In a trademark infringement case between Lacoste and its licensee in India, Sports and Leisure Apparel Ltd. (collectively the Plaintiffs are referred as, “Lacoste”) and Crocodile International Pte Ltd. and its Indian counterpart, Crocodile Products Pvt. Ltd. (collectively the Defendants are referred as, “Crocodile International”), the Delhi High Court ruled in favor of Lacoste on August 14, 2024. The Court granted an injunction against Crocodile International, preventing the use of a deceptively similar crocodile logo in India, and held that Lacoste’s trademark rights had been violated.
Lacoste filed the suit seeking a permanent injunction to restrain Crocodile International from using a logo ( 
) that closely resembled its registered crocodile device ( 
) on apparel. Lacoste, widely known for its crocodile logo, argued that its mark, registered in India since 1983, had garnered significant goodwill and recognition in the Indian market. It was alleged that Crocodile International’s logo created confusion among consumers, amounting to trademark infringement and passing off under the Trade Marks Act, of 1958, and copyright infringement under the Copyright Act, of 1957.
Historically, Lacoste and Crocodile International have operated within their respective territories, i.e., France and Singapore. However, in 1971, when Lacoste attempted to expand its market presence into Asian countries, Crocodile International initiated legal action in Japan against Lacoste. The Japanese Court ruled in favor of Lacoste since it was using the crocodile device along with the word, “LACOSTE”, making it distinctive. Thereafter, in 1980, Lacoste and Crocodile International initiated negotiation talks resulting in the Co-existence Agreement dated 17th June 1983. The Agreement was intended to avoid further legal disputes and foster an amicable resolution regarding the use and registration of the respective crocodile trademarks in Taiwan, Singapore, Indonesia, Malaysia (including, Malaya, Sabah, and Sarawak), and Brunei. Crocodile International claimed that thereafter, Lacoste offered to exchange market presence in Korea for India in 1985. Thus, the parties’ understanding was expanded through a letter dated 22nd August 1985 to include Korea, India, Bangladesh, and Pakistan.
Crocodile International argued that it had been using a crocodile logo in India since 1997, relying on the 1983 Co-existence Agreement and the 1985 Letter that allegedly allowed both parties to use crocodile logos in different territories. However, Lacoste contested the applicability of the said documents in India. It was argued that the Letter was unilaterally issued by Crocodile International without a formal acknowledgment from Lacoste. Thereby it lacked the essential of a bilateral agreement, for extending the terms of the 1983 Agreement. Lacoste further highlighted that its trademarks were registered in India prior to the 1985 Letter, eliminating the need for consent from Crocodile International.
The Court found that the 1983 Agreement and the 1985 Letter did not extend to India and that Crocodile International’s logo was deceptively similar to Lacoste’s prior registered mark. However, it was observed that Lacoste was unable to credibly prove that its trademarks had acquired a substantial reputation in India to prove passing off. Concerning the copyright infringement, the Court applied the merger doctrine and held that the artistic works of both parties were independent creations. Lacoste cannot be accorded monopoly over the general idea of a ferocious crocodile initially intended for use in the territories of origin.
The Court concluded that Crocodile International’s use of the logo was likely to cause confusion among consumers, violating Lacoste’s trademark rights. As a result, the Court granted Lacoste the requested permanent injunction restraining Crocodile International from using the logo “ ” that would amount to trademark infringement. Crocodile International was ordered to render their statement(s) of accounts of profits made from the sale of goods bearing the logo commencing from August 1998 till the date of cessation of use. Additionally, Lacoste was entitled to actual costs recoverable from Crocodile International.
Relevant paragraphs:
37. To conclude, there is clear acknowledgment by the Defendants in their written statement that their use of the saurian device commenced in 1997, with documentary proof of continuous use starting from 1998. Lacoste’s rights in their registered device operate w.e.f. 19th January, 1983. At the time that when Plaintiff No. 1 obtained registrations in India, Defendant No. 1 had not adopted the Annexure-A device. Defendant No. 1 therefore, cannot assert prior adoption of the infringing Annexure-A device as they are the subsequent adopter and user thereof.
