Crocodiles: confusingly similar, whichever way they’re facing!

‘Rene Lacoste, legendary champion of French tennis, who created the polo, the famous shirt in petit pique that revolutionised the world of sport and fashion.’

These words come from the Lacoste website, which tells us that fake Lacoste products can be found anywhere and are often sold in conjunction with words like ‘cheap’ and ‘replica’.

Regular readers will know that we enjoy covering trade mark cases from around the world. On this occasion, it’s India where we turn our attention to a case that dealt with what could arguably be considered confusingly similar crocodiles, a topic we’ve never had to consider before. The publication World Trademark Review (“WTR”) reported on this case recently and we found that report very useful.

Crocodile No.1 – the right-facing crocodile

A long, long time ago, in an age when tennis rackets were made of wood, gentlemen tennis players wore long trousers and applied oil to their hair, and a tie break was a clothing malfunction - there was a French tennis player called René Lacoste. Monsieur Lacoste was known by the nickname ‘the Crocodile’, although we are not sure why – perhaps he was ruthless, snappy and downright scary!

Lacoste partnered with a certain Louis Emile Andre Gillier to manufacture knitted sports shorts and tennis shirts. The brand that the two men applied to these shirts was Rene Lacoste & Andre Gillier, aka Chemise Lacoste. An embroidered crocodile device symbol was introduced in France in 1927. So began the company and the trade mark Lacoste and Crocodile Logo (see below).

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One country where the trade mark Lacoste and Crocodile Logo was registered was India, where a trade mark registration was obtained in 1983. Lacoste subsequently also obtained a registration simply for the crocodile device in 1993.

Crocodile No. 2 – the left-facing crocodile

A Singapore company called Crocodile International also has a fashion brand that comprises a crocodile logo – this brand is used for clothing and sports equipment, and it has apparently been in use since 1947.

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So how did these two Crocs get on?

Not very well as it happens. It’s all a bit murky and it’s not particularly interesting, and we will spare you the boring details. What can be said is that at one point, the parties signed a co-existence agreement, as they encountered each other in various territories, but this was unsuccessful.

Lacoste eventually sued Crocodile International in India for trade mark infringement, arguing that Crocodile International’s trade mark was confusingly similar to the registered Lacoste trade mark.

The Indian court’s decision

In a decision dated 14 August 2024, Lacoste & Anr v Crocodile International Prt Ltd & Anr, CS COMM 1550/2016, the court dealt with several issues:

Prior rights

Lacoste had prior rights to the crocodile mark on a ‘standalone basis’.

Confusing similarity - trade mark infringement

Crocodile International’s trade mark was confusingly similar to Lacoste’s. The court referred to the similarity in shape, silhouette and other design elements. The fact that the trade marks were being used on identical products was certainly relevant.

The only real difference was the orientation, with Lacoste’s crocodile facing right and International’s facing left. The court felt that the average consumer would be unlikely to see this as being significant. So there was a compelling case for trade mark infringement.

Passing off

Yet the court was not prepared to grant relief for passing off because there was insufficient evidence of Lacoste having a substantial reputation in India at the time when Crocodile International started using its trade mark. The copyright infringement claim also failed on the basis that there are limited ways to represent these creatures.

Territoriality

The court held that the provisions of a 1983 co-existence agreement between the parties could not be applied in India because there was no mention of India in that document. There was also a letter, but this did not constitute legal evidence of an enforceable co-existence agreement and was therefore insufficient to establish a binding agreement in new jurisdictions including India.

Ultimately, Crocodile International was restrained from manufacturing, selling, offering for sale, advertising or using their trade mark in any manner that constitutes infringement of Lacoste’s trade mark registrations, which ended a 23-year battle between both parties.

Finally

The WTR article argues that ‘Lacoste carved a strong case for trade mark infringement, despite being unable to make a case for passing off or copyright infringement. The decision underscores the importance of well-formulated agreements, especially when it comes to international co-existence of trade marks.’

Manisha Bugwandeen-Doorasamy

Executive | Intellectual Property

mbugwandeen-doorasamy@ENSafrica.com