VERDICTUM.IN*

IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 31st July, 2024
Pronounced on: 14th August, 2024+

CS(COMM) 1550/2016
LACOSTE & ANR.
Through:..... Plaintiffs
Mr. Chander M. Lall, Senior Advocatewith Ms. Nancy Roy, Ms. Prakriti
Varshney, Mr. Prashant, Mr. Raghav
Malik and Mr. Abhinav Bhalla,
Advocates.

versusCROCODILE INTERNATIONAL PTE LTD & ANR. .... Defendants
Through: Mr. Pravin Anand, Mr. Saif Khan, Mr.
Shobhit Agrawal and Mr. Prajjwal
Kushwaha, Advocates.
CORAM:
HON’BLE MR. JUSTICE SANJEEV NARULA
JUDGMENTCONTENTSTHE CONTROVERSY .................................................................................................... 4
LACOSTE’S CASE IN BRIEF........................................................................................ 5
OVERVIEW OF CROCODILE INTERNATIONAL’S DEFENCE........................... 9
PROCEDURAL ORDERS AND FACTS OF SIGNIFICANCE................................ 15
I.
II.
III.

CASE MANAGEMENT PROCEEDINGS……………………………………………….15
ISSUES ……………………………………………………………....................... 16
THE CONDUCT OF TRIAL………………………………………………………..... 16

ISSUE-WISE ANALYSIS AND FINDINGS................................................................ 19
ISSUE NO. 5 - WHETHER THIS COURT DOES NOT HAVE TERRITORIAL JURISDICTION TO
ENTERTAIN AND TRY THE PRESENT SUIT?........................................................................ 19
ISSUE NO. 1 - WHETHER THE PLAINTIFF IS THE OWNER OF THE COPYRIGHT IN THE

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VERDICTUM.IN“CROCODILE DEVICE?”.................................................................................................... 22
ISSUE NO. 2 - WHETHER THE PLAINTIFF IS THE PROPRIETOR OF THE ‘CROCODILE DEVICE’IN INDIA BY VIRTUE OF REGISTRATIONS AND USE?.......................................................... 24
ISSUE NO. 10- WHETHER THE FIRST DEFENDANT IS THE PRIOR ADOPTER AND USER OF THE
SAURIAN DEVICE AND THE OWNER OF TRADE MARK RIGHTS IN THE SAME .................... 26
ISSUE NO. 4 - WHETHER THE DEFENDANT IS ENTITLED TO USE THE ‘CROCODILE DEVICE’ATTACHED AS ANNEXURE ‘A’ TO THE PLAINT IN INDIA BY VIRTUE OF AN AGREEMENTDATED JUNE 17, 1983 BETWEEN THE PARTIES ................................................................. 31
ISSUE NO. 11 (REWORDED) - WHETHER THE FIRST PLAINTIFF AND THE FIRST DEFENDANTSIGNED AND ENTERED INTO CO-EXISTENCE AGREEMENTS DATED 17TH JUNE, 1983 AND

22ND AUGUST, 1985 FOR RESPECTIVE TERRITORIES? IF SO, WHETHER SUCH COEXISTENCE EXTENDS TO ANNEXURE-A DEVICE IN INDIA?.............................................. 32
ISSUE NO. 8- WHETHER THE USE OF ‘CROCODILE DEVICE’ ATTACHED AS ANNEXURE ‘A’
TO THE PLAINT BY THE DEFENDANT VIOLATES THE PLAINTIFF’S COPYRIGHT AND TRADEMARK RIGHTS IN INDIA? ................................................................................................... 32
I.

SIMILARITY BETWEEN THE TWO TRADEMARKS…………………………………...33
I.I.
JUDICIAL PRECEDENTS CITED BY CROCODILE INTERNATIONAL.…………..39

II.

THE 1983 AGREEMENT …………………………………………………………...41
II.I.
HISTORICAL BACKDROP TO THE EXECUTION OF THE 1983 AGREEMENTPRESENTED BY CROCODILE INTERNATIONAL……………………………………..41
II.II.
CO-EXISTENCE FRAMEWORK ESTABLISHED BY THE 1983 AGREEMENT ......45
II.III.

III.

II.II.I. GEOGRAPHICAL LIMITATIONS AND INTERPRETATIONS...…………...48
DECISION OF THE SUPREME COURT OF THE PEOPLE'S REPUBLIC OF CHINA...57

EXTENDED CO-EXISTENCE AND THE 1985 LETTER……………………….……….59
III.I.
THE CONTEMPORANEOUS DOCUMENTS ………………………….……….65
III.I.I. PROBATIVE VALUE OF THE CONTEMPORANEOUS DOCUMENTS …….……..66
III.I.II. SIGNIFICANCE OF THE CONTEMPORANEOUS DOCUMENTS TO MERITS OF THE
CASE……………………………………………………………………….……..68
III.III. DOES THE MUTUAL CO-EXISTENCE UNDER THE 1985 LETTER APPLY TO THE
ANNEXURE-A DEVICE IN INDIA? …………………………………………….…....84

IV.
CONCLUDING OBSERVATIONS ON THE 1983 AGREEMENT, 1985 LETTER AND THE
CONTEMPORANEOUS DOCUMENTS ………………………………………………….……86
V.

CONCLUSION ON VIOLATION OF TRADEMARK RIGHTS…………………………….87
V.I.
INFRINGEMENT……………………………………………………..…….87

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V.II.
V.II.I.
VI.

ASSESSING THE ALLEGATIONS OF PASSING OFF………………….……....88
GOODWILL AND REPUTATION OF LACOSTE……………………................91

COPYRIGHT VIOLATION………………………………………………….……..104

FINDINGS ON ISSUES NO. 4,11 AND 8……………………………………………………107
ISSUE NO. 6-WHETHER THE PLAINTIFFS ARE NOT ENTITLED TO ANY RELIEF AS THEY AREGUILTY OF CONCEALING (SIC) VITAL FACTS AND DOCUMENTS?................................... 108
ISSUE NO. 3- WHETHER THE SUIT SUFFERS FROM GROSS AND UNEXPLAINED DELAY AND IS
HIT BY LACHES AND ACQUIESCENCE?............................................................................ 109
ISSUE NO. 7- WHETHER THE PLAINT IS LIABLE TO BE DISMISSED ON ACCOUNT OF IT BEING
FICTITIOUS WITH AN INTENTION OF THWARTING THE LEGITIMATE BUSINESS OF THE
DEFENDANT?................................................................................................................... 111
ISSUE NO. 9-WHETHER THE DEFENDANT IS LIABLE TO BE PROSECUTED AND NON-SUITEDON ACCOUNT OF USE OF THE SYMBOL ® WITH A VIEW TO MISREPRESENT THE MEMBERS
OF THE TRADE AND PUBLIC THAT THE ‘CROCODILE DEVICE’ IS A REGISTERED TRADEMARK IN INDIA? .............................................................................................................. 112

RELIEF.......................................................................................................................... 113

SANJEEV NARULA, J.
1.

