NO TWO CROCODILES IN ONE RIVER: DELHI HIGH COURT UPHOLDS LACOSTE’S TRADE MARK RIGHTS IN ITS LOGO

INTRODUCTION:

In the case of Lacoste v. Crocodile International Pte Ltd.[1] that ran its course for 23 long years, between two fashion conglomerates, i.e., Lacoste and Crocodile International Pte Ltd., the Delhi High Court ruled in favor of Lacoste by granting a permanent injunction against Crocodile International therein restraining the Defendants from using a deceptively similar symbol to Lacoste’s widely popular ‘Crocodile’ logo.

BRIEF FACTS OF THE CASE:

The Plaintiff i.e., Lacoste filed a suit for permanent injunction against the Defendants i.e., Crocodile International to protect their trademark and copyright rights prevailing in the use of the following said mark in the Indian jurisdiction:

The Plaintiff contended that the said mark has been registered since 1983 and has been in use since 1993 in the Indian market by the Plaintiff extensively and exclusively.

On the other hand, the Defendant, a fashion company originating in Singapore i.e., Crocodile International used the following mark:

Following the entry of the Defendant in the Indian market in the year 1999, the Plaintiff instituted the present suit alleging the use of the disputed mark by the Defendant in a fashion and style identical to the Plaintiff’s use of the disputed logo, not bearing the defendant’s brand name i.e., ‘Crocodile’. Further, the Plaintiff alleged the misrepresentation by the Defendant on the basis of the use of the Registered symbol i.e., ‘®’ beside its mark without having a factual and independent registration to the same effect.

The Defendant contented the use of the disputed trademark in furtherance of an agreement of mutual understanding and cooperation entered between the two parties pertaining to the use and peaceful co-existence of the two marks in the Asian market. The Defendant further sought the acknowledgment of the said agreement in the Indian market as well.

ISSUES FRAMED:

The present suit dealt with the determination of key legal questions in order to analyze and ascertain the rightful owner of the disputed logo and the rights that shall stem from it. The primary legal considerations revolved around the proprietorship under the Copyright and Trade mark laws, whether the Plaintiff/defendant shall have common law rights due to prior adoption and/use of the disputed logo, whether the suit shall have an impact under laches and acquiescence, does the suit suffers from the limitation by virtue of territorial jurisdiction etc, and lastly, whether the co-existence agreement signed and entered into by the Plaintiff and the defendant extends to the Indian jurisdiction as well.

COURT’S FINDINGS:

1.WHO OWNS THE COPYRIGHT IN THE ‘CROCODILE DEVICE’ AND IS THE REGISTRATION OF THE MARK AND USE OF THE MARK IN INDIA, SUFFICIENT TO ESTABLISH THE PLAINTIFF’S PROPRIETORSHIP OF THE ‘CROCODILE’ (DEVICE)?

The Court, while observing that to assess the eligibility for protection under Copyright law, held that the primary consideration shall be the actual and real expression of the artistic creation in a tangible form, which shall further facilitate reproduction.

The Court further dwelled and drew inspiration from the ‘Merger Doctrine’ wherein the idea and expression are intrinsically intertwined so much so that they are inseparable, a creator cannot be given a monopoly over the idea which forms the basis for the said expression[2]. In the instant matter, both the devices drew inspiration from the reptile, and thus the copyright stemmed from the unique and inventive expression of the same. Relying on the extensive evidence produced by the Plaintiff, which included the documentary evidence concerning copyright registration as well as the uncontested testimony of the Plaintiff’s witness, the Court upheld the copyright vested in the ‘crocodile’ (device) of the Plaintiff.

The Court while determining the proprietorship of the Plaintiff in the contested mark, observed that the ownership in a mark is determined on the basis of the registration of the same in the Indian jurisdiction as well as the use of the said mark in commerce. The Court, while relying upon the Plaintiff’s documentary evidence corroborating its valid and subsisting Indian registrations as well as the foreign registrations of the contested mark, upheld the trade mark proprietorship of the Plaintiff in the contested mark.

It is pertinent to note that the Court while determining the present case, which involved questions pertaining to copyright as well as trade mark rights vested in the contested mark, scrupulously examined the question involving copyright violation without overstepping the bounds of Trade mark law.

2.WHO IS THE PRIOR ADOPTER AND USER OF THE ‘CROCODILE’ DEVICE?

