Delhi High Court Clarifies the Scope of Trademark and Copyright Protection in Lacoste's Crocodile Logo Dispute

In a significant judgment that reinforces the protection available to well-known brands, the Delhi High Court has brought an end to one of India's longest-running intellectual property disputes by ruling in favour of French fashion house Lacoste against Singapore-based Crocodile International. Spanning more than two decades, the litigation concerned competing crocodile logos used on apparel and accessories and raised complex questions relating to trademark infringement, copyright protection, passing off and the territorial operation of international coexistence agreements.

While a Single Judge had earlier recognised only trademark infringement, the Division Bench has now expanded the scope of protection by holding that Crocodile International's logo infringed both Lacoste's trademark rights and its copyright in the artistic work. The decision represents an important development in Indian intellectual property jurisprudence by recognising that a single logo may simultaneously attract protection under multiple branches of IP law.

Lacoste has used its iconic crocodile emblem for decades and holds trademark registrations for the device mark in India dating back to 1983. Crocodile International, on the other hand, traced its adoption of a crocodile logo to 1947 and relied heavily on a 1983 coexistence agreement and subsequent communications to argue that both companies were entitled to use their respective crocodile logos in India.

The dispute arose when Crocodile International began using a standalone left-facing crocodile device on clothing sold in India. Lacoste contended that the logo closely resembled its own registered right-facing crocodile device and was likely to confuse consumers purchasing identical goods.

The litigation eventually evolved into a multifaceted intellectual property dispute involving trademark infringement, copyright, passing off, territorial rights and contractual interpretation.

Trademark Infringement Established

The Division Bench held that Crocodile International's standalone crocodile logo was deceptively similar to Lacoste's registered trademark.

Although the two crocodiles faced opposite directions, the Court observed that the overall commercial impression created by both marks remained substantially similar. Their posture, silhouette, scales, tail, open jaws and overall visual presentation were sufficiently alike that an average consumer with imperfect recollection would likely associate the products with the same source.

Accordingly, the Court held that Crocodile International's use of the impugned mark amounted to trademark infringement under Section 29 of the Trade Marks Act, 1999.

Copyright Protection Extended

One of the most significant aspects of the judgment is the Court's reversal of the earlier finding on copyright.

The Single Judge had previously applied the doctrine of merger and concluded that there were only limited ways to depict a fierce crocodile, thereby refusing copyright protection against the competing logo.

The Division Bench disagreed.

It held that depicting a crocodile involves several creative choices relating to posture, body structure, artistic expression and visual composition. Since Crocodile International itself had adopted different crocodile depictions over the years, it could not argue that only one representation was possible.

The Court therefore concluded that the impugned logo was not an independent artistic creation but substantially reproduced Lacoste's copyrighted work. Consequently, Crocodile International was held liable for copyright infringement as well.

Coexistence Agreement Did Not Extend to India

A central defence raised by Crocodile International was that a 1983 coexistence agreement between the parties authorised the use of both crocodile logos in specified territories and that subsequent communications expanded the arrangement to India.

The Court rejected this contention.

It held that the agreement expressly applied only to Taiwan, Singapore, Indonesia, Malaysia and Brunei. Neither the original agreement nor the subsequent correspondence demonstrated any express or implied consent permitting Crocodile International to use the disputed crocodile device in India.

The judgment reinforces the principle that trademark rights remain territorial in nature and that international agreements cannot automatically extend protection to jurisdictions not expressly covered.

Passing Off Claim Rejected

Despite succeeding on trademark and copyright infringement, Lacoste did not succeed in its passing off claim.

The Court held that passing off requires independent proof of goodwill and reputation existing within India at the time the defendant entered the market.

Although Lacoste undoubtedly enjoyed substantial international recognition, it failed to produce sufficient admissible evidence demonstrating the extent of its goodwill in India when Crocodile International commenced commercial operations in 1998.

Accordingly, the passing off claim was dismissed.

Permanent Injunction Confirmed

The Court permanently restrained Crocodile International from using the infringing crocodile device in India.

It also upheld the direction requiring Crocodile International to render accounts of profits earned through the sale of infringing products, enabling the assessment of monetary relief.

However, recognising that Lacoste had taken nearly eleven years to complete its evidence during trial, the Court set aside the award of litigation costs granted by the Single Judge.

The decision demonstrates that trademark registration alone may not exhaust the remedies available to rights holders. Where a logo also constitutes an original artistic work, copyright law may provide an independent and additional layer of protection.

Equally significant is the Court's emphasis on territoriality. Businesses operating globally often execute coexistence agreements to resolve disputes across multiple jurisdictions. This judgment makes it clear that such arrangements must expressly identify every jurisdiction in which coexistence is intended. Courts are unlikely to infer territorial extensions merely from subsequent correspondence or commercial conduct.

The judgment also highlights the distinction between trademark infringement and passing off. While infringement primarily protects registered rights, passing off requires independent proof that the claimant had already established goodwill and reputation within the relevant market at the relevant time.

The judgment offers several practical lessons for brand owners:

• Logos may simultaneously receive protection under trademark law and copyright law.

• International coexistence agreements should clearly specify every jurisdiction covered to avoid future disputes.

• Businesses entering new markets should conduct comprehensive trademark clearance beyond merely comparing obvious visual differences.

• Companies asserting passing off claims should preserve documentary evidence demonstrating market reputation and consumer recognition within the relevant jurisdiction.

• Delays in conducting litigation may influence costs, even where the successful party ultimately prevails.

The Lacoste-Crocodile International dispute represents far more than a disagreement over competing crocodile logos. It illustrates the increasingly sophisticated approach adopted by Indian courts towards protecting valuable brand assets.

By recognising infringement under both trademark and copyright law while simultaneously reaffirming the territorial nature of trademark rights and the evidentiary burden required for passing off, the Delhi High Court has delivered a judgment that will influence future intellectual property disputes involving global brands.

As businesses increasingly rely on visual identity as a key commercial asset, this decision serves as an important reminder that intellectual property protection extends beyond registration certificates. Effective enforcement depends equally on carefully drafted commercial agreements, timely legal action and robust evidence establishing the value and reputation of the brand within each jurisdiction.