In the competitive world of fashion, where symbols adorning our

garments carry a unique allure, often conveying affluence, this Court is facedwith a battle over iconic emblems that have transcended mere branding tobecome symbols of style and social standing. In this milieu, the criticalquestion is whether there is space for two crocodiles, or does the presence of
one spell trouble for the other?

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THE CONTROVERSY
2.
Lacoste, Plaintiff No. 1, and their licensee in India, Sports and Leisure
Apparel Ltd. [Plaintiff No. 2],1 have initiated this lawsuit to protect their
copyright and trademark rights in the device of a crocodile or a saurian “,”2 affixed on the clothing articles sold by them around theworld, including in India. The parties have historically been engaged in legal
tussles over their emblems in many jurisdictions. In the Indian territory,
Lacoste seeks to restrain the Defendants – Crocodile International Pte Ltd.,and their Indian counterpart, Crocodile Products Pvt. Ltd.,3 from utilizing asimilar saurian device “,” appended as Annexure-A to theplaint,4 on the apparels produced by them, alleging it to be a mirror image of
Lacoste’s registered trademark. In contrast, Crocodile International maintains
that Lacoste is breaching a previously agreed upon understanding regarding
peaceful co-existence in the Asian countries, arguing for its extension to theIndian territory. Navigating through the complexities of trademark law in the
backdrop of parties’ prior agreements, this judgment aims to discern whether
these reptilian depictions on apparel are coincidental or a deliberate imitation
by Crocodile International.

1

Collectively, “Lacoste.”
The terms ‘crocodile’ and ‘saurian’ are being interchangeably used in the judgment to refer to the parties’
devices; the pleadings and issues describe it as a ‘crocodile’ device, while the submissions advanced
mentioned a ‘saurian’ device.
3
Collectively, “Crocodile International.”
4Interchangeably, “Annexure-A device” or “impugned mark.”
2

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3.

To contextualize the forthcoming narration of the dispute andsubsequent findings, a comparison of the two conflicting saurian devices is
illustrated below:

Plaintiffs’ markDefendants’ mark

LACOSTE’S CASE IN BRIEF
4.

The facts of the case, as presented by Lacoste, are as follows:

4.1.

Plaintiff No. 1-company is internationally acclaimed for their clothingarticles adorned with the mark/ logo “LACOSTE” and a crocodile device. The
company was founded by the renowned tennis player, Mr. Jean René Lacoste,
famously regarded as ‘Le Crocodile’ for his victories at various national andinternational tennis championships between 1925 to 1928. In this time, Mr.
Lacoste ventured into manufacturing of knitted shirts tailored for tennis andother sports players by partnering with Louis Emile André Gillier in 1931.
The shirts manufactured by ‘René Lacoste & André Gillier’ were called
Chemise Lacoste, and featured an embodied crocodile symbol on the front,
which was crafted by Mr. Robert George and was first introduced in France
in 1927. The first trademark filing in Troyes, France for this crocodile device
dates back to 27th April, 1933 (under registration No. 207916). Similarly, themarks “LACOSTE” and “CHEMISE LACOSTE” were registered on 22nd

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June, 1933 and 19th July, 1935 under registrations No. 287668 and 302681,
respectively.
4.2.

In India, the copyright in the artwork of crocodile device remains with

Plaintiff No. 1. During the continuance of the instant proceedings, the artistic

work “” was registered in favour of Plaintiff No. 1 under No.

62692/2002, bolstering their rights in India under the provisions of the
Copyright Act, 1957 and the Copyright (Amendment) Act, 1994. Thisownership grants Plaintiff No. 1 the exclusive authority to reproduce thecrocodile device in any material form and seek redressal against infringementof their copyright.
4.3.

Plaintiff No. 1 is also the registered proprietor of the crocodile device

and its formative variant in class 25, as detailed below:
Trademark and No.

Application

Goods

User claimed

Clothing, including

Proposed toboots, shoes, andbe usedDate
19.01.1983

slippers

Under No.: 400265
19.01.1983

Clothing, including

Proposed toboots, shoes, andbe usedslippers

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Under No.: 400267

4.4.

By virtue of the above registrations, Plaintiff No. 1 possesses the

exclusive statutory rights to use afore-noted trademarks in connection withthe goods for which they are registered. These trademarks have been inextensive and open use in India since October 1993 through Plaintiff No. 2,
and are now exclusively linked with the Plaintiffs. To substantiate thisassertion, the plaint sets out the annual sales figures and promotional
expenditures for the products bearing the “LACOSTE” mark and crocodile
device, since 1993.
4.5.

Defendant No. 1, operating under the name Crocodile International Pte

Ltd., is a company based in Singapore. Defendant No. 2 is a joint ventureassociated with Defendant No. 1. Defendant No. 1 holds registrations formarks entailing the word ‘Crocodile’ along with a corresponding device. The
Defendants commenced use of the said device in India sometime during thetwo years preceding the initiation of this suit (in 2001). More recently, they

have introduced the Annexure-A device – “,” which bears a

deceptive and confusing similarity to Lacoste’s previously registered andutilized “.” This recent adoption of a similar crocodile device

by Crocodile International forms the crux of the present lawsuit. The
impugned mark, which is affixed on pockets of shirts and t-shirts without thebrand name ‘Crocodile,’ mirrors the manner in which Lacoste uses their

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registered “” device, thus heightening the risk of consumer

confusion.
4.6.

Crocodile International has further complicated the matter by using thesymbol ‘®’ alongside the Annexure-A device, despite lack of its independent
registration, which constitutes misrepresentation. On 13th December, 1999,
Plaintiff No. 1 formally requested Crocodile International to cease using theAnnexure-A device in India in order to mitigate market confusion, whichyielded no response. As the infringing activities continued, Plaintiff No. 1
addressed communications on 23rd January, 2001 and 06th March, 2001 to
Defendant No. 1. However, Defendant No. 1 refused Plaintiff No. 1’s request,
citing a Co-Existence Agreement dated 17th June, 1983.5 According toLacoste, this Agreement, whereunder Plaintiff No. 1 and Defendant No. 1
agreed to concurrent usage of certain trademarks in various territories, does
not extend to India. Moreover, the 1983 Agreement does not authorize

Defendant No. 1 to use the device “” without the word/ mark

“CROCODILE.” In contrast, the Agreement permits the use of crocodile
device by Plaintiff No. 1. Significantly, on 22nd August, 1985, Defendant No.
1 themselves furnished a letter consenting to the registration and use of

crocodile device/ “” by Plaintiff No. 1 in India.6 This underscores

Crocodile International’s apparent disregard for Lacoste’s intellectual
56“1983 Agreement.”“1985 Letter.”CS(COMM) 1550/2016

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property rights, thereby compelling the initiation of this legal action seeking
a permanent injunction, restraining Crocodile International from further useof “” device. This device is alleged to be deceptively andconfusingly similar to Lacoste’s registered “” device, thus

constituting an infringement and passing off of the Plaintiffs’ registeredtrademarks. In addition to the injunctive relief, Lacoste also requests forancillary reliefs, including an order for Crocodile International to provide
access to their financial accounts for assessment of damages.

