Authored By: Elissa Alhaber
Holy Spirit University of Kaslik
Case Citation and Basic Information
Case Name: Lacoste S.A. & Anr. v. Crocodile International Pte. Ltd. & Anr.
Court: High Court of Delhi, Division Bench
Case Numbers: RFA (OS) (Comm) No. 18 of 2024 and RFA (OS) (Comm) No. 10 of 2025
Date of Decision: 9 March 2026
Bench: Justice Om Prakash Shukla and Justice C. Hari Shankar
Original Suit: CS (OS) No. 894 of 2001, later renumbered as CS (Comm) No. 1550 of 2016
Impugned Judgment: Single Judge decision dated 14 August 2024
Area of Law: Trademark infringement, copyright infringement, passing off, coexistence agreements, territoriality of intellectual property rights, and evidentiary proof.
Introduction
This case involves a long-standing intellectual property dispute between Lacoste, the French fashion brand renowned for its crocodile emblem, and Crocodile International, a Singapore-based apparel company that also utilizes crocodile-related marks. The central issue was whether Crocodile International could use a standalone crocodile device in India when Lacoste already held a registered crocodile device mark in the same class of goods.
The judgment is significant because it clarifies how Indian courts assess deceptive similarity, likelihood of confusion, and permitted use of a trademark. It also explains that coexistence agreements must be interpreted strictly according to their territorial and textual limits. The Court protected Lacoste’s statutory trademark rights, while also refusing to presume goodwill for passing off without proper evidence.
Facts of the Case
Lacoste S.A. is a French company known internationally for clothing and lifestyle products bearing a crocodile device. Lacoste claimed that its crocodile artwork was created in France in 1927 and that its related trademarks were registered internationally from the 1930s. In India, Lacoste obtained registration for its crocodile device marks in 1983 in Class 25, covering clothing, footwear, and related goods. It began commercial activity in India in 1993 through its Indian licensee, Sports and Leisure Apparel Ltd.
Crocodile International Pte. Ltd. is a Singapore-based company. It claimed that its founder, Dr. Tan Hian Tsin, adopted a crocodile device in 1947. It also relied on an Indian registration for a crocodile mark dating back to 1952. Crocodile International began advertising in India around 1997 and selling products around 1998 through its Indian counterpart, Crocodile Products Pvt. Ltd.
The dispute arose when Crocodile International used a standalone crocodile device in India, without the word mark “CROCODILE.” Lacoste objected to this use, alleging that the device was deceptively similar to its registered crocodile mark and was likely to cause confusion among consumers in the apparel market.
Lacoste filed a suit seeking relief for trademark infringement, copyright infringement, and passing off. Crocodile International denied infringement. It argued that it had prior rights and that its use was protected by a 1983 Co-Existence Agreement and a 1985 letter. According to Crocodile International, these documents reflected an arrangement allowing both brands to coexist in several territories, including India.
The learned Single Judge partly decreed the suit in favor of Lacoste. The Court granted a permanent injunction for trademark infringement but rejected Lacoste’s claims for copyright infringement and passing off. Both parties appealed. Crocodile International challenged the injunction and related findings, while Lacoste challenged the rejection of copyright infringement and passing off.
Legal Issues
Whether Crocodile International’s standalone crocodile device infringed Lacoste’s registered trademark rights in India.
Whether the 1983 Co-Existence Agreement or the 1985 letter authorized Crocodile International to use the impugned mark in India.
Whether the impugned crocodile device amounted to copyright infringement of Lacoste’s artistic work.
Whether Lacoste established passing off by proving goodwill and reputation in India at the relevant time.
Whether Lacoste’s claim was barred by delay, laches, or acquiescence.
Whether Lacoste was entitled to rendition of accounts/account of profits.
Whether the award of costs against Crocodile International was justified.
Arguments Presented
Crocodile International’s Arguments
Crocodile International argued that it was an honest and concurrent user of crocodile marks. It claimed independent adoption from 1947 and relied on an Indian registration dating back to 1952. On this basis, it argued that it had its own commercial identity and could not be treated as a dishonest adopter.
Its main defense was contractual. It relied on the 1983 Co-Existence Agreement and the 1985 letter, arguing that these documents reflected a broader commercial arrangement between the parties. It claimed that the 1985 letter extended coexistence to India and that Lacoste benefited from this arrangement because Crocodile International did not oppose Lacoste’s Indian trademark applications.
