Delhi High Court Bars Crocodile International from Using Trademark in 23-Year Lacoste Dispute

In a landmark ruling concluding a lengthy intellectual property dispute, the Delhi High Court has resolved a 23-year trademark conflict between Lacoste S.A. and Crocodile International Pte Ltd. The Court issued a permanent injunction prohibiting Crocodile International, a Hong Kong-based company, from using the Crocodile trademark in India, finding it infringed upon Lacoste’s well-known crocodile logo.

The dispute originated in 2001 when Lacoste initiated legal proceedings to protect its intellectual property rights in India. Lacoste had applied to register its crocodile device mark and logo trademark in India in 1983 under Class 25 (apparel) and had been using the mark since October 1993. Conversely, Crocodile International’s founder, Dato Dr. Tan Hian Tsin, had applied to register a similar logo trademark in India in 1952, also under Class 25 for shirts and singlets, later assigning the trademark to Crocodile International in 1983. The defendant launched advertisements and retail showrooms featuring its products in India starting April 1997.

The Court’s examination focused on allegations of trademark and copyright infringement, as well as the doctrine of passing off. A significant aspect of the case was the evaluation of a 1983 international co-existence agreement between the parties, which aimed to facilitate peaceful brand coexistence and cooperation against third-party infringers.

Addressing jurisdictional questions, the Court invoked Section 62(2) of the Copyright Act, 1957, affirming its territorial competence to adjudicate the suit. It noted that Crocodile International had offered apparel bearing the contested logo in retail outlets across India, including Delhi. The Court also recognized that Lacoste’s copyright subsisted globally, including within India.

On the issue of trademark distinctiveness and similarity, the Court analyzed the marks under Section 29(1) of the Trademarks Act, 1958. It found substantial visual and conceptual similarities between the two crocodile logos. Lacoste’s logo features a crocodile facing right, while Crocodile International’s logo depicts a crocodile facing left—a mirror image. The Court accepted Lacoste’s contention that this resemblance was deliberate, intended to capitalize on Lacoste’s established brand goodwill.

Regarding the claim of passing off, the Court observed that when Crocodile International began using its mark in India, Lacoste’s trademark had not yet acquired significant reputation in the country. Therefore, the essential element of reputation required for passing off was lacking. Similarly, the Court dismissed the copyright infringement claim, reasoning that both logos derived from the same abstract concept with limited modes of expression, precluding copyright violation.

A pivotal point of contention was the 1983 co-existence agreement, which the Court scrutinized closely. The agreement’s terms were geographically limited and did not explicitly extend to India. A 1985 letter referencing expanded territorial cooperation lacked mutual consent specific to India. The Court emphasized the territorial nature of trademark rights and agreements, concluding that the co-existence pact did not authorize Crocodile International’s use of the mark in India.

Ultimately, the Court ruled that despite the absence of passing off or copyright infringement, the deceptive similarity of the marks constituted trademark infringement. The conceptual and visual likeness was sufficient to cause consumer confusion and deception, violating Lacoste’s trademark rights.

Consequently, the Court granted a permanent injunction restraining Crocodile International from manufacturing, marketing, selling, or using any goods bearing the infringing trademark in India. It also ordered the defendant to account for profits earned from the sale of such goods from August 1998—the date Crocodile International launched products in India—until cessation of use.