OVERVIEW OF CROCODILE INTERNATIONAL’S DEFENCE
5.
The version of facts elucidated by Crocodile International is as follows:
5.1.

The “CROCODILE” trademark was originally devised, created, andadopted by Dato Dr. Tan Hian Tsin,7 the founder of Defendant No. 1, in 1947
in Singapore. Since their inception in the same year, Defendant No. 1 hascontinuously and extensively used both the “CROCODILE” word and device
marks, and is now an internationally renowned company, recognized for theirsuperior quality products under the mark/ name “CROCODILE.” Defendant
No. 1 has utilized the “CROCODILE” trademark and crocodile device,sometimes accompanied by other words or devices, across a diverse range of
products, including articles of clothing, accessories, sports equipment,
eyewear, travel ware, and timepieces.

7“Dr. Tan.”

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5.2.

The “CROCODILE” trademark was first registered in Singapore in

1949, followed by registrations in several other countries, such as Malaysia,
Indonesia, Japan, Korea, and India. In India, the trademark “” was registered by Dr. Tan on 12th June, 1952 under No.
154397 in class 25 for shirts and singlets. This registration was subsequently
assigned by Dr. Tan to Defendant No. 1 on 15th September, 1983. On 21st
November, 1990, Defendant No. 1 applied for registration of the device “” in class 25 under No. 540315 in respect of articles ofclothing.
5.3.

Defendant No. 1 executed a Technical Collaboration Agreement withone K.L. Narayansa and Associates (predecessors of Defendant No. 2) for
commercial launch of products bearing the mark “CROCODILE” and theassociated device. Consequently, Defendant No. 2 was incorporated on 21st
April, 1994. Crocodile International’s products were introduced in Southern
India in August 1998 by inaugurating showrooms styled as ‘Crocodile
Galleries,’ following extensive advertisements through different media
channels. These advertisements commenced in April, 1997, when Crocodile
International issued a caution notice in newspapers that depicted the“CROCODILE” mark and device. Gradually, Defendant No. 2 expanded theirbusiness presence to other regions in the country. By virtue of theirregistration, extensive, long-standing, and uninterrupted use, coupled withsignificant

investments

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inadvertisingandpromotions,

Crocodile

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International

has acquired

absolute

andexclusive

rightstothe“CROCODILE” mark and device, particularly the Annexure-A device.
5.4.

Historically, Lacoste and Crocodile International have operated within

their respective territories. However, when Plaintiff No. 1 attempted to
expand their market presence into Asian countries, they encountered theestablished domain of Defendant No. 1. In 1971, upon initiating business
operations in Japan, Plaintiff No. 1 faced legal action from Defendant No. 1,
who challenged their use of the mark before the District Court of Osaka,
Japan. In the said proceedings, Plaintiff No. 1 argued that their mark, which
includes both a crocodile device and the word “LACOSTE,” was distinct andeasily distinguishable, emphasizing that “LACOSTE” had no conceptual link
to a crocodile. The Court ruled in favour of Plaintiff No. 1 and concluded that
there was no possibility of confusion or deception between the marks.
Consequently, Defendant No. 1’s claim was dismissed.
5.5.

On 16th July, 1980, Defendant No. 1, through their attorneys, issued acease-and-desist notice to Plaintiff No. 1’s licensee, Royal Sporting House,demanding that they must discontinue the use of their crocodile device inSingapore. In response, the licensee, acting for Plaintiff No. 1, engaged innegotiations with Defendant No. 1 and proposed a financial settlement toresolve the legal disputes over the use of the crocodile device mark by them.
This initial engagement led to further correspondence, where on 21st January,
1983, Plaintiff No. 1 sent a letter to Dr. Tan, enclosing a draft financial
settlement proposal for commercial co-existence of both parties’ trademarks.
This was met with a response from Defendant No. 1’s licensee, who included
representations of their existing “CROCODILE” trademarks, which includes
the Annexure-A device. These exchanges facilitated extensive negotiations,

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ultimately culminating in the 1983 Agreement signed by both parties on 17th
June, 1983.
5.6.

The 1983 Agreement was intended to avoid further legal disputes andfoster an amicable resolution regarding future registrations and use of therespective crocodile trademarks by both Defendant No. 1 and Plaintiff No. 1
in various countries. The Agreement enumerates five separate and distinct
marks belonging to Defendant No. 1 in Schedule B, with the fourth mark – “” being central to the current suit. As per the stipulations
contained in the 1983 Agreement, Plaintiff No. 1 would even facilitate theregistration of Schedule B trademarks in favour of Defendant No. 1. Since theAgreement’s inception in 1983, Defendant No. 1 has actively used these fivemarks, particularly “,” in Singapore, Indonesia, and othercountries. Reliance was placed on Ex. DW 1/81 to DW 1/90, which are thecertificates of registration of Annexure-A device in Defendant No. 1’s name.
As such, Lacoste is precluded from pursuing an action of passing off against
Crocodile International, as the use of the impugned mark by Crocodile
International was explicitly delineated and authorized within the terms of theAgreement. This clear contractual provision negates any claims of deceptive
similarity or confusion that could be construed as passing off under the current
legal framework.
5.7.

In alignment with the spirit of mutual co-existence established by the

1983 Agreement, through the 1985 Letter (dated 22nd August, 1985), theparties’ understanding was expanded to include Korea, India, Bangladesh,

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and Pakistan. This extension was crucial for Plaintiff No. 1’s ability to register
their trademarks in these territories, where Defendant No. 1 already held priortrademark rights. Without an Agreement between the parties in 1985,
Defendant No. 1, who held prior registration rights in their crocodile
trademarks, would not have consented to Plaintiff No. 1’s registration in thesecountries, making it impossible for them to register or market products under
the trademarks “LACOSTE” and the saurian device in the above-statedjurisdictions.
5.8.

Plaintiff No. 1 was the first to propose executing an agreement for co-existence in the Indian market in exchange for Korea. As a gesture of
goodwill, Dr. Tan included Pakistan and Bangladesh as additional countries
where Crocodile International would not object to Lacoste’s registration, as
outlined in the Agreement executed in 1985. This mutual understanding of
the parties is evident from subsequent communications dated 15th June, 1990
and 16th September, 1993. Pursuant to the Agreement of 1985, Plaintiff No. 1
also issued consent letters for registration of Defendant No. 1’s trademarks inPakistan. Thus, the parties intended for the 1985 Letter to be treated as alegally enforceable contract, with defined rights and liabilities.
5.9.