On trademark infringement, Crocodile International argued that the rival marks were distinguishable. It pointed to the opposite direction of the crocodiles, differences in presentation, and the use of the word “CROCODILE.” It also argued that Lacoste had not proved actual confusion.
On copyright infringement, it argued that copyright protects original expression, not the general idea of a crocodile. It submitted that similarities were natural because both marks depicted the same animal. It also relied on the doctrine of merger, arguing that there are limited ways to depict a strong or aggressive crocodile.
Lacoste’s Arguments
Lacoste argued that it was the registered proprietor of the crocodile device mark in India. It submitted that Crocodile International’s standalone device was visually and conceptually similar to its mark and was likely to confuse an average consumer with imperfect recollection.
Lacoste denied that the 1983 Agreement applied to India. The agreement expressly covered only Taiwan, Singapore, Indonesia, Malaysia, and Brunei. India was not mentioned. Lacoste also argued that the 1985 letter was unilateral, vague, unsigned by Lacoste, and incapable of creating binding rights in favor of Crocodile International. It did not clearly refer to the impugned standalone mark.
On copyright, Lacoste argued that Crocodile International copied the specific artistic expression of its logo, including the posture, open mouth, body shape, tail position, scales, and overall visual impression.
On passing off, Lacoste argued that it had acquired goodwill in India before Crocodile International entered the market. It relied on sales, promotional expenditure, international reputation, and prior protection of its mark.
Court’s Reasoning and Analysis
The Court first examined the contractual defense. It held that the 1983 Co-Existence Agreement did not extend to India. The agreement expressly listed the territories to which it applied, and India was not included. Applying ordinary principles of contractual interpretation, the Court refused to rewrite the agreement or imply a territorial extension that the parties had not clearly expressed.
The Court then considered the 1985 letter. It held that the letter did not create a binding contract. It was unilateral in nature, lacked clear acceptance by Lacoste, and did not specifically authorize use of the impugned standalone crocodile device in India. The Court therefore rejected Crocodile International’s claim of consent or permitted use.
On trademark infringement, the Court applied the test of deceptive similarity and likelihood of confusion. It assessed the marks from the standpoint of an average consumer of ordinary intelligence and imperfect recollection. The Court found that the rival marks shared strong visual and conceptual similarities. Both showed a crocodile in a similar posture, with an open mouth, visible teeth, curved tail, scales, and an aggressive stance. The fact that the crocodiles faced opposite directions did not sufficiently distinguish them. Consumers may remember the dominant idea of a crocodile device on clothing, not the exact direction of the animal.
Since Lacoste was the registered proprietor of the crocodile device in India, and Crocodile International was neither the registered proprietor of the impugned standalone mark nor a permitted user, the Court held that the use amounted to trademark infringement.
On copyright, the Division Bench disagreed with the Single Judge. The Single Judge had applied the doctrine of mergers and held that there are limited ways to draw a crocodile. The Division Bench held that merger applies only when an idea has very few possible expressions. Here, there were several ways to depict a crocodile. Crocodile International itself had used different crocodile designs. This showed that the impugned mark was not an unavoidable expression of the idea of a crocodile. The Court also noted Crocodile International’s knowledge of Lacoste’s mark. It held that the impugned device substantially reproduced protectable elements of Lacoste’s artistic expression and therefore amounted to copyright infringement.
However, Lacoste failed on passing off. Passing off requires proof of goodwill in the relevant territory at the relevant time. The relevant time was around 1998, when Crocodile International began using the mark in India. The Court found Lacoste’s evidence insufficient. The survey evidence related to 2004, not 1998. Some advertising material was not properly proved. The CA certificate on sales and promotional expenditure was not sufficiently supported by underlying records or testimony from the chartered accountant concerned. Therefore, Lacoste did not establish passing off.
The Court also rejected acquiescence. Mere delay was not enough. Crocodile International had to show that Lacoste knowingly stood by and allowed the use of the mark, causing prejudice. That was not proved.
Finally, the Court upheld rendition of accounts because trademark infringement had been established. However, it set aside the cost order because both sides partly succeeded and Lacoste had also contributed to delay.
Judgment and Ratio Decidendi
The Division Bench partly allowed the appeals and modified the Single Judge’s judgment.
The Court held that Crocodile International’s use of the standalone crocodile device in India infringed Lacoste’s registered trademark rights. It also held that the same use amounted to copyright infringement. The Court confirmed that the 1983 Agreement did not apply to India and that the 1985 letter did not authorize the use of the impugned mark in India.
