In a landmark decision that concluded a protracted legal saga, the Delhi High Court (“Court”) has recently resolved a 23-year dispute between two global fashion titans – Lacoste S.A. (“Plaintiff”) and Crocodile International Pte Ltd (“Defendant”). The Court issued a permanent injunction against the Hong Kong-based Crocodile International, prohibiting the use of the Crocodile trademark, which was found to infringe upon the iconic trademark of the French luxury sportswear brand, Lacoste.
The legal battle dates back to 2001, when the Plaintiff initiated the suit to defend its intellectual property rights. The Plaintiff made an application to register the crocodile device mark as well as the logo trademark in India in 1983 in class 25 and has been using it since October 1993. The founder of the Defendant company, Dato Dr. Tan Hian Tsin made an application to register their logo trademark in India in 1952 in class 25 (shirts and singlets) and subsequently assigned the trademark to the Defendant in 1983. Advertisements and showrooms featuring their products were launched in April 1997.
Issues and Consideration
The primary legal issues in this case included the assessment of trademark and copyright infringement and the doctrine of passing off. The Court further considered the merits and validity of a co-existence agreement entered into by both the parties in 1983. The Plaintiff intended to protect its copyright and trademark over the crocodile device and has engaged in several legal battles over their logo in multiple jurisdictions.
Jurisdiction
The Court first considered the question of jurisdiction, and referred to Section 62(2) of the Copyright Act, 1957, to conclude that the Court has territorial competence to decide the suit, and noted that the Defendant offered apparel displaying the logo trademark mark in retail outlets across India, including in Delhi. Subsequently, the Court held that the Plaintiff owns a valid copyright, subsisting the world over, including India.
Trademark infringement
The Court endeavored to determine whether the Plaintiff’s logo was sufficiently distinctive and whether the Defendant’s logo was similar enough to cause consumer confusion under Section 29(1) of the Trademarks Act, 1958. The Court also considered whether the defendant’s use of the logo amounted to passing off and copyright infringement. After examining both the marks being used by the companies, the Court noted that there were substantial similarities between the two, and the Defendant’s device mark was deceptively similar to the Plaintiff’s mark. The visual and conceptual parallels between the marks supported a strong case for trademark infringement, and therefore violated the Plaintiff’s trademark rights.
Passing off and copyright infringement
The Plaintiff argued that the Defendant’s logo is almost identical to its own – the Defendant’s logo showed a crocodile facing the left, while the Plaintiff’s logo showed the crocodile facing right, and hence the Defendant’s logo was a mirror copy of the Plaintiff’s original design. The Plaintiff said that the resemblance was intentional and not just a coincidence, that it was an attempt to capitalise on a well-known brand.
While evaluating the claim of passing off, the Court noted that when the Defendant began using the similar mark, the Plaintiff’s trademark had not acquired a substantial reputation, and therefore such a claim would not fulfill one of the base elements in any passing off claim – of a convincing proof of reputation. Similarly, the Court did not find a case for copyright infringement by the Defendant, given that both the device marks flowed from the same abstract, which had limited means of manifestation and would therefore not amount to infringement.
The co-existence agreement
A key bone of contention between the parties was a 1983 international co-existence agreement, which sought to extend cooperation against third party infringers to ensure peaceful co-existence of both brands. The Court analysed the co-existence agreement and noted that the terms of the agreement were geographically specific and did not extend to India. Referring to a letter from 1985, which was intended to promote co-existence in additional territories, the Court pointed out that it did not have any specific references or mutual consent to be applicable to India. Additionally, the Court noted that it is crucial to consider the principles of trademark law, particularly the concept of territoriality, since it plays a decisive role in determining the scope of trademark agreements, and that trademark rights are inherently territorial. With respect to the co-existence agreement, the explicit listing of countries signified a clear intention to limit the scope of the agreement to listed countries.
Conclusion
The Court carefully examined the arguments and the evidence put out by both sides and included the logos’ phonological and visual similarities in its ruling. The Court determined that even though there was not enough evidence to support a passing off or copyright infringement case against the defendant, the similarity of the logos was enough to establish trademark infringement. The Court determined that the Plaintiff’s trademark rights would be violated because the marks’ conceptual and visual similarities might lead to consumer confusion and deception. The Court, therefore, issued a permanent injunction, barring the Defendant from producing, marketing, selling, or utilising any goods carrying the contested trademark. Additionally, the Court also directed the Defendant to account for profits made from the sale of goods bearing the infringing mark, beginning August 1998, when the Defendant had launched its products in India, until the date of cessation of use.