Crocodile International is till date, completely committed to honour

their intention and understanding of the Agreements executed in 1983 and1985. In this spirit, they did not oppose the registration of Plaintiff No. 1’strademarks in inter alia, India, Bangladesh, and Pakistan, despite Defendant
No. 1’s previous registrations. Defendants have spared no effort to maintaincongenial and harmonious atmosphere wherever possible. They have also
tried to differentiate between Plaintiff No. 1’s and Defendant No. 1’strademarks and towards this end, spent millions of dollars in advertising theCS(COMM) 1550/2016

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VERDICTUM.IN“CROCODILE” marks in English, Chinese, Indonesian and Thai languages.
The market is clearly able to discern the differences between Defendants’products with that of Plaintiffs’, which includes several factors, such as
differences in pricing policy and the steps undertaken by the parties in creating
their awareness and recognition. Plaintiffs’ action is therefore notmaintainable.
5.10. Plaintiff No. 1 and Defendant No. 1 have co-existed in close proximity
at several locations. The co-existence has been pleasant and mutually
beneficial, and the same spirit should be applied to India, keeping in view
Defendant No. 1’s rights with prior registration of the word and crocodile
device mark and a joint reading of 1983 and 1985 Agreements.
5.11. Plaintiff No. 1 has been impinging on Defendant No. 1’s trademark
rights in various territories, including Jordan and China, and despite anundertaking in the 1985 Agreement, they have refused to tender a noobjection to registration of the mark “CROCO KIDS” in Defendant No. 1’sfavour in Korea. Lacoste must not be permitted to reverse course and deviate
from their contractual obligations.
5.12. Lacoste’s claims in the instant suit are impacted by significant delay
and laches as Crocodile International has been openly using the Annexure-A
device in India since 1997. Given that Lacoste operates in the same trade, theymust have been aware of such use. Moreover, Lacoste first objected to the useof the impugned mark through their letter dated 18th December, 1998 resulting
in an unexplained delay of three years in initiation of these proceedings.
5.13. Without prejudice to the afore-noted, Crocodile International objectedto the maintainability of the present suit, contending that this Court lacks theterritorial jurisdiction to entertain the same. This suit, filed under Section

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62(2) of the Copyright Act, alleges infringement of copyright of the Plaintiffs
by Crocodile International. While Plaintiff No. 2 is conducting their business
operations in Delhi, they have not established their ownership to the copyrightas they are only a permitted user of Plaintiff No. 1’s trademarks. Therefore,
they lack the competency to maintain the instant proceedings. Further, theDefendants are also not residing or carrying out their business operations in
Delhi, further impacting this Court’s jurisdiction to decide the instant suit.
5.14. The mention of the ‘®’ symbol on Defendants’ products featuring theAnnexure-A device is a result of inadvertent oversight in a few batches as thesaid device is registered in Defendant No. 1’s name in Singapore and various
other countries, where these articles are exported. Since the institution of thesuit, Crocodile International has taken prompt steps to remove the said symbolfrom their goods.

PROCEDURAL ORDERS AND FACTS OF SIGNIFICANCE
I.
Case management proceedings
6.

The suit was instituted on 01st May, 2001, and listed for hearing for the

first time on 03rd May, 2001. Summons were however issued only on 23rd
May, 2001, whereafter the Defendants filed their written statement,
controverting the Plaintiffs’ case. The Plaintiffs have not filed replication to
the written statement despite opportunities, leading to closure of their rightthrough order dated 21st October, 2003.
7.

On 07th May, 2004, admission/ denial of documents was conducted.

Defendants admitted eight documents of Plaintiffs, which were marked as Ex.
PW 1/1 to PW 1/8. Plaintiffs admitted twelve documents of Defendants,
which were exhibited as DW 1/1 to DW 1/12.

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II.

Issues8.

On the basis of the pleadings, the following issues were framed on 14th

January, 2005:“1.
Whether the plaintiff is the owner of the copyright in the ‘Crocodile
Device’? OPP
2.
Whether the plaintiff is the proprietor of the ‘Crocodile Device’ In
India by virtue of registrations and use? OPP
3.
Whether the suit suffers from gross and unexplained delay and is hit
by laches and acquiescence? OPD
4.
Whether the defendant is entitled to use the ‘Crocodile Device’attached as Annexure ‘A’ to the plaint in India by virtue of an agreement
dated June 17, 1983 between the parties? OPD
5.
Whether this Court does not have territorial Jurisdiction to entertain
and try the present Suit? OPD
6.
Whether the plaintiffs are not entitled to any relief as they are guilty
of concealing (sic) vital facts and documents? OPD
7.
Whether the plaint is liable to be dismissed on account of it being
fictitious with an intention of thwarting the legitimate business of the
defendant? OPD
8.
Whether the use of ‘Crocodile Device’ attached as Annexure ‘A’ tothe plaint by the defendant violates the plaintiff’s’ copyright and trade markrights in India? OPP
9.
Whether the defendant is liable to be prosecuted and non-suited on
account of use of the symbol ® with a view to misrepresent the members of
the trade and public that the ‘Crocodile Device’ is a registered trade markin India? OPP
10.
Whether the first defendant is the prior adopter and user of thesaurian device and the owner of trade mark rights in the same? OPD
11.
Whether the first plaintiff and the first defendant signed and enteredinto co-existence agreements dated 17th June 1983 and 22nd August 1985 forrespective territories? OPD”

III.

The conduct of trial

9.

Post framing of issues on 14th January, 2005, parties filed their list of

witnesses and the trial commenced. The Plaintiffs deposed two witnesses, Mr.
Christian London [PW1] and Mr. S.S. Negi [PW2]. The Defendants also
examined two witnesses, namely, Mr. Trisno Kemat Leono [DW1] and Mr.
Ramesh Babu [DW2].

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10.

Plaintiffs’ first witness, Mr. Christian London, a French national,

requested for a translator at the time of cross-examination, which was allowed
on 08th January, 2007, and one Ms. S. Shobha was appointed as the translator.
However, his testimony faced hurdles as prior to commencement of crossexamination, the Defendants raised multiple objections, highlighting several
discrepancies in the affidavit by way of evidence filed by Mr. London. They
pointed out that Mr. London had filed two affidavits, one dated 03rd
December, 2005, and the other dated 02nd February, 2006. Additional
objections were also raised concerning the introduction of new documents inthe affidavits, documents being in foreign language without accompanying
translations, and improper legalization and lack of an apostille. These
objections were overruled through a detailed judgment dated 18th January,
2007, where the Court directed the Defendants to proceed with the crossexamination of Plaintiffs’ witness. Taking note of Defendants’ conduct andthe delay caused, they were burdened with costs of Rs. 50,000/-. Mr. London
was subsequently cross-examined on 18th January, 2007 and 19th January,
2007. On 20th January, 2007, after conclusion of the cross-examination, PW1
was also re-examined and further cross-examined.
11.

The afore-noted interlocutory order dated 18th January, 2007 wasassailed in FAO(OS) 110/2007, which was decided by the Division Benchthrough detailed judgment dated 20th December, 2007, dismissing the appeal,and imposing further costs of Rs. 15,000/-.
12.

In the meantime, Plaintiffs’ second witness, Mr. Anoop Singh, was nottraceable as he was not in contact with Plaintiffs. Through I.A. 3174/2008,
the Plaintiffs then applied for the said witness to be substituted by Mr. S. S.
Negi. This request was again met with opposition from Defendants, andCS(COMM) 1550/2016

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decided through order dated 07th August, 2008, allowing the substitution of
witness.
13.

