The Delhi High Court has recently resolved a 23-year-old dispute between two global fashion giants by restraining the Hong Kong-based company, Crocodile International, from using the Crocodile trademark, ruling that it infringes upon the trademark of the French luxury sports fashion brand, Lacoste.
Justice Sanjeev Narula issued a permanent injunction against Crocodile International, stating that the company’s mark was deceptively similar to Lacoste’s. The Court highlighted that the visual and conceptual similarities between the two trademarks presented a strong case for infringement, emphasizing the need to protect the distinctiveness of Lacoste’s trademarks. Under Section 29(1) of the Trade Marks Act, 1958, such deceptive similarity could confuse and mislead the average consumer, violating Lacoste’s trademark rights.
As a result, the Court prohibited Crocodile International from manufacturing, selling, offering for sale, or advertising any product bearing the disputed trademark. In his ruling, Justice Narula decreed a permanent injunction in favor of Lacoste, preventing the defendants from using any trademark that could infringe upon Lacoste’s registered trademarks.
Additionally, the Court ordered Crocodile International to account for the profits earned from the sale of goods bearing the Crocodile mark, directing the company to provide statements of profits from August 1998, when Crocodile International launched its products in India, until the date it ceases using the trademark.
This ruling stems from a lawsuit Lacoste filed in 2001, part of a broader legal battle between the two companies in various countries. In India, Lacoste sought to protect its copyright and trademark rights, arguing that while its crocodile logo faces right, Crocodile International’s logo faces left, essentially serving as a mirror image of Lacoste’s trademark.
Crocodile International countered by claiming that Lacoste was violating a previously agreed-upon understanding between the companies regarding their peaceful co-existence in Asian countries, which they argued included India.
After reviewing the case, the Court concluded that while Crocodile International did not commit passing off or copyright infringement, it did infringe upon Lacoste’s trademark.
Senior Advocate Chander M. Lall, along with advocates Nancy Roy, Prakriti Varshney, Prashant, Raghav Malik, and Abhinav Bhalla, represented Lacoste. Crocodile International was represented by advocates Pravin Anand, Saif Khan, Shobhit Agrawal, and Prajjwal Kushwaha.