38. Nonetheless, Defendant No. 1 has established prior rights to their registered composite mark that includes a saurian device [“
”and “ 
”]. These registrations are clearly delineated to include only the specific composite mark as registered and Crocodile International has failed to show any evidence that would extend these prior rights to the standalone saurian device depicted in Annexure-A, which substantially resembles the device used by the Lacoste.
39. Therefore, issue No. 10 is decided by holding that Defendant No. 1 is not the prior adopter or user of the Annexure-A saurian device. They retain ownership of the trademark rights solely in the context of their registered composite marks, bearing registrations No. 154397 and 540315. Consequently, while they maintain rights to their composite trademark, they do not hold prior rights to the standalone device that closely resembles Plaintiff No. 1’s registered mark. Issue No. 10 is thus resolved in the above terms.
45. Under Section 2(1)(d) of the Trade Marks Act, 1958, a mark is considered to be deceptively similar if it “so nearly resembles that other mark as to be likely to deceive or cause confusion.” This principle of ‘likelihood of confusion,’ as elucidated by judicial precedents, warrants an examination of the contesting marks with a focus on their similarities, rather than their differences. In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.,12 reinforcing the holding in Amritdhara Pharmacy v. Satya Deo Gupta,13 the Supreme Court held that the assessment of deceptive similarity extends beyond a side-by-side comparison, entailing a consideration of the overall impression delivered by the marks and the imperfect recollection of an average consumer. In James Chadwick and Bros. Ltd. v. National Sewing Thread Co. Ltd.,14 the conflicting trademarks were a “representation of a bird perching on a cylinder of cotton sewing thread with its wings fully spread out” alongside the name ‘Eagle brand’ of the Respondent therein and “representation of an eagle with its wings half opened trying to stand erect on some flat object” with the brand name ‘Eagley Sewing Machine Thread’ of the Appellant therein. In these proceedings, arising out of grant of opposition to Respondent’s trademark application, the Division Bench of High Court of Bombay held that in ascertaining the possibility of confusion, courts must evaluate the resemblances in the distinguishing features of the trademark, rather than undertaking a meticulous examination to discover their points of differences. In these circumstances, irrespective of the differences in the posture, poise and positioning of the birds and their wings, the Court ruled in favour of the Appellant therein, finding that a person of ordinary intelligence would mistake the impugned mark to be of the Appellant therein.
46. Having carefully compared the distinctive elements of both the Plaintiffs’ and Defendants’ crocodile logos, it becomes clear that the similarities are not only numerous, but also substantial. Bearing the aforementioned principles of evaluation in mind, the noticeable difference in the orientation of the crocodiles – with Lacoste’s crocodile facing right, and Crocodile International’s facing left – carries minimal weight and is likely to be perceived as insignificant by the average consumer. The dominant visual similarities between the two marks discussed previously, create a strong overall ocular and conceptual resemblance. These elements are so closely mirrored that they overshadow the minute directional difference of the logos. To gain a deeper understanding, a comparison is made below between the reversed version of the Annexure-A device, oriented to face right, with Lacoste’s crocodile device is drawn below:
50. To conclude, in light of the jurisprudence of trademark law, which is well-established by the court rulings referred above, and based on the detailed visual analysis conducted, the Court observes that the visual and conceptual parallels between Lacoste’s crocodile device and Annexure-A device have a strong potential to mislead consumers or cause them to confuse one brand with another. The similarities in shape, silhouette, and key design elements, especially when coupled with their application to identical products, create a significant likelihood of consumer confusion. Given these comprehensive observations, it is evident that the Annexure-A device used by Crocodile International so nearly resembles Lacoste’s mark that it meets the criteria for being deceptively similar under Section 2(1)(d) of the TradeMarks Act, 1958.
