Lacoste obtains favourable judgement in trademark infringement suit
The Delhi High Court, in a judgement dated the 14th of August 2024, ruled in the favour of Lacoste to end a 23-year long suit regarding the infringement of Lacoste’s crocodile logo.
The initial suit was filed by Lacoste against Singapore’s Crocodile International Pte Limited and its Indian subsidiary (Crocodile Products Private Limited). Lacoste alleged that it has registrations for its crocodile device under the Indian Trademarks Act and has been using these marks extensively in association with its products in India since 1993. Crocodile International holds trademark registrations for a mark similar to the Lacoste logo along with the word ‘Crocodile’, and Lacoste alleged that Crocodile began use of the device mark without the corresponding word, which bears a deceptive and confusing similarity to the mark registered by Lacoste.
Crocodile presented a defence highlighting its extensive use of the mark in India since 1997, as well as the existence of a coexistence agreement between Lacoste and Crocodile which allowed both parties to use their respective marks in certain markets including Asia.
The Delhi High Court found that Lacoste is in fact the rightful proprietor of its registered mark in India, which affirms their exclusive right to use and enforce the trademark in relation to the specified goods. The court also highlighted the difference in the mark registered by Crocodile (which includes the word ‘Crocodile’) and the standalone crocodile logo used by Crocodile in its products. Additionally, the court also determined that the Crocodile mark has a strong potential to mislead consumers or cause them to confuse one brand for the other.
The court also held that the scope of the coexistence agreement between the parties does not extend to the territory of India, and the same would not affect Lacoste’s right to protect their trademarks in India.
In view of the above, the court granted a permanent injunction against Crocodile restraining them from manufacturing, selling, advertising, or using in any manner the standalone crocodile logo used by Crocodile on its products. Additionally, the court ordered that Crocodile must account for the profits made from the sale of goods using the impugned mark, and granted a period of six weeks to Crocodile to provide their statements of accounts and profits from such sales.
Trial court grants order against Burger King in trademark suit, interim stay imposed upon appeal to High Court
A district court in Pune, Maharashtra, in a judgement passed in August, dismissed a suit filed by US-based Burger King for trademark infringement against a local restaurant with the same name. The suit was filed in 2011, seeking a permanent injunction against the local restaurant preventing it from using the ‘Burger King’ trademark.
The court in its judgement found that while the local restaurant had been operating in India since around 1991-92, Burger King (US) only entered the Indian market in 2014 with the opening of its first restaurant in New Delhi. The court did not find any merit in claims that customers were confused by the local restaurant’s use of the name, nor did the court find any actual financial loss due to the alleged infringement. The court therefore held that no trademark infringement had occurred by the local restaurant, and dismissed the suit for injunction filed by Burger King.
The decision of the trial court has been appealed against by Burger King in the Bombay High Court. During pendency of the suit before the trial court, a temporary injunction had been granted against the local restaurant preventing use of the ‘Burger King’ name while the suit was ongoing, which had ceased upon the trial court passing its judgement. However, upon hearing the appeal, the Bombay High Court has stayed this order of the trial court, effectively reintroducing the temporary injunction, till the next hearing on the matter scheduled for the 6th of September 2024. It remains to be seen whether the Bombay High Court will uphold or overturn the judgement of the trial court.
Disha Mohanty, IDI Country Expert for distribution in India
Shivalik Chandan
