The Delhi High Court has put an end to the 23-year-long trademark infringement dispute between Hong Kong-based Crocodile International and French luxury sports fashion company- Lacoste by restraining the former from using the Crocodile trademark.
Ruling that Crocodile International’s trademark was deceptively similar to that of Lacoste, Justice Sanjeev Narula also issued a permanent injunction against Crocodile International from using the ‘Crocodile’ trademark.
“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 confuse and deceive the average consumer and thus violates the Plaintiffs’ trademark rights,” the Court observed.
Furthermore, the Court also noted, “In view of the foregoing discussion, a decree for a 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.”
This ruling comes in the aftermath of the lawsuit filed by Lacoste in 2001, marking a 23-year-long case of an extended legal battle taking place between two companies across multiple countries.
In its lawsuit, Lacoste had argued that while its ‘crocodile’ logo faces ‘right’, Crocodile International’s logo faces ‘left’ as it is merely a mirror image of the former’s trademark.
At the time, Crocodile International had contended that Lacoste was violating a previously agreed-upon understanding of peaceful coexistence of the two companies in Asian countries, including India. However, upon reviewing the case, the Court determined that while there was no case of passing off or copyright infringement, Crocodile International had indeed infringed on Lacoste’s trademark.
As a result, Crocodile International has now been prohibited from manufacturing, selling or advertising any products bearing the disputed trademark.
Additionally, the court has also directed the company to account for the income earned from promoting items bearing the Crocodile mark and provide statements of accounts detailing these profits from August 1998 (when Crocodile International began selling in India) until they ceased to use the mark, within six weeks.
Lacoste, on the other hand, has been instructed to pay an advance fee of Rs 3 lakh to cover the local commissioner’s expenses, along with any additional costs that may arise during the review process.
