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

In a trademark conflict spanning over twenty years, the Delhi High Court on Monday upheld a single judge bench order barring Hong Kong’s Crocodile International from utilising a crocodile logo found to violate the trademark and copyright of Lacoste, the French luxury brand, Bar and Bench reported.

A division bench comprising Justices Hari Shankar and Om Prakash Shukla ruled that Lacoste effectively proved infringement regarding its protected crocodile emblem and the specific creative copyright of its signature logo design.

However, the court said Lacoste did not meet the requirements for a passing-off claim, noting that the brand failed to provide adequate evidence of the goodwill needed to support that legal argument.

The justices dismissed Crocodile’s defence that Lacoste had tacitly accepted or acquiesced to the use of the disputed mark over time. This legal confrontation between Lacoste and Crocodile dates back more than two decades, representing one chapter in an extensive international trademark rivalry between the two clothing manufacturers over the use of reptile imagery in the fashion industry.

Lacoste initiated legal proceedings in 2001

Lacoste initiated legal proceedings in the Delhi High Court in 2001 to safeguard its trademark and copyright interests within India. The lawsuit aimed to prohibit Crocodile International and its Indian subsidiary from producing, marketing, or promoting clothing and merchandise featuring a crocodile emblem that it claimed was confusingly similar to its own.

As per Lacoste’s arguments, while its signature crocodile faces to the right, the version used by Crocodile International faces to the left, creating a mirrored image of the Lacoste symbol. The brand contended that the strong visual and conceptual resemblance between the two marks would likely mislead the public and weaken the unique identity of its famous trademark.

In response, Crocodile contested the legal action, arguing that the two parties had previously reached a coexistence agreement in various Asian markets, permitting both entities to operate within designated regions. It asserted that this arrangement included India, thereby arguing that Lacoste was legally restricted from pursuing a permanent injunction.

In August 2024, a single judge of the Delhi High Court ruled in favour of Lacoste, issuing a permanent injunction barring Crocodile International from using the contested crocodile logo in India.

Furthermore, the court ordered Crocodile to provide an account of its profits from the sale of any products bearing the infringing mark starting from August 1998 — the period when the firm first entered the Indian market — until the mark’s use was discontinued.

Both parties subsequently appealed different components of that initial verdict, resulting in the current judgment.