Lacoste & Anr. v. Crocodile International Pte Ltd & Anr., CS(COMM)
1550/2016, Judgment dt. August 14, 2024
The Delhi High Court has, in a suit for injunction filed by Lacoste & Anr.
(“Plaintiffs”), restrained Crocodile International Pte Ltd. & Anr. (“Defendants”)
from using its Crocodile Device mark owing to its deceptive similarity
to the Plaintiffs’ registered Crocodile Device mark. The Plaintiffs
contended that they are the prior registrants and users of the Crocodile Device
mark in India. The Plaintiffs and Defendants had signed a co-existence
agreement in the year 1983, as per which, the Defendants had specifically
agreed to not use the standalone Crocodile Device mark, and instead always use
it with the word CROCODILE. Accordingly, the Defendants’ use of the
deceptively similar Crocodile Device mark, amounts to trade mark and
copyright infringement and passing off of the Plaintiff’s rights.
The Defendants, on the other hand, countered the Plaintiff’s contention by
placing reliance on the 1983 co-existence agreement and a 1985 letter addressed
by the Plaintiff to co-exist, which allowed the Defendants to use their Crocodile
Device mark in countries, including Korea, India, Bangladesh and Pakistan. The
Defendants also contended that the suit suffers from delay and laches by at least
3 years.
The court, after hearing to extensive arguments, ruled in favour of the Plaintiff,
stating that the Defendants failed to produce any evidence of the co-existence
agreement enabling use of the standalone Crocodile Device mark by the
Defendants in India. The court also held that the Plaintiff has made out a case
for trademark infringement, however, did not find a case of copyright
infringement since the court was of the opinion that it is originality in the
depiction and not the novelty of concept, that is safeguarded by copyright law.
Addressing the issue of delay, the court said that the alleged delay of 3 years is
not considered excessive, especially in the context of trademark and copyright
disputes which often involve complex considerations and necessitate thorough
investigations before litigation. The court further appointed a local
commissioner to visit the Defendants’ premises to determine their profits, and
thereafter calculate the damages to be awarded to the Plaintiff, in addition to
awarding actual costs.
Comments