Delhi High Court restrains Crocodile International from using logo similar to Lacoste

The Delhi High Court recently put an end to a 23-year-old dispute between two global fashion giants as it restrained Hong Kong-based Crocodile International from using the Crocodile trademark because it infringed on the trademark of French luxury sports fashion company Lacoste [Lacoste & Anr v Crocodile International Pte Ltd & Anr]..Justice Sanjeev Narula passed a decree of permanent injunction against Crocodile International with the observations that its mark was deceptively similar to Lacoste’s.“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. Under Section 29(1) of the Trade Marks Act, 1958, this degree of deceptive similarity can cause confusion and deceive the average consumer and thus violates the Plaintiffs’ trademark rights,” the Court ruled.Hence, it restrained Crocodile International from manufacturing, selling, offering for sale, advertising any product with the disputed trademark. “In view of the foregoing discussion, a decree for permanent injunction is issued in favour of the Plaintiffs and against the Defendants, restraining them, or anybody acting on their behalf, from manufacturing, selling, offering for sale, advertising, or in any other manner using the trademark depicted in Annexure-A to the plaint that would amount to infringement of the Plaintiffs’ registered trademarks.”.The Court also held that Crocodile International must account for the profits made from the sale of goods bearing the Crocodile mark and, therefore, directed the company to render statements of accounts of profits made from the sale of such goods starting from August 1998 (when Crocodile International launched their products in India) till the date of cessation of use..The Court’s ruling came on a suit instituted by Lacoste in 2001. The two companies have been locked in a tense legal battle in many countries. In India, Lacoste instituted the suit to protect their copyright and trademark rights in the crocodile device. They sought to restrain Crocodile International and its Indian counterpart Crocodile Products Private Limited from utilising a similar trademark.Lacoste argued that while their crocodile is facing right, Crocodile International’s crocodile faces left and is just a mirror image of their trademark.Crocodile International argued that Lacoste is breaching a previously agreed-upon understanding between the two companies regarding peaceful co-existence in the Asian countries which extends to Indian territory as well..After considering the case, the Court said that the case of passing off and copyright infringement is not made out against Crocodile International but they have infringed Lacoste’s trademark..Senior Advocate Chander M Lall and advocates Nancy Roy, Prakriti Varshney, Prashant, Raghav Malik, and Abhinav Bhalla appeared for Lacoste.Crocodile International was represented through advocates Pravin Anand, Saif Khan, Shobhit Agrawal and Prajjwal Kushwaha..[Read Judgment]