Subsequently, through I.A. 3221/2011, Plaintiffs sought to produce

originals of the Power of Attorney in favour of PW2 and certificate of theChartered Accountant, attesting to the sales turnover of Plaintiff No. 2. Thisapplication was allowed in part on 24th February, 2012, permitting thePlaintiffs to place on record the original Power of Attorney. Plaintiffs thenassailed the said order of the Joint Registrar in O.A. 58/2012, which wasallowed in their favour on 19th July, 2012, subject to payment of costs of Rs.
50,000/-.
14.

Later, the Plaintiffs preferred I.A. 10811/2013, seeking permission to

produce an Arbitration Award dated 15th August, 2011 passed by the
Arbitrator in Singapore in a dispute between the parties concerning the 1983
Agreement. Their request was allowed on 24th February, 2014, subject toimposition of costs.
15.

Testimony of Plaintiffs’ second witness, Mr. S. S. Negi, was finallyconcluded on 28th January, 2016 and thereafter, on 09th March, 2016, theAward dated 15th August, 2011 was admitted by Defendants, without
prejudice to the interpretation of the contents. It was marked as Exhibit P-1.
16.

Defendants examined Mr. Trisno Kemat Leono as DW1, whose

deposition was concluded on 24th February, 2018. Mr. Ramesh Babu, DW2
was then examined and the trial stood concluded on 30th November, 2018.
17.

After the trial concluded, an application under Order XXXIX Rules 1

and 2 of the Code of Civil Procedure, 1908 [I.A. 10863/2020] was filed by
the Plaintiffs seeking to prevent the Defendants from using their newly

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devised trademarks “” on a standalone

basis, arguing that use thereof reflects Defendants’ intention to imitate thePlaintiffs’ trademarks, causing consumer confusion. However, given theadvanced stage of the suit, on 23rd November, 2020, the parties consented toaddressing arguments in the suit for final adjudication. Consequently,
extensive arguments were advanced, which stood concluded on 15th May,
2024. The Plaintiffs’ interlocutory application [I.A. 10863/2020] is being
decided through a separate order passed today.
18.

The Court has considered the submissions advanced and thoroughly

examined the evidence presented by the parties. Documentary evidence
submitted by the parties, which has been specifically referred to in the
judgment, is delineated in the appendices to the judgment.

ISSUE-WISE ANALYSIS AND FINDINGSISSUE NO. 5 - WHETHER THIS COURT DOES NOT HAVE TERRITORIALJURISDICTION TO ENTERTAIN AND TRY THE PRESENT SUIT?
OPD

19.

The onus to prove the afore-noted issue is on the Defendants. No

submissions were advanced on this issue during the course of final arguments
by either party, nor were the witnesses examined on this aspect. The issue
stems from Crocodile International’s objection to the territorial jurisdiction ofthis Court in their written statement. They contend that under Section 62(2)of the Copyright Act, a suit can be instituted within territorial jurisdiction of
the courts where the Plaintiff is residing or carrying on business; however, in
this case, Plaintiffs have not established their right, title or interest to theCS(COMM) 1550/2016

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copyright comprised in the artistic work of the crocodile logo. Crocodile
International further questioned the competence of Plaintiff No. 2, who iscarrying on commercial operations in Delhi, to initiate this lawsuit. According
to the Defendants, the Registered User Agreement [Ex. PW 2/4] executed
between the two Plaintiffs, only pertained to a license for using Plaintiff No.
1’s trademarks, and not the copyright in artistic work of the crocodile logo.
Therefore, the benefit of Section 62(2) is not available to Lacoste as Plaintiff
No. 2 has not acquired right in Plaintiff No. 1’s copyright. It is alsoemphasized that Defendants were not manufacturing or trading under the
Annexure-A device within territorial jurisdiction of this Court.
20.

The Plaintiffs have filed this composite suit for trademark andcopyright infringement before this Court on the basis of Section 62 of the
Copyright Act and availability of the offending goods within the territorial
jurisdiction of this Court. Section 62 of the Copyright Act reads as follows:“Section 62- Jurisdiction of court over matters arising under this Chapter(1) Every suit or other civil proceeding arising under this Chapter in respectof the infringement of copyright in any work or the infringement of any otherright conferred by this Act shall be instituted in the district court having
jurisdiction.
(2) For the purpose of sub-section (1), a “district court having jurisdiction”
shall, notwithstanding anything contained in the Code of Civil Procedure,
1908 (5 of 1908) or any other law for the time being in force, include a district
court within the local limits of whose jurisdiction, at the time of the institutionof the suit or other proceeding, the person instituting the suit or otherproceeding or, where there are more than one such persons, any of themactually and voluntarily resides or carries on business or personally works
for gain.”

21.

Section 62(2) of the Copyright Act authorizes initiation of legal

proceedings before the court within whose territorial limits the Plaintiff
resides or carries on business or personally works for gain. The provision, as
worded, endows jurisdiction to a forum to adjudicate the cases of copyrightCS(COMM) 1550/2016

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infringement based on the convenience of the Plaintiff in addition to theprovisions of the CPC. This avenue does not override the jurisdiction of courts
envisaged in Section 20 of the CPC, rather it supplements the grounds forinvoking a court’s jurisdiction. This is evident from the inclusive nature of thedefinition of a “district court having jurisdiction” in Section 62(2), suggestinga wider import than Section 20 of the CPC. This legal principle has beenrecognized in the decisions of the Supreme Court in Exphar SA and Anr. v.
Eupharma Laboratories Ltd. and Anr.,8 and Dhodha House v. S.K. Maingi.9
22.

It is undisputed that Plaintiff No. 2 in the instant case, being a ‘person

instituting the suit’ conducts their business operations in Delhi. The
uncontroverted promotional materials submitted by Crocodile International,
such as Ex. DW 1/17, unequivocally establish that the Defendants offer the
impugned apparels displaying the Annexure-A device through their retail
outlets across the country, including New Delhi. Therefore, the cause ofaction for violation of copyright has partly emerged in Delhi, thus prompting
this Court’s jurisdiction in terms of Section 20(c) of the CPC.
23.

In addition to the allegations of copyright infringement, Lacoste is also

seeking injunctive reliefs against Crocodile International to prevent
infringement and passing off of their trademarks. As per Section 105 of theTrade and Merchandise Marks Act, 1958,10 a suit for infringement andpassing off may be initiated before a court of appropriate jurisdiction, notinferior to a District Court.11 The goods bearing impugned mark are available
8(2004) 3 SCC 688.
(2006) 9 SCC 41.
10“Trade Marks Act, 1958.”
11
In terms of Section 159(4) of the Trademarks Act, 1999, all legal proceedings instituted before thecommencement of the 1999 Act shall be governed by the Trade and Merchandise Marks Act, 1958. The
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in Delhi, and the pleadings and evidence presented indicate a valid cause ofaction for trademark infringement and passing off within this Court’s
territorial jurisdiction. Consequently, the Defendants’ objection to themaintainability of the suit does not find favour with the Court.
Finding
24.

