On August 14, the Delhi High Court passed the final judgment in a 23-year-old trademark dispute between Lacoste and Crocodile International. SpicyIP intern Samridhi Chugh discusses the key issues in the dispute and breaks down the Court’s verdict. Samridhi is a final-year student at the Campus Law Centre, Faculty of Law, University of Delhi, and a graduate in Journalism from Lady Shri Ram College for Women. With a passion for the dynamic intersection of law, media and technology, she is particularly interested in exploring intellectual property and tech policy. Her previous posts can be accessed here.
The Culmination of a Saga: How the Delhi HC Resolved the Two-Decade Long ‘Lacoste v. Crocodile International’ Impasse
By Samridhi Chugh
Marking the end of a protracted copyright and trademark battle, spanning nearly 23 years, the Delhi High Court in a recent landmark ruling permanently injuncted Singapore’s Crocodile International Pte. Ltd. (CIPL) from infringing the French brand Lacoste’s iconic “Crocodile” device.
The detailed verdict, heavily punctuated with takeaways for IP observers and fashion enthusiasts alike, is one of the very few final judgements on trademark law passed this year. The decision throws fresh light on the axioms of transborder presence in tandem with a strong domestic reputation and consumer interest commanded by the parties. What is even more interesting is how the Court appears to have navigated through the infringement claims and defences raised by the two sides, comparing the marks by a comprehensive analysis from a multi-layered perspective. The Court not only delved into an objective examination of the marks from the trademark standpoint, but has also clarified and reasserted the existing legal framework around copyright violations, issues of territoriality and the evidentiary requirements of establishing passing off claims by the contesting parties.
Effectively, the Court has permanently restrained CIPL’s use of the mark through manufacturing, selling, offering for sale or advertising the products on which it was affixed. It has also been directed to provide financial records detailing its profits accrued since August 1998, within six weeks, to the appointed Local Commissioner for the assessment of damages, which was to be completed within four months. While Lacoste too was directed to advance Rs. 3 Lakh for additional expenses, it was ensured compensation for the incurred costs after a review by the Taxing Officer.
A Prolonged Struggle for Device Supremacy
Dating back to the early decades of the 20th century, with the cropping up of the two fashion brands, the dispute primarily revolved around the rights of the parties vested in the impugned mark. This mark consists of a device featuring the crocodile/saurian logo, of which both claimed to be the prior adopters across multiple countries. In India, while Lacoste insisted on use since 1993 with trademark registrations going back a decade earlier, CIPL primarily relied on a ‘Co-Existence Agreement’ (CEA) of 1983 between the two companies, which also formed the moot issue of the instant matter. The CEA, it was argued, allowed both the companies to use their respective crocodile logos in different global regions, including India.
The suit touched upon a range of issues, including, but not limited to, the Court’s territorial jurisdiction and ownership and infringement of the copyright and trademark subsisting in the said logo. On the first few counts, the Court appears to have ruled squarely in favour of Lacoste, emphasising the factual averments in the matter. These included the presence of both the parties in Delhi markets, the prior copyright and trademark registration and long use of the mark by Lacoste, since 2002 and 1927, and 1983 and 1993 respectively, in India.
The Court also rejected the plea of a three-year delay raised by CIPL in the filing of the present suit noting that since Lacoste had taken steps to resolve the issue before pressing the suit, including the service of a prior legal notice, the delay was not unreasonable and the contention could not be allowed to defeat its valid claims.
The Two Crocodile Marks – A Marked Line of Distinction
On the issue of trademark infringement, the Court distinguished between the use of the composite mark comprising a composite crocodile logo (with the word “Crocodile”) and the standalone crocodile logo at issue. Affirming Lacoste’s contentions, the Court observed that CIPL’s prior use of the composite mark since 1947 in India and elsewhere was not disputed. But it held that the use of the impugned standalone device, closely resembling Lacoste’s mark by the company, in the absence of the above word mark, was not authorised by the said CEA between the parties.
Further, the Court observed the two logos to be deceptively similar. While the profile of Lacoste’s crocodile faced right and CIPL’s faced left, this difference was observed by the Court to be minimal and insufficient to prevent confusion among potential consumers. The overall shape, posture and depiction of the two crocodile marks were strikingly similar, indicating a high risk of deception among the target public.