The Court rejected Lacoste’s passing off claim because Lacoste failed to prove goodwill in India at the relevant time. It also rejected Crocodile International’s defense of acquiescence. Lacoste remained entitled to rendition of accounts. The costs order against Crocodile International was set aside.
Ratio Decidendi:
A coexistence agreement cannot justify use of a trademark in India unless it clearly covers India and the specific mark in dispute. A deceptively similar device mark used on identical or similar goods infringes a registered trademark when it is likely to confuse an average consumer.
A further principle is that the doctrine of merger does not apply where multiple forms of expression are available and the defendant substantially reproduces the plaintiff’s specific artistic expression.
Critical Analysis
Significance of the Decision
The decision is significant because it strengthens protection for device marks in India. It recognizes that a logo can function as the core identity of a brand. This is especially true in fashion, where consumers often identify products through symbols rather than detailed labels.
The judgment also clarifies the legal effect of coexistence agreements. International companies often settle disputes by dividing territories. This case confirms that such agreements must be clear. Courts will not infer consent from vague language, informal correspondence, or general commercial cooperation.
Implications and Impact
The practical lesson for brand owners is that registration is powerful, but evidence remains essential. Lacoste succeeded on infringement because it had registered rights and proved similarity. But it failed on passing off because it did not prove goodwill in India at the relevant time through admissible evidence.
The case also shows that trademark disputes are jurisdiction-specific. In the Philippines, Crocodile International won because the Court gave more weight to differences between the marks and the possibility of coexistence. In India, Lacoste won because the Court focused more on overall impression, imperfect recollection, and statutory protection. This contrast shows that international brands need country-specific enforcement strategies.
Critical Evaluation
The trademark reasoning is persuasive. It reflects how consumers actually behave. Buyers do not compare logos with legal precision. They remember broad visual impressions. If two crocodile devices appear on similar clothing, confusion is reasonably possible.
The contract analysis is also strong. The Court correctly refused to expand the 1983 Agreement beyond its express wording. This protects commercial certainty and respects party autonomy.
The copyright finding is more debatable. Trademark law protects source identification and consumer confidence. Copyright law protects original artistic expression. These doctrines serve different purposes. There is a risk that protecting the same logo under both regimes may give Lacoste very broad control over crocodile imagery in fashion. However, the Court limited its reasoning to the specific artistic expression of Lacoste’s crocodile device, not the general idea of using a crocodile.
The passing off analysis is balanced. The Court refused to treat global reputation as automatic proof of Indian goodwill. This is doctrinally sound because goodwill is territorial. A claimant must prove reputation in the relevant market at the relevant time.
Conclusion
This case is an important Indian ruling on trademark protection, copyright in logos, and coexistence agreements. The Delhi High Court protected Lacoste’s registered crocodile device and restrained Crocodile International from using a deceptively similar standalone crocodile mark in India.
The key takeaway is that similarity is assessed through the eyes of an ordinary consumer, not through a technical side-by-side comparison. The case also shows that coexistence agreements must be clear, specific, and territory-based. General cooperation or vague letters cannot defeat registered trademark rights.
At the same time, the judgment confirms that even famous brands must prove goodwill with reliable evidence when claiming passing off. The lasting impact is clear: Indian courts will strongly protect distinctive registered marks, but they will still demand proper contracts and admissible evidence.
Reference(S):
Lacoste S.A. & Anr. v. Crocodile International Pte. Ltd. & Anr., RFA (OS) (Comm) No. 18 of 2024 & RFA (OS) (Comm) No. 10 of 2025 (Del. H.C. Mar. 9, 2026).
Lacoste & Anr. v. Crocodile International Pte. Ltd. & Anr., CS (Comm) No. 1550 of 2016 (Del. H.C. Aug. 14, 2024).
Lacoste S.A. v. Crocodile International Pte. Ltd., G.R. No. 223270 (Phil. Nov. 6, 2023).
The Trade Marks Act, No. 47 of 1999, INDIA CODE (1999).
The Copyright Act, No. 14 of 1957, INDIA CODE (1957).
The Indian Evidence Act, No. 1 of 1872, INDIA CODE (1872).
The Code of Civil Procedure, No. 5 of 1908, INDIA CODE (1908).
Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 S.C.C. 73 (India).
Amritdhara Pharmacy v. Satya Deo Gupta, 1962 S.C.C. OnLine S.C. 13 (India).
Parle Products (P) Ltd. v. J.P. & Co., (1972) 1 S.C.C. 618 (India).
R.G. Anand v. Delux Films, (1978) 4 S.C.C. 118 (India).
Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 S.C.C. 1 (India).