66. Contracts must be expressed in precise and unambiguous terms. The entire tenor of the 1983 Agreement and its specific clauses clearly delineate the rights and obligations concerning the use of saurian trademarks by both parties within the defined territories. There is no documentary evidence or contractual provision supporting the inference that Plaintiff No. 1 expressly or impliedly agreed to extend the terms of the 1983 Agreement to encompass the Indian territory, whether under the notions of ‘understanding,’ ‘spirit of goodwill,’ ‘cooperation,’ or any other analogous terms. Given these considerations, the legal status, and implications of the 1983 Agreement must be confined to the explicit terms agreed upon by the parties. The situation in each country, including India, must be adjudicated based on the prevailing law and the specific rights and obligations arising from the parties’ conduct and explicit agreements, rather than any implied extension of purported spirit of the 1983 Agreement. The Court thus finds merit in the contention of Lacoste that the terms of this Agreement cannot be binding on them in the Indian territory.
67. This jurisdictional specificity is particularly relevant when considering the legal framework under which international trademark agreements operate. On this issue, it is also crucial to consider the principles of trademark law, particularly the concept of territoriality, which plays a decisive role in determining the scope of trademark agreements. Trademark rights are inherently territorial; they are confined to the jurisdictions in which they are granted and enforced. This principle of territoriality ensures that a trademark registered in one country does not automatically confer rights to the holder in another, unless explicitly stated through international agreements or treaties. In the context of the 1983 Agreement, the explicit listing of certain countries signifies a clear intention to limit the scope of the Agreement to those territories only. The lack of mention of India or any provisions for its inclusion at a later date reinforces this intention and aligns with the principle that trademark rights and obligations cannot be presumed to extend beyond the territories for which they were specifically negotiated.
128. A passing off action is intended to protect the reputation or goodwill that has overtime come to be associated with a trademark. The doctrine aims to safeguard the public interest by preventing a party from dishonestly conducting their business as another’s. In order to prove that Crocodile International is indulging in passing off by falsely presenting their goods as that of Lacoste, Plaintiffs must conclusively demonstrate that they fulfil the classic trinity test, established in the landmark case of Reckitt and Colman Products Ltd v. Borden Inc., and later adopted and endorsed by the Supreme Court in Laxmikant V. Patel v. Chetanbhat Shah and Anr., and numerous other judgments. The test comprises of three prongs – (a) reputation of the Plaintiff, (b) misrepresentation to the public by the Defendant, and (c) damage to the Plaintiff’s goodwill or reputation caused from the Defendant’s impugned actions.
130. In the realm of trademark law, establishing reputation and goodwill of a mark is paramount for a Plaintiff seeking protection against passing off. At the heart of a passing off claim lies the necessity to demonstrate that the trademark in question had garnered substantial recognition and goodwill in the marketplace on the date of adoption of the impugned mark, to the extent that its unauthorized use by another party could lead to consumer confusion and damage to the Plaintiff’s business. Reputation refers to the recognition and standing that a trademark has acquired amongst the relevant public. It is a measure of the mark’s distinctiveness and the associations that consumers form with the quality and characteristics of the goods or services it represents. Reputation is usually built over time through consistent use, quality assurance, and strategic marketing efforts. Goodwill is the intangible asset that arises from the reputation of a trademark. It encompasses the positive perception and customer loyalty that the mark commands. Goodwill is a reflection of the trust and confidence consumers place in the trademark, translating into repeated business and competitive advantage. The concepts of reputation and goodwill have evolved significantly. In earlier times, reputation was largely confined to physical marketplaces and local trading areas. However, with the advent of mass media, globalization, and digital marketing, the scope of reputation has expanded. Today, a trademark’s reputation can transcend geographical boundaries, garnering recognition in multiple jurisdictions through social media, advertisements, and global trade. We must therefore, remind ourselves that the assessment in this case has to be in the context prevalent over two decades ago.
