The Delhi High Court has ended a 23 year trade mark dispute between Lacoste and Hong Kong brand Crocodile International this week. Justice Sanjeev Narula stated that Crocodile International’s logo was ‘deceptively similar’ to Lacoste’s registered trade mark for their signature crocodile symbol. Subsequently, Crocodile International will now have to rebrand in India. This could lead to an international rebrand for the company if they fear Lacoste will challenge their logo on an international scale, imposing a substantial cost burden.
Lacoste first brought an action for copyright, passing off and trade mark infringement against Crocodile International in 2001, after they refused to stop using the logo which Lacoste claimed to be an exact mirror of the mark registered in India by Lacoste since 1993. The case faced a number of obstacles which resulted in the final judgment being handed down 23 years after the case was first instituted on 14 August 2024.
Upon final review of the case, Justice Sanjeev Narula decided that the claims for copyright and passing off could not be met. However, Crocodile International had clearly infringed Lacoste’s trade mark. On this basis, Lacoste were awarded a permanent injunction, restraining Crocodile International from selling, manufacturing, offering for sale, or advertising their infringing logo in India. Additionally, Lacoste were awarded an account of profits, the amount of which will be finalised in an upcoming judgment.
Crocodile international tried to argue that Lacoste could not bring a claim for infringement based on an agreement between the two parties signed in 1983, in which they agreed to resolve existing disputes and legal actions, which would reduce the potential for future conflicts in the use of their respective trade marks in different markets. However, Justice Sanjeev Narula found that this agreement was not valid in India. Therefore, they could not use it as a defence to Lacoste’s claims of infringement.
Although the agreement is valid in other jurisdictions, Lacoste may try to invalidate it in order to bring more claims for infringement on a global scale given the similarities in the two logos.
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