Delhi High Court has recently brought closure to a 23-year legal battle between two global fashion powerhouses in its judgment titled Lacoste & Anr. v. Crocodile International Pte Ltd & Anr. [2024: DHC: 6150]. The case involved Lacoste S.A. (Plaintiff), a French luxury sportswear brand, and Crocodile International Pte Ltd (Defendants), a Hong Kong-based company. The dispute involved the use of a crocodile logo trademark.
The dispute dates back to the early 1980s wherein Lacoste applied to register its crocodile device mark and logo trademark in India for Class 25 products in 1983. In 1993 Lacoste began using its trademark in India. In the year 1952, the founder of Crocodile International brand applied for trademark registration in India which was assigned to it the next year. In 1997, Crocodile International launched products and advertisements in India using the logo which led to the controversy between the parties.
In the instant dispute, the court examined several critical aspects including Trademark infringement, Copyright infringement, passing off, and validity of a 1983 co-existence agreement between the parties.
Regarding the jurisdiction of the court to try the dispute, the court affirmed its jurisdiction based on Section 62(2) of the Copyright Act, 1957, on the ground that Defendant offered apparel displaying the logo trademark mark in retail outlets across India and the Plaintiff owns a valid copyright, subsisting the world over, including India.
To analyse the issues involved in the dispute, the court focused on two main factors: the distinctiveness of Lacoste's logo and the similarity between the two logos and potential for consumer confusion. The court found substantial similarities between the marks, supporting Lacoste's claim of trademark infringement.
As far as the claims of passing off are concerned, while the court acknowledged similarities in the logos, it did not find sufficient grounds for claims of passing off or copyright infringement. The court noted that Lacoste's reputation was not well-established when Crocodile International began using its similar mark. Similarly, the Court did not find merits in the issue of copyright infringement by the Defendant, stating that both logos are derived from a common abstract concept i.e., a crocodile which has limited variations possible.
The court further took note of a 1983 international agreement between the parties which became a significant point of contention. The court's analysis revealed that the agreement had specific geographical limitations and tt did not explicitly include India in its scope. The court further explained the importance of concept of territoriality stating that it is pertinent to consider the principles of trademark law, particularly the concept of territoriality, which plays a decisive role in determining the scope of trademark agreements. Trademark rights are inherently territorial which means they are confined to the jurisdictions in which they are granted and enforced and this principle of territoriality ensures that a trademark registered in one country does not automatically confer rights to the holder in another, unless explicitly stated through international agreements or treaties. Since the 1983 Agreement explicitly listed certain countries which do not include India, it is clear that the parties intended to limit the scope of the Agreement to those territories only. Hence, obligations cannot be presumed to extend beyond the territories for which they were specifically negotiated.
While the court did not find grounds for passing off or copyright infringement, it ruled that the similarity between the logos constituted trademark infringement. As a result, a permanent injunction was issued against Crocodile International, and the company is barred from producing, marketing, or selling goods with the disputed trademark. It was further ruled that Crocodile International must account for profits from sales of goods with the infringing mark since August 1998. This ruling marks a significant victory for Lacoste in protecting its iconic crocodile trademark and underscores the importance of distinctive branding in the global fashion industry.