In view of the lack of evidence and the admitted sale of impugned

products within Delhi, the Defendants have not been able to sustain theirobjection to this Court’s territorial competence to decide the present suit.
Accordingly, this issue is answered in favour of the Plaintiffs.
ISSUE NO. 1 - WHETHER THE PLAINTIFF IS THE OWNER OF THE COPYRIGHT IN
THE “CROCODILE DEVICE?”
OPP

25.

Copyright is a form of protection given to the authors of original

creations, including artistic works. The key factor in assessing copyrighteligibility is the originality of the creation, and its expression in a tangible
form that allows for its reproduction. Lacoste’s claim to copyright hinges notjust on creation, but also on the original expression and subsequent
registration of the crocodile device as an artistic work. Thus, in ascertaining

copyright ownership of Lacoste, their crocodile device – “” mustbe examined for its originality and expression.
26.

Lacoste submitted that the crocodile device was created by Mr. Robert

George in France, where it was first published in 1927. PW1 provided apresent suit was filed on 01st May, 2001. At the time of initiation of these proceedings, the Trademarks Act,
1999 had been notified (on 30th December, 1999), but not enforced. Accordingly, the Court has decided theinstant suit guided by the principles entailed in the Trade and Merchandise Marks Act, 1958.

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detailed deposition affirming the creation and publication history of thedevice, tracing the conveyance of rights from Mr. Robert George to Plaintiff
No. 1. Mr. London has highlighted the continuous use of this crocodile device
by Lacoste to demonstrate a longstanding recognition and fixation of theartwork on their products. PW1 has further presented Copyright Registration
Certificate bearing No. A-62692/2002 dated 16th January 2002 [Ex. PW-

1/10], which confirms the copyright registration of “

” in the nameof Plaintiff No. 1. The application for registration filed on 09th June, 1999 by
Plaintiff No. 1 and the certificate, explicitly record the initial publication dateof 1927 in France, and a subsequent publication in India in 1992, reinforcing
the work’s continuous recognition and protection under copyright laws.
27.

It is crucial to note that Mr. London’s testimony regarding the creation,

registration, and ongoing validity of the copyright for the crocodile device
went unchallenged by the Defendants during cross-examination. This
uncontroverted testimony is a strong indicator of the reliability andacceptance of the facts, as presented by Lacoste. Furthermore, during thearguments, Crocodile International did not contest the claim to copyright,
implicitly acknowledging Lacoste’s asserted rights.
Finding
28.

Based

on

the

evidence

presented,

includingthehistorical

documentation concerning registration and the uncontested testimony of Mr.
London, the Court finds that Plaintiff No. 1 has satisfactorily establishedcopyright ownership over the crocodile device. The copyright in this artistic
work remains valid and subsisting not only in India, but also globally, thereby

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granting Plaintiff No. 1 the exclusive rights to control its reproduction and use
and protect infringement under the current legal framework governing
copyright. Issue No. 1 is accordingly decided in favour of the Plaintiffs, andagainst the Defendants.
ISSUE NO. 2 - WHETHER THE PLAINTIFF IS THE PROPRIETOR OF THE‘CROCODILE DEVICE’ IN INDIA BY VIRTUE OF REGISTRATIONS AND USE?
OPP

29.

Trademark ownership in India is established through registration under

the Trade Marks Act, 1958 or Trademarks Act, 1999, or by virtue of extensive
and continuous use that leads to brand recognition in the market. In the caseat hand, Lacoste asserts ownership over their crocodile device both bytrademark registrations and use since October, 1993. In support, they havepresented substantial evidence: the legal proceedings certificates in respect ofregistrations No. 400265 for the mark ““” and 400267 for the mark” were provided as part of the evidence [Ex. PW 1/11 and PW

1/12, respectively] and referenced during the testimony of PW1. Plaintiff No.
1 is the only party holding a registration for the standalone version of theircrocodile device viz. “” in India. These registrations, which dateback to 19th January, 1983, have not only legally strengthened Lacoste’s
claims, but have also presumably contributed to the establishment of the“LACOSTE” mark and the crocodile device as a recognized symbol of theirgoods in the market. Additionally, in his deposition, PW1 has confirmed that

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the apparels bearing the “LACOSTE” mark and the crocodile device werefirst launched in India in October 1993, with the opening of the first Lacosteboutique. Moreover, PW2, Mr. S.S. Negi, has also testified that following theexecution of the User Agreement between Plaintiff No. 1 and Plaintiff No. 2
on 23rd July, 1994 [Ex. PW 2/4], Plaintiff No. 2 has been extensively tradingin products bearing Plaintiff No. 1’s trademarks. Their definite andcategorical statements concerning the year of commercial use have not beendisproved in trial. Crocodile International did not cross-examine thePlaintiffs’ witnesses to debilitate their assertions regarding the usage of theLacoste’s marks in India.
30.

Thus, the documentary evidence, including trademark registration

details, and absence of evidence negating their claims, demonstrate Lacoste’s
trademark rights over the crocodile device. This combination of statutory
registration and use of the trademark by the Plaintiffs strongly supports theconclusion that Plaintiff No. 1 is indeed the proprietor of the crocodile device
in India, thus reinforcing their claim to exclusive rights over the mark. The
absence of any cross-examination or contrary arguments from Crocodile
International concerning the validity of these trademark registrations or the
associated rights further suggest an acceptance, or at least, a failure to dispute,
Lacoste’s claims to these marks.
Finding31.

In light of the above evidences of valid and active trademark

registrations, international recognition and specific legal protection, coupledwith the lack of opposition from Defendants regarding these marks, the Court
concludes that Plaintiff No. 1 is indeed the rightful proprietor of the registered

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crocodile device “.” Consequently, issue No. 2 is decided infavour of the Plaintiffs, affirming their exclusive rights to use and enforce thetrademark in relation to the specified goods, as per their registration No.
4000267.
ISSUE NO. 10- WHETHER THE FIRST DEFENDANT IS THE PRIOR ADOPTER AND
USER OF THE SAURIAN DEVICE AND THE OWNER OF TRADE MARK RIGHTS IN
THE SAME?
OPD

32.

Crocodile International has founded their defence on honest adoption

and continuous use of the ‘crocodile family of marks’ since 1947 worldwide,
which is supported with evidence. Specifically in India, their first registration
dates 12th June, 1952 for the mark “.” Over the decades,

Crocodile International alleges to have developed and used various saurian/crocodile devices, which are illustrated in the evidence submitted as Ex DW
1/16 (colly). The visual representations provided are crucial in assessing thescope and distinctiveness of Crocodile International’s marks in comparison to
those claimed by Lacoste. The relevant variants of Defendants’ crocodile/saurian device are therefore, reproduced below:

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33.

