Background and Facts:

The case of Lacoste & Anr. v. Crocodile International Pte Ltd & Anr. revolves around the use of crocodile logos on apparel, leading to a dispute over copyright and trademark infringement. Lacoste, an internationally recognized brand, is known for its distinctive crocodile logo. The Plaintiffs, Lacoste and their Indian licensee, Sports and Leisure Apparel Ltd., initiated this suit to protect their rights over the crocodile device used on their clothing items worldwide, including India. The Defendants, Crocodile International Pte Ltd, and their Indian counterpart, Crocodile Products Pvt. Ltd., were accused of using a similar crocodile device on their products, which Lacoste claimed was deceptively similar to their own trademarked logo.

Issues in the Case:

1. Territorial Jurisdiction: Whether the Delhi High Court has the jurisdiction to entertain and try the suit.
2. Ownership of the Copyright: Whether Lacoste is the rightful owner of the copyright in the crocodile device.
3. Trademark Rights in India: Whether Lacoste is the proprietor of the crocodile device in India by virtue of registration and use.
4. Prior Adoption and Use: Whether Crocodile International is the prior adopter and user of the saurian device and the owner of trademark rights in the same.
5. Validity of Agreements: Whether the co-existence agreements dated 17th June 1983 and 22nd August 1985 extend to the use of the Annexure-A device in India.
6. Trademark and Copyright Infringement: Whether the use of the crocodile device by the Defendants violates Lacoste’s rights.

Arguments:

• Lacoste’s Position:Lacoste contended that their crocodile device was an original creation first published in 1927, with continuous use and recognition worldwide. They argued that they hold valid copyright registration and trademark rights over the crocodile device in India, dating back to 1983. Lacoste claimed that the Defendants’ use of a similar device was not authorized under any agreement and sought an injunction to prevent further use by Crocodile International.
• Crocodile International’s Defense:Crocodile International argued that their crocodile trademark was originally devised in 1947 and had been in continuous use. They claimed ownership of the crocodile device under prior trademark registrations dating back to 1952. The Defendants relied on co-existence agreements with Lacoste, arguing that these agreements allowed the concurrent use of similar crocodile devices within specified territories, including India.

Judgment:

1. Territorial Jurisdiction: The Delhi High Court held that it had the jurisdiction to try the suit as Lacoste’s licensee was conducting business in Delhi, and the cause of action partially arose within the court’s territorial limits.
2. Ownership of the Copyright: The court concluded that Lacoste is the rightful owner of the copyright in the crocodile device, based on unchallenged evidence of its creation, registration, and continuous recognition since 1927.
3. Trademark Rights in India: The court found that Lacoste is the proprietor of the crocodile device in India through valid registrations and substantial evidence of use since 1993.
4. Prior Adoption and Use: The court noted that while Crocodile International had earlier rights in composite marks containing the word “CROCODILE” and a saurian device, they did not have prior rights to the standalone saurian device similar to Lacoste’s trademarked device.
5. Validity of Agreements: The court examined the 1983 and 1985 agreements, finding that they did not extend the use of the Annexure-A device to India without the word “CROCODILE,” thus limiting the scope of concurrent use claimed by Crocodile International.
6. Trademark and Copyright Infringement: The court determined that the Defendants’ device was deceptively similar to Lacoste’s, creating a substantial likelihood of consumer confusion. The court concluded that the use of the impugned mark by Crocodile International infringed upon Lacoste’s trademark and copyright rights in India.

Conclusion:

The Delhi High Court ruled in favor of Lacoste, granting a permanent injunction against Crocodile International, restraining them from using the infringing crocodile device in India. The court upheld Lacoste’s exclusive rights to the crocodile device and ordered Crocodile International to cease their infringing activities, reflecting the significance of protecting intellectual property rights in the fashion industry.