consumers. “The visual and conceptual parallels between the marks support a strong case for trademark infringement, underscoring the importance of protecting the distinctiveness of the Lacoste trademarks,” the Court noted.

The Court restrained Crocodile International from manufacturing, selling, offering for sale, or advertising any products bearing the disputed trademark. Additionally, the Bench directed the  company to account for the profits earned from the sale of goods bearing the Crocodile mark since August 1998, when Crocodile International launched its products in India.

"In view of the findings of infringement of Plaintiffs’ registered trademarks, the Defendants must account for the profits made from the sale of goods bearing the Annexure-A device impugned in the suit. Accordingly, they shall, within six weeks from today, render their statement(s) of accounts of profits earned from the sale of goods under the Annexure-A device, commencing from August 1998 till the date of cessation of use," the Court ordered. 

Cause Title: Lacoste & Anr. v. Crocodile International Pte Ltd & Anr. [Neutral Citation: 2024: DHC: 6150] 

Appearance:-

Plaintiff: Senior Advocate Chander M. Lall, Nancy Roy, Prakriti Varshney, Prashant, Raghav Malik, Abhinav Bhall

Defendant: Advocates Pravin Anand, Saif Khan, Shobhit Agrawal, Prajjwal Kushwaha

Click here to read/download the Judgment