The

saurian device

which

is

centraltothelitigation, “,” is depicted at point B1 of the afore-mentioned chart.
Given the historical context of the legal conflict between the parties, in thecurrent proceedings, it is essential to distinguish between the use and adoptionof the two saurian devices – the one incorporated within the Defendant No. 1’
registered trademarks, and the one depicted in Annexure-A. With this
distinction in mind, the Court proceeds to examine the pleadings and evidence
to assess Defendant No. 1’s claim of prior use of the saurian device portrayedin Annexure-A to the plaint.

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34.

Defendant No. 1’s charge of prior use in India pivots on their first

trademark registration No. 154397, dated 12th June, 1952, for the mark “,” in the name of Dr. Tan. This registration was
subsequently assigned to Crocodile International Pte Ltd. (formerly, Li Seng
Min Company Ltd.). Later, Defendant No. 1 secured another registration

operative from 21st November, 1990 for “” in class 25, underNo. 540315. Defendant No. 1 commercially launched their products bearing
the composite trademarks illustrated above, through their licensee –Defendant No. 2, in August, 1998. The commercial launch was preceded withpromotional

campaigns

documented

throughcautionnoticesandadvertisements in major newspapers from 1995 onwards, with theadvertisements particularly intensifying post 1998. This is evident from thecaution notices issued in Deccan Herald on 05th December, 1995 [Ex. DW
2/P3] and in The Hindu on 27th April, 1998 [Ex. DW 2/6], as well as Ex. DW
1/17, being the advertisements issued by Defendants in various newspapers,such as, The Hindu on 09th, 12th, 15th, 17th and 28th October, 2001, Assam
Tribune on 22nd October, 2001, Chandigarh Times on 13th October, 2001, andSambad on 18th October, 2001. These documents consistently depict the useof Defendant No. 1’s crocodile devices, including Annexure-A device inconjunction with the word/ mark “CROCODILE”/ “CROCODILE
INTERNATIONAL,” reinforcing the consistent use of a composite mark by
Crocodile International from the year 1998 and upwards.

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35.

In the pleadings and testimony of DW1, it is asserted that Defendantscommenced the use of crocodile mark and devices, encompassing AnnexureA device, from the year 1997. Although Defendant No. 1 has actively usedthe crocodile word and device mark in India since at least 1997, as stated intheir written statement, there is a notable absence of specific pleading or
assertion that they were the prior adopters and users of the saurian device
depicted in Annexure-A to the plaint, before the Plaintiffs. This omission issignificant, especially since Defendants do not deny the use of the AnnexureA device. In fact, in their written statement, it is contended that “(i)t is
therefore submitted that the defendants have been advertising and using the
Crocodile word and device mark in India since at least 1997 i.e. for the last
4 years. It is strongly denied that the defendants commenced use of the markin India since the last 2 years only.” Without a clear assertion of prioradoption specific to the device in question, the defence lacks the specificity
required to effectively counter Lacoste’s claims of earlier rights.
36.

Lacoste, on the other hand, has proved their trademark rights in theregistered devices “” and “” since 19th January,

1983. They have also submitted evidence of use of “LACOSTE” trademark
and crocodile device since 1993, beginning with the launch of their productsin October, 1993. In this scenario, Defendant No. 1’s assertions must be
examined in respect of two distinct trademarks – the composite crocodile
device and the Annexure-A device:
36.1. Defendant No. 1’s prior rights in the composite crocodile device: Dueto their historical registration dating back to 1952 and documented use sinceCS(COMM) 1550/2016

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1997, the Court finds that Defendant No. 1 indeed possesses prior rights inthe composite device that entail a crocodile device accompanied with theword “CROCODILE” as Plaintiff No. 1’s registration (1983) anddemonstrated use (1993) of their devices are subsequent.
36.2. Prior adoption and use of Annexure-A device: Defendant No. 1 has
not specifically pleaded prior adoption and use of the standalone saurian
device shown in Annexure-A, which is central to Lacoste’s claims. Thus, any
claim by Defendant No. 1 to prior adoption and ownership of trademark rights
is strictly confined to the composite saurian device that forms part of theirregistered trademarks. This point is critical: while Defendants are the priorregistrants and users of a composite saurian device, this does not
automatically confer rights over any and all variations of saurian devices,
especially those that are not part of their registered trademarks. Contrastingly,
Lacoste has proved their rights over the standalone crocodile device “,” which was registered in their name in 1983. This timeline
predates Defendant No. 1’s claimed use of the Annexure-A device by several
years, establishing a precedent of use and recognition in the Indian market infavour of Lacoste. Thus, Lacoste’s registration of their standalone crocodile
device not only proves their claim to the rights in the trademark, but alsoenhances their standing to allege infringement based on prior use andregistration.
Finding37.

To conclude, there is clear acknowledgment by the Defendants in theirwritten statement that their use of the saurian device commenced in 1997,
with documentary proof of continuous use starting from 1998. Lacoste’sCS(COMM) 1550/2016

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rights in their registered device operate w.e.f. 19th January, 1983. At the timethat when Plaintiff No. 1 obtained registrations in India, Defendant No. 1 had
not adopted the Annexure-A device. Defendant No. 1 therefore, cannot assert
prior adoption of the infringing Annexure-A device as they are the subsequent
adopter and user thereof.
38.

Nonetheless, Defendant No. 1 has established prior rights to theirregistered composite mark that includes a saurian device [“

and “

”

”]. These registrations are clearly delineated to include

only the specific composite mark as registered and Crocodile Internationalhas failed to show any evidence that would extend these prior rights to thestandalone saurian device depicted in Annexure-A, which substantiallyresembles the device used by the Lacoste.
39.

Therefore, issue No. 10 is decided by holding that Defendant No. 1 is

not the prior adopter or user of the Annexure-A saurian device. They retain
ownership of the trademark rights solely in the context of their registeredcomposite marks, bearing registrations No. 154397 and 540315.
Consequently, while they maintain rights to their composite trademark, they
do not hold prior rights to the standalone device that closely resembles
Plaintiff No. 1’s registered mark. Issue No. 10 is thus resolved in the above
terms.
ISSUE NO. 4 - WHETHER THE DEFENDANT IS ENTITLED TO USE THE‘CROCODILE DEVICE’ ATTACHED AS ANNEXURE ‘A’ TO THE PLAINT IN INDIA
BY VIRTUE OF AN AGREEMENT DATED JUNE 17, 1983 BETWEEN THE PARTIES?
OPD

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ISSUE NO. 11 (REWORDED) - WHETHER THE FIRST PLAINTIFF AND THE FIRSTDEFENDANT SIGNED AND ENTERED INTO CO-EXISTENCE AGREEMENTSDATED 17TH JUNE, 1983 AND 22ND AUGUST, 1985 FOR RESPECTIVETERRITORIES? IF SO, WHETHER SUCH CO-EXISTENCE EXTENDS TO
ANNEXURE-A DEVICE IN INDIA?
OPD
ISSUE NO. 8- WHETHER THE USE OF ‘CROCODILE DEVICE’ ATTACHED AS
ANNEXURE ‘A’ TO THE PLAINT BY THE DEFENDANT VIOLATES THE
PLAINTIFF’S COPYRIGHT AND TRADE MARK RIGHTS IN INDIA?
OPP

40.