The Defendant contended honest and concurrent use as well as prior adoption of its umbrella marks pertaining to ‘CROCODILE’ (Device) since 1997. The same was further substantiated by relevant evidentiary documents. However, the Court while taking note of the same, held that prior adoption and continuous use does not automatically confer rights on all the variants that form part of the Defendant’s ‘CROCODILE’ (device) family.

The Court observed that the Defendant failed to provide cogent documentary evidence establishing the adoption and use of the device mark independently sans the verbal element, whereas, the Plaintiff established the same vide sufficient evidence. Thus, the Defendant’s plea of prior adoption and honest and concurrent use was rejected by the Court.

3.DOES THE CO-EXISTENCE AGREEMENT EXTEND TO THE INDIAN JURISDICTION?

The primary defense put forth by the Defendant centered around the peaceful co-existence and mutual cooperation agreement in the Asian market entered between the two parties. The Defendant contended that the territorial jurisdiction of the said agreement shall extend to the Indian jurisdiction as well, since the primary intention of the agreement was to ensure a mutual cooperation maintained and acknowledged globally.

The Court, while interpreting the contractual provisions, held that the intention of the parties cannot be interpreted as one allowing global co-operation and mutual existence, considering the limited and restricted scope of the agreement wherein the nations where the contested mark shall co-exist are stated in an exhaustive fashion.

The Court, while rejecting the said contention, held that it is pertinent to establish the contractual terms governing a said agreement precisely. Moreover, observing the territoriality principle governing the trademark laws, the Court reinstated that a trade mark registration obtained in one jurisdiction cannot ‘by default’ confer statutory rights on the mark in a foreign jurisdiction.

4. DECEPTIVE SIMILARITY

The Court, while determining the question of deceptive similarity between the competing marks, observed that, “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 afore- mentioned 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”.[3]

The Court corroborated the above-stated observations by placing reliance on the Judicial rulings which have clarified the concept of “likelihood of confusion.”. These Judicial rulings justify a review of the contested marks that emphasizes their similarities rather than their differences. The Supreme Court held in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.[4], that the evaluation of deceptive similarity goes beyond a side-by-side comparison and considers the overall impression given by the marks and the imperfect recollection of an average consumer.

5. LACHES AND ACQUIESCENCE- HOW PROFOUND WAS THE IMPACT, IF ANY?

The Defendant contended that the suit is non-maintainable and liable to be refused on the grounds of delays, laches and acquiescence. The Court rejected the same and placed reliance on the documentary evidence available on record, and therein enumerated the jurisprudential basis for the maintainability of the said grounds.

“The principle of laches requires not just a mere delay in filing the suit, but also that the delay must cause some detriment to the Defendant. For acquiescence to apply, it must be shown that the Plaintiff actively represented that they would not assert their rights or that they stood by while their rights were infringed upon, resulting in the Defendants being misled to their detriment. In this case, the alleged delay of three years is not considered excessive, especially in the context of trademark and copyright disputes which often involve complex considerations and necessitate thorough investigation before litigation. Furthermore, Lacoste's timely legal notices, marked as Ex. PW 1/4 to Ex. PW 1/7, which have been admitted by the Defendants, and subsequent lawsuit indicate a proactive stance rather than passive acquiescence.”[5]

CONCLUSION: POSSIBLE PRECAUTIONARY MEASURES

The present case of ‘Lacoste and Anr. v. Crocodile International Pte Ltd. And Anr.’[6], is a crucial judgment and bears significance for fashion and luxury conglomerates. The case establishes the dire necessity to approach intellectual property rights in a mark, rather proactively and avail necessary registrations and documentary evidence prior to entering a foreign market. This shall act as a deterrent to prospective intellectual property rights infringers. The case further highlights and reinstates the growing significance of precise and unambiguous contractual agreements governing and regulating a contractual relationship/arrangement. The same was evident in the instant matter, wherein the precise language indicating the intent and scope of the agreement proved favorable to the Plaintiff. The present case puts forth the importance of securing all possible statutory proprietary claims vested in a mark. This shall further contribute in strengthening the defense against a possible intellectual property infringement claim. Another crucial lesson to learn from the instant case is the need to diligently track and keep eye on new entrants in the Trade mark registry, to ensure timely and appropriate legal actions are undertaken to protect the statutory rights vested in a mark. Moreover, businesses are urged to regularly monitor the market for marks that might infringe on their trademarks, as the Court's "likelihood of confusion" method for assessing trademark infringement is reiterated in the instant matter. Market players should look beyond just identical trademarks and also consider marks that might confuse ordinary consumers. This vigilance should include examining packaging, advertising, and the overall brand presentation, among other aspects of product representation.