Prior Registration vs. Risk of Consumer Confusion:

What Prevails in Trademark Law (Lacoste & anr. Vs. Crocodile international pte ltd & anr., Delhi HC 2024)

The case concerned a trademark dispute between Lacoste S.A., a French luxury sportswear brand, and Crocodile International Pte Ltd, a Hong Kong-based company. The core issue revolved around the use of a crocodile logo as a trademark.

Facts of the Case

• In 1983, Lacoste applied for registration of its crocodile device mark in India under Class 25 (clothing and related products).
• By 1993, Lacoste had commenced use of its trademark in the Indian market.
• Crocodile International traced its roots to 1947, when its crocodile device was first devised. The brand’s founder sought registration of the crocodile trademark in India in 1952, which was granted in 1953.
• In 1997, Crocodile International introduced products and advertisements in India using its crocodile logo, which led to disputes with Lacoste.

Issues Raised

• Whether Lacoste’s crocodile logo was distinctive and had acquired reputation and goodwill in India.
• Whether the similarity between the two crocodile logos created a likelihood of consumer confusion.

Contentions

Lacoste’s Position:

• Claimed originality of its crocodile device, first published in 1927, and consistent global use since then.
• Asserted that it held both copyright registration and valid trademark rights in India.
• Emphasized that the similarity between the logos risked misleading consumers into believing the two brands were connected.

Crocodile International’s Defense:

• Argued that its crocodile device, created in 1947, had been in continuous use.
• Relied on its earlier Indian trademark registrations (1952–53) as evidence of prior rights.
• Contended that its use of the crocodile logo was legitimate and not an imitation of Lacoste.

Judgement

The Delhi High Court upheld Lacoste’s claim, recognizing its substantial goodwill and reputation in India linked to the crocodile logo. The Court observed that the similarity between the two logos could likely mislead consumers regarding the source of goods. Accordingly, it issued a permanent injunction restraining Crocodile International from using a deceptively similar crocodile logo.

Implication

This ruling is a significant victory for Lacoste, reinforcing the protection of well-known trademarks in India. It highlights that prior registration alone does not override the need to prevent consumer confusion, particularly when a mark has acquired global distinctiveness and recognition.

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