Rehan Khan
On 16th August, the Delhi High Court, ended a prolonged 23-year old legal battle between two global fashion giants, Lacoste and Hong Kong-based Crocodile International, with a decisive ruling in favor of Lacoste. The court permanently restrained Crocodile International from using the Crocodile trademark in India, finding it deceptively similar to Lacoste’s trademark.
Justice Sanjeev Narula issued the ruling, emphasizing the visual and conceptual similarities between the two marks, which the court found likely to confuse consumers and infringe on Lacoste’s trademark rights. “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,” Justice Narula stated, referencing Section 29(1) of the Trade Marks Act, 1958.
The court ordered a permanent injunction against Crocodile International, prohibiting the company from manufacturing, selling, or advertising any products bearing the disputed trademark in India. Additionally, Crocodile International must account for the profits generated from the sale of goods using the infringing trademark since August 1998, when they launched their products in India. The company has six weeks to provide financial documents for this purpose.
To enforce the court’s order, retired judge Amar Nath has been appointed as a local commissioner. He will review Crocodile International’s financial records to determine the profits earned from the infringing trademark. Lacoste is required to pay an advance fee of Rs 3 lakh to cover the local commissioner’s costs, with the review process expected to conclude within four months.
The case, originally filed by Lacoste in 2001, sought to protect the brand’s crocodile logo, which faces right, as opposed to Crocodile International’s logo, which faces left and is a mirror image of Lacoste’s trademark. Although Crocodile International argued that Lacoste was violating a prior agreement allowing both companies to coexist in the Asian market, the court dismissed these claims, ruling solely in favor of trademark infringement.
This ruling brings to a close a 23-year-old legal dispute, reinforcing the protection of well-known trademarks and setting a precedent for similar cases in India.
Case title: Lacoste and Anr. vs. Crocodile International Pte Ltd & Anr.
Case no.: CS(COMM) 1550/2016
Bench: Justice Sanjeev Narula