Lacoste versus Crocodile International: Logo Lawsuit Ends After 23 Years

Every brand has a story that shapes customers' shopping choices, and when we walk into a market flooded with a variety of products, the logo cuts through the noise and helps us recognise the brand amongst the competition, thus making it the story's main lead. Brands often fight for exclusivity, much like the Marvel and DC characters. Let’s take the classic example of the  Black Cat and the Cat Woman. Even though both the characters look almost similar concerning their shared emphasis of feline characteristics further accentuated through black form-fitting outfits, there are subtle differences, for example Catwoman fashions infrared goggles and retractable claws as a part of her persona,  in contrast, Black Cat sports plunging neckline with white furry accents and a collar in her neck. Both the characters are feline female thieves who share a flirtatious dynamic with the hero. 

This concept also extends to brands trying to distinguish themselves from their competitors.

The concept of branding is rooted in the need to establish a unique identity that sets a product apart from the rest. In a market with similar offerings, branding ensures the product isn’t camouflaged among the competition while highlighting its unique properties. It has also been ruled out in the branding statistics that 77% of consumers purchase items based on their brand name. That's why brands heavily invest in crafting a distinct presence with a powerful logo, leaving a lasting impression.

“In a competitive, crowded world market, it's the well-positioned brands that stand out!” 

-Bernard Kelvin Clive

A brand’s biggest fear is finding a doppelganger, which is likely to cause confusion among the public, diluting its market presence or worse, the impression that there is an association between the two.

Lacoste, the french designer sports brand and Crocodile International, a Singapore-based clothing company, are no strangers to trademark battles, as the two brands have often clashed on their “crocodile or saurian” emblems in various jurisdictions. 

 The legal dispute between the two brands in India spanned 23 years before finally reaching a conclusion on 14.08.2024. 

Lacoste’s Legacy:

The Birth of the Crocodile Emblem

The French designer sportswear brand “Lacoste” was founded in 1933 by renowned tennis player Mr. Jean René Lacoste, famously dubbed “Le Crocodile”. The brand was co-founded by Lacoste and Louis Emile André Gillier in 1931, focusing on the manufacturing of knitted skirts tailored for tennis and other sports players as well as shorts, which were referred to as Chemise Lacoste and featured a crocodile symbol on the front. The symbol was famously crafted by Mr. Robert George in 1927 and duly registered by the French brand in France in 1933. 

The emblem now is the most distinguishing feature of the brand, and is duly recognised by its consumers. In India, the french brand registered its emblem as a trademark vide trademark application dated 1983 but also maintains the copyright in its artwork. 

Crocodile International’s Global Expansion & Identity

Crocodile International Pte Ltd., on the other hand is a Singaporean company which was founded in British Singapore in the year 1947 starting out selling singlets and gradually growing into a international lifestyle brand. The founder Dato’ Dr Tan Hian Tsin, wanted to label the brand after a “tough” and “exotic” animal with an enduring lifespan and exotic skin, imbibing the brand values of aesthetic and durability and hence used “crocodile” as a marketing tool for the brand. The brand quickly expanded in South East Asian countries such as Malaysia, Brunei, Indonesia and Thailand, before finally making its entry into the Indian markets in 1996 in collaboration with S.P. Apparels Ltd.

The brands came at loggerheads when Singaporean company filed an application for the registration of its crocodile logo in 2001. 

Lacoste claimed that when placed side by side, they appeared as mirror images of each other, as one faced the right side while the other faced the left, thereby unaccompanied by their respective brand names “Lacoste” and “Crocodile” respectively would cause confusion and even association between the two brands when perceived by an average consumer. The French brand aimed to thereby restrain the Singaporean company from using the crocodile logo in India citing an infringement of its trademark as well as copyright imbibed in its brand. 

The only distinction that could be noted with respect to the crocodile marks lies in the  tail, while one of the brand features a crocodile, its tail arched, the other has an elongated tail.  Additionally, the scale patterns differ, with one being well-defined and evenly spaced, while the other appears denser with finer details. Variations also exist in their body structures, shapes, eye design, and facial features, contributing to subtle yet notable differences between the two marks.