132.1.2. According to the testimony of PW1, the press articles, advertisements and photographs contained in Ex. PW 1/15 were apparently originally printed in magazines and newspapers, and then scanned and stored as electronic records on a computer resource. Thus, as per PW1’s own admission, this documentary evidence was presented as an electronic copy of the primary evidence (on a CD or as selective printouts on paper). This necessitated the submission of a certificate under Section 65B(4) of the Evidence Act when Ex. PW 1/15 and PW 1/16 were presented as electronic copies. This is because the digital scans stored on a computer are treated as electronic records, and the copies made therefrom are considered to be derived from electronic records. The absence of originals or certified copies of these print articles impinges the evidentiary value of these copies. Without a Section 65B certificate, these documents cannot fulfil the threshold of reliability and authenticity required by law, significantly weakening the Plaintiffs’ case. The Supreme Court of India, in a landmark case titled Arjun Panditrao Khotkar v. Kailash Kushanrao Gorantyal, has elucidated on the mandatory nature of the compliance under Section 65B for producing electronic records in evidence. The Supreme Court has categorically ruled on the significance of the certificate under Section 65B(4). It has been held that for the deeming fiction regarding the admissibility of electronic record to take effect, all the conditions stipulated in Section 65B must be satisfied. A certificate under Section 65B(4) is sine qua non for admissibility of electronic evidence. Further, overruling the decision in K. Ramajyam v. Inspector of Police, the Supreme Court held that oral evidence cannot substitute the mandatory requirement of law entailed in Section 65B(4) of the Evidence Act. An exception was created to this obligation in the cases of production of original document through the original owner of the computer device, who should prove the source and legitimacy of the information. This ruling underscores the necessity of adhering to procedural requirements to ensure that the evidence considered is genuine, reliable, and capable of substantiating the claims made. The statutory requirements contained in Section 65B for presenting electronic records are indispensable. This lack of certification coupled with the absence of original documents, renders Plaintiffs’ evidence contained in Ex PW1/15 and Ex. PW 1/16 and the accompanying printouts to be inadmissible and ineffective in proving their trademark reputation.
132.3.2. In the legal context, a document is considered “self-serving” if it is prepared unilaterally by a party to the litigation and is intended to be in favour of that party without cross-verification or external validation. Without the background documents detailing how the survey was conducted, the data collected, and the methodology employed, the report remains uncorroborated and self-serving. This undermines its evidentiary value under Section 9 of the Evidence Act, which concerns the facts necessary to support a case, and Section 101, which places the burden of proof on the person who asserts a fact. Consequently, the market survey report – unsigned, unauthenticated, and without supporting documents – fails to meet the legal standards set by the Indian Evidence Act for admissibility of evidence. The absence of supporting background documents to substantiate the conclusions drawn in the survey further diminishes its probative value.
155. In assessing the Defendants’ allegation that the suit is fictitious, it is essential to consider the legal standards for such a determination. A suit can be deemed fictitious if it is based on false claims or lacks any genuine legal basis, typically aimed at harassing the other party. In the case at hand, the Plaintiffs have provided ample evidence supporting their legal rights and the infringement by the Defendants. The suit is grounded in well-documented claims of trademark and copyright violations, and there is no indication of malicious intent to harass or unjustly interfere with the Defendants’ business operations. The Plaintiffs’ actions, including the issuance of legal notices and the filing of the suit, are consistent with their legal rights and obligations to protect their intellectual property. These actions are standard practice in the enforcement of rights in trademark and copyright and do not indicate any fictitious or malicious intent.
161. In view of the foregoing discussion, a decree for permanent injunction is issued in favour of the Plaintiffs and against the Defendants, restraining them, or anybody acting on their behalf, from manufacturing, selling, offering for sale, advertising, or in any other manner using the trademark depicted in Annexure-A to the plaint that would amount to infringement of the Plaintiffs’ registered trademarks.
162. In view of the findings of infringement of Plaintiffs’ registered trademarks, the Defendants must account for the profits made from the sale of goods bearing the Annexure-A device impugned in the suit. Accordingly, they shall, within six weeks from today, render their statement(s) of accounts of profits earned from the sale of goods under the Annexure-A device, commencing from August 1998 till the date of cessation of use.
Citation: Lacoste & Anr. vs Crocodile International Pte Ltd. & Anr., High Court of Delhi, 14th August, 2024 [CS (COMM) 1550/2016]. Available on: https://indiankanoon.org/doc/126005689/
Authored by Benita Alphonsa Basil, Trademark Team
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