Delhi High Court upholds order in favour of Lacoste in 2-decade-old trademark dispute with Crocodile

In a trademark dispute going back more than two decades, the Delhi High Court on Monday upheld a single-judge bench decision restraining Hong Kong’s Crocodile International from using a crocodile logo that was found to infringe its trademark and copyright. LacosteFrench luxury brand, Bar and Bench reported.

A division bench comprising justices Hari Shankar and Om Prakash Shukla held that Lacoste’s protected crocodile emblem and signature logo design effectively proved infringement of exclusive creative copyright.

However, the court found that Lacoste did not meet the requirements of the passing-off claim and that the brand failed to provide sufficient evidence of good faith to support this legal claim.

Judges were dismissed Crocodile’s defense that Lacoste has, over time, tacitly accepted or consented to the use of the disputed mark. This legal dispute between Lacoste and Crocodile dates back more than two decades and represents part of an extensive international trademark rivalry between the two clothing manufacturers over the use of reptile imagery in the fashion industry.

Lacoste took legal action in 2001

Lacoste initiated legal proceedings in the Delhi High Court in 2001 to protect its trademark and copyright interests in India. The lawsuit sought to ban Crocodile International and its Indian subsidiary from manufacturing, marketing or promoting clothing and products containing the crocodile emblem, which it claimed were confusingly similar to its own.

According to Lacoste’s arguments, the signature crocodile is facing right, while the version used by Crocodile International is facing left, creating a mirrored image of the Lacoste symbol. The brand argued that the strong visual and conceptual similarity between the two brands would likely mislead the public and undermine the unique identity of its famous brand.

In response, Crocodile challenged the legal action, arguing that the two parties had previously reached an agreement to co-exist in various Asian markets, allowing both organizations to operate in designated regions. He argued that Lacoste was legally restricted from obtaining a permanent injunction, arguing that this regulation also covered India.

Single judge in August 2024 The Delhi High Court ruled in favor of Lacoste, issuing a permanent injunction banning Crocodile International from using its controversial crocodile logo in India.

Additionally, the court ordered Crocodile to submit an account of its profits from the sale of any product bearing the infringing mark, starting from August 1998 (the period when the firm first entered the Indian market) until the date on which use of the mark was discontinued.

Both parties subsequently objected to different components of the initial decision, resulting in the current decision.