In drawing this inference, the Court applied the principle of “initial interest confusion,” (covered in detail here) which refers to the likelihood that consumers may be initially confused into believing that a product comes from one brand, even if the confusion is cleared up later in the purchasing process. In doing so, it reaffirmed that marks cannot be compared side-by-side to delineate the likelihood of confusion, reiterating the importance of taking into account the overall impression of the mark in the mind of the consumers, based on its holistic set of similarities rather than differences. On these grounds, the Court held that CIPL’s use of the similar logo infringed Lacoste’s trademark rights in India.
Another Nod to the ‘Doctrine of Merger’
With regards to the issue of copyright infringement, the significant ruling duly acknowledged the law established under the much-avowed ‘merger doctrine’ (which we have touched on a number of prior occasions). The doctrine essentially lays the stone for the idea-expression dichotomy, asserting that in cases where ideas and expressions merge indistinguishably, such that the idea forms the very basis of the expression which in itself is restrictive, the expression is not open to receive exclusive copyright protection.
Citing the decision of the US Court of Appeal for the Ninth Circuit in Herbert Rosenthal Jewellery Corporation v. Kalpakian (1971), the principal authority on the concept, the Court observed that since both the impugned logos emerged from a similar underlying concept—that of a “ferocious crocodile” coming with “common features such as a tail, limbs, an open mouth with pointed teeth, scales, and claws”—it left open very limited avenues of distinctive, creative and copyrightable expression. The Court also relied on the decision of Allen v. Academic Games League (1996), in which the Ninth Circuit had held that “ideas contained in a copyrighted work may be freely used so long as the copyrighted expression is not wholly appropriated.” Following this, it was observed that the creator of the artistic work in CIPL’s mark was free to derive inspiration from the general concept of a crocodile.
In light of the established law as well a thorough examination of the contention of a potential trademark-copyright infringement overlap, the Court rejected Lacoste’s plea emphasising that there was a “convergence of the idea and execution in Lacoste’s artistic expression.”
The Complexities of Establishing Reputation, Passing Off and Territoriality of Claims
While the Court ruled affirmatively in favour of Lacoste for trademark infringement, the case for passing off, based on its established reputation, was different. The Court in this scenario, noted that the plaintiffs are bound to discharge the burden of producing a higher standard of proof to demonstrate reputation, especially when the suit reaches its final stage.
The Court noted that Lacoste was unable to conclusively prove its case for “established reputation and goodwill” based on its lack of conformity with the requisites outlined under Section 65B of the Indian Evidence Act, 1872. These include the need to produce a mandatory certificate in support of the adduced electronic evidence, which Lacoste failed to furnish. Thus, while the Court did recognise the case of passing off made out by Lacoste internationally, it was held that the same could not withstand in the Indian territorial bounds.
Along the same lines, the Court also held in favour of Lacoste while examining the applicability of the aforementioned CEA. Noting the global nature of the current dispute, wherein several countries, including Japan in 1971, had already injuncted CIPL, its reliance on the said CEA, which was signed in 1983, per se was defective. The Court observed that the CEA, by itself, was not applicable in India, owing to the absence of any such clause or any further communication pertaining to such inclusion. Emphasising that trademark rights are strictly territorial in nature, the Court actively dismissed the claim that Lacoste violated the CEA and its terms of application by way of the present suit.
A Pyrrhic Victory Marred by the Taint of Delay
While the judgement symbolises the closure of a long-standing dispute at the judicial altar, this systemic victory is certainly overshadowed by the sheer duration of litigation involved in the suit. For a case to drag on for over two decades undermines the very essence of legal protection in IP, which thrives on timely enforcement to preserve brand value and market standing. While the Court has cemented a strong precedential foreground to protect well-known brands in sight of potential cases of infringement, the prolonged nature of the judgement also reveals the deep-seated issues prevailing within India’s dispute resolution process.
In a fast-evolving and globally interconnected commercial landscape, a dilatory process of resolution can erode the efficacy of legal recourse for market players, discouraging them from pursuing judicial remedies. For global brands like Lacoste, the wait might be bearable given their strong financial backing and established market presence. But for smaller entities in India and beyond, the exorbitant time and resources required for such prolonged litigation could render them defenceless against trademark and copyright violations.
This case should be a wake-up call for the judiciary to prioritise swift resolutions, especially in IP matters where the market moves much faster than the courts. Until that happens, the slow pace of adjudication will also continue to threaten India’s stature as an emerging hub for IP protection.