The 23-Year Global Legal Saga:

How the Delhi High Court Ruled on the Trademark War

It is imperative to note that both brands have concurrently registered their respective marks in 25 countries, and the conflict thereby spans multiple jurisdictions, each contributing a fresh perspective. Crocodile International first initiated the lawsuit in  Japan, suing Lacoste for trademark infringement of its brand logo.

However, the District Court of Osaka ruled in favour of Lacoste. The Osaka Court was of the opinion that the crocodile emblem was accompanied by the brand name “Lacoste”, which had no conceptual link with crocodile and was distinct and distinguishable enough not to cause any confusion. 

Crocodile International attempted to block Lacoste’s use of the mark by issuing a cease-and-desist notice to its licensee, Royal Sporting House in Singapore. Both parties then initiated a financial settlement allowing the brands to co-exist with each other through the Agreement dated 17.06.1983.  

Coexistence Agreements and Their Territorial Clarity

The purpose of the 1983 Agreement was to allow the brands to avoid legal disputes and to foster an amicable resolution regarding future registrations and use of the respective crocodile marks by both brands. Later, vide a letter in 1985, as per mutual understanding, the scope of this co-existence Agreement was expanded to include South Asian countries, including India, and the parties deemed the 1985 letter to be a legally enforceable contract. 

Crocodile International relied on the the above mentioned procedural history to establish its rights over the mark in question. Furthermore, the Singapore based company also relied on precedents in Myanmar (Court of Yangon) and Sri Lanka (High Court of Western Province Holden, Colombo) wherein both the court’s respectively held that the marks were distinct enough and there was no likelihood of confusion if both were allowed to co-exist in the same market. The Sri-Lankan court in fact went further to note that even without the accompanying words “Lacoste” and “Crocodile” no confusion would be caused. 

Another very pertinent fact that must be noted is that the legal dispute pertains to only a singular logo introduced by Crocodile International, which can be deemed to be a variation of its earlier crocodile marks, and had been included in the 1983 agreement in Annexure A.  As a result Crocodile International submitted that it was precluded from any legal action for the use of the same in India, as per the terms of the Agreement. On the Contrary, Lacoste pleaded that the Agreement was not relevant in India, as its terms were geographically specific and did not include India. 

In the present proceedings the High Court of Delhi was of the opinion that Agreements are meant to be specific and free from ambiguous interpretations.  It held that since  the terms of the Agreement of 1983 did not mention India specifically, the terms of the same would not be applicable in the territory of India. The High Court of Delhi also took into consideration the arbitral award of 2011 Singapore which discussed the applicability of the 1983 Agreement beyond the specified jurisdictions. The arbitral award once again held with Lacoste’s interpretation of the geographical limitation upon the co-existence and cooperation between the two brands and held that the terms of the 1983 Agreement would not be applicable in jurisdictions not specified in the Agreement. 

The court of Delhi also denied the judgment of the Supreme Court of China in 2010 with respect to the 1983 Agreement. According to the Supreme Court of China, despite the non-inclusion of China as a specified territory in the 1983 Agreement, the intention of the parties to co-exist could not be denied. It also noted that there was a limitation on Lacoste’s Commercial reach in the country and thereby held that there could be no confusion if the two brands were allowed to concurrently operate in the market. Moreover, in 2023 Beijing Higher People's Court also denied the interpretation of the Supreme Court of China in 2010. 

Another very important aspect of this case was the 1985 letter, which, as per the claims of Crocodile International, is an extension of the 1983 Agreement, but Lacoste, on the other hand, refuses to acknowledge the same as a valid contract. Delhi High Court also noted that the 1985 letter was not a company by a proper no-objection by Lacoste and thereby could not be held as an extension of the initial Agreement. Furthermore, the behaviour of Lacoste in no manner indicated that it had agreed to the contents of the communication or in any manner given its consent to the use of the impugned mark in India. 

But was there an actual infringement?

Trademark Infringement vs Passing Off:

A Legal Fine Line

The DHC relied on the classic trinity test to ascertain if there has indeed been an act of passing off in the instant case. The trinity test functions under three prongs (a) the reputation of the plaintiff, (b) misrepresentation to the public by the defendant and (c) damage to the plaintiff’s reputation or goodwill caused by the actions of the defendant. The Court also submitted, however, that in an action against passing off, the plaintiff must first establish significant goodwill and reputation in the market. 

Lacoste's mark on the left and Crocodile International mark on the right (impugned mark)

Interestingly, the court observed that the evidence submitted by Lacoste was not enough to establish its exclusive reputation and goodwill in the crocodile mark in the Indian market. The court also noted that the evidence relied on by the French brand was “self-serving” or unilateral in nature and was not accompanied by a proper certification under Section 65 B of the Evidence Act, for digital evidence and thereby the Court cannot admit the same to hold good in the present proceedings. 

As a result, the Delhi High Court held that Lacoste, having failed to establish its reputation and goodwill, which is a factor necessary for the claim of passing off, was not eligible to institute a suit of passing off against Crocodile International, despite the opinion that as per trademark jurisprudence in India, there had been indeed been a trademark infringement of Lacoste’s mark. 

Merger Doctrine and Copyright Boundaries

Concerning the claims of copyright violation, the High Court noted that the underlying concept of both conflicting works is identical - “both are graphical representations of a ferocious crocodile in an aggressive stance.” The court further noted that the graphical portrayal of a “fierce” crocodile would invariably include common features such as tail, limbs, an open mouth with pointed teeth, scales and claws and has limited ways of expression, hence diminishing the manner in which the author’s creativity can be illustrated. 

Both brands had before the High Court submitted their respective narratives behind the adoption of the artwork of a crocodile, initially intended for commercial use in the territories of origin. The Hon’ble Court relied on the case of Allen v. Academic Games League of Am., [89 F. 3D 614 (9th Cir. 1996) wherein it was held that “ideas contained in a copyrighted work may be freely used so long as the copyrighted expression is not wholly appropriated.” 

The High Court observed that the impugned work exhibited novel independent artistic qualities which were contrary to Lacoste’s allegations of imitation and the creator was at liberty to draw from he general idea of a crocodile. Accordingly, given the convergence of the idea and execution in Lacoste’s artistic expression, and via the application of the merger doctrine (the doctrine of merger is a significant principle in copyright law that addresses the intersection of ideas and their expressions. It establishes that when an idea and its expression are so closely intertwined that they cannot be separated, the expression is not eligible for copyright protection), the Court held that there was no copyright infringement by Crocodile International. 

Final Verdict:

A Win, But Not a Clean Sweep

Nonetheless, the Hon’ble Court issued a permanent injunction for the impugned mark which would amount to infringement of Lacoste’s registered trademarks. The court also directed Crocodile International to account for the profits made from the sale of goods bearing the impugned mark and render their statement(s) of accounts of profits earned from the sale of goods under the device commencing from August 1998 till the date of cessation of use. 

This case sets an interesting precedent because even though the Delhi High Court rejected Lacoste’s claims of passing off and copyright infringement, it ultimately recognised a clear case of trademark infringement concerning the specific crocodile logo cited in Annexure A. The Court emphasised that despite similarities in theme and concept, only a registered mark enjoys the shield of statutory protection when the essential elements of visual identity are unlawfully mimicked. Therefore, even in the absence of sufficient goodwill to support a passing off claim, and notwithstanding the merger doctrine negating copyright protection, the court found that the Singapore-based Crocodile International’s use of the impugned mark encroached upon Lacoste’s trademark rights in India. Consequently, a permanent injunction was granted, restraining the use of the infringing mark and directing the disclosure of profits accrued from its use—a firm reiteration that, in the realm of brand identity, a registered trademark remains the most robust defence.