For an effective determination, and considering the nature of thecontroversy and submissions advanced, under Order XIV Rule 5 of CPC, it isdeemed appropriate to reframe issue No. 11 to “Whether the first plaintiff andthe first defendant signed and entered into co-existence agreements dated 17th
June, 1983 and 22nd August, 1985 for respective territories? If so, whether
such co-existence extends to Annexure-A device in India? OPD.”
41.

Crocodile International rebuts the allegations of copyright andtrademark infringement, claiming honest and concurrent use, supplemented
by terms of peaceful co-existence entailed in the 1983 Agreement and 1985
Letter. These agreements are purported to justify Crocodile International’s
continued use of the Annexure-A device within the agreed territories, making
their actions compliant with mutually recognized terms, rather thaninfringing. In this context, issue No. 4 pertains to an agreement dated 17th
June, 1983, which is critical in determining whether Defendant No. 1 has theright to use the Annexure-A device within India, thereby directly impacting
the legal basis for any trademark use within this territory. In deciding issue
No. 11, we would explore the existence and specifics of the co-existenceagreements dated 17th June 1983 and 22nd August 1985, which are alleged tobe dictating the terms under which each party may operate within their

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respective territories. The decision on issue No. 8 will ascertain whether such
use infringes upon Lacoste’s copyright and trademark rights – a determinationthat hinges on the conclusions drawn from the scope and applicability of therights discussed in issues No. 4 and 11. Collectively, the above-captioned
issues focus on the rights and agreements pertaining to the use of theAnnexure-A device. Given the overlapping nature of these concerns, a joint
assessment is both appropriate and necessary.
42.

The court’s primary task in any case of trademark and copyright

infringement is to determine the degree of similarity between the contested
marks and works and to assess the ensuing likelihood of confusion anddefiance of exclusive rights. This evaluation rests on the anvil of Section 29of the Trade Marks Act, 1958, which addresses trademark infringement, andSection 51 of the Copyright Act, concerning copyright infringement.
I.

Similarity between the two trademarks

43.

Here, both trademarks feature a crocodile for garments, making themconceptually identical and leaving little room for dispute on the point ofsimilarity. In trademark disputes involving the arbitrary use of designs suchas the present, the courts would typically resolve the issue swiftly if the two
crocodile logos have apparent resemblances. However, this case presents a
unique context: both parties have acknowledged co-existence and holdregistrations for a crocodile design within their trademarks. This co-existencenecessitates a detailed scrutiny of specific elements of the conflicting saurian
emblems.

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44.

The visual analysis of the two trademarks “” and “” reveals identical shape and posture. Both crocodiles are
depicted in a horizontal position with an upwardly curved tail. Their body
postures are quite similar, with both showing a side view portraying the legs
and tail in a similar fashion. The depiction of the feet and claws is also similar,
entailing a detailed and realistic representation of a crocodile. Although there
are certain distinctions in the limbs and other features of the impugned mark,the positioning mirrors that of Lacoste’s logo, reinforcing the overall visual
similarity. Both the devices feature an open mouth with visible teeth, whose
shape and placement are nearly alike. The detailed portrayal of the teeth andshape of the mouth are critical visual elements that consumers associate with
Lacoste’s mark. The arrangement and pattern of scale on the back of both
reptiles is very similar, further contributing to visual resemblance. Besides,
the overall silhouette of both crocodiles, including the head shape, body
curvature, and tail positioning, is almost indistinguishable. Both designs
convey a similar aggressive stance, enhancing the conceptual similarity. This
congruence in the overall silhouette not only heightens the visual similarity,
but also strengthens the conceptual resemblance. These elements are crucial
in the holistic assessment of the marks, as they contribute to the overall
impression retained by the average consumer. The near-exact duplication of
the specific posture of the crocodile and other features by Crocodile

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International exacerbates the deceptive similarity between the two marks,
creating a substantial likelihood of consumer confusion.
45.

Under Section 2(1)(d) of the Trade Marks Act, 1958, a mark is

considered to be deceptively similar if it “so nearly resembles that other markas to be likely to deceive or cause confusion.” This principle of ‘likelihood ofconfusion,’ as elucidated by judicial precedents, warrants an examination of
the contesting marks with a focus on their similarities, rather than theirdifferences. In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.,12
reinforcing the holding in Amritdhara Pharmacy v. Satya Deo Gupta,13 theSupreme Court held that the assessment of deceptive similarity extends
beyond a side-by-side comparison, entailing a consideration of the overall
impression delivered by the marks and the imperfect recollection of an
average consumer. In James Chadwick and Bros. Ltd. v. National Sewing
Thread Co. Ltd.,14 the conflicting trademarks were a “representation of a bird
perching on a cylinder of cotton sewing thread with its wings fully spread out”
alongside the name ‘Eagle brand’ of the Respondent therein and“representation of an eagle with its wings half opened trying to stand erect onsome flat object” with the brand name ‘Eagley Sewing Machine Thread’ of
the Appellant therein. In these proceedings, arising out of grant of opposition
to Respondent’s trademark application, the Division Bench of High Court ofBombay held that in ascertaining the possibility of confusion, courts mustevaluate the resemblances in the distinguishing features of the trademark,rather than undertaking a meticulous examination to discover their points of

12(2001) 5 SCC 73.
1962 SCC OnLine SC 13.
141951 SCC OnLine Bom 33.
13

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differences. In these circumstances, irrespective of the differences in the
posture, poise and positioning of the birds and their wings, the Court ruled infavour of the Appellant therein, finding that a person of ordinary intelligencewould mistake the impugned mark to be of the Appellant therein.
46.

Having carefully compared the distinctive elements of both thePlaintiffs’ and Defendants’ crocodile logos, it becomes clear that thesimilarities are not only numerous, but also substantial. Bearing the aforementioned principles of evaluation in mind, the noticeable difference in theorientation of the crocodiles – with Lacoste’s crocodile facing right, andCrocodile International’s facing left – carries minimal weight and is likely tobe perceived as insignificant by the average consumer. The dominant visual
similarities between the two marks discussed previously, create a strong
overall ocular and conceptual resemblance. These elements are so closely
mirrored that they overshadow the minute directional difference of the logos.
To gain a deeper understanding, a comparison is made below between thereversed version of the Annexure-A device, oriented to face right, with
Lacoste’s crocodile device is drawn below:
Lacoste’s crocodile device

47.

Crocodile International’s device

Controverting the allegations of consumer misperception, Crocodile

International stated in their defence that it is standard industry practice toCS(COMM) 1550/2016

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emboss only the logo on the front pockets of t-shirts, while the tags and labels
clearly identify Crocodile International as the manufacturer. Despite theapparent lack of supporting evidence, the Court finds that the striking
resemblance between Lacoste’s crocodile mark and the Annexure-A device
across multiple key visual aspects, augments the prospects of ‘initial interest
confusion.’ This means that an average consumer might initially believe thatthe goods are from Lacoste based on the prominent and recognizable featuresof the impugned mark, even though this confusion may not persist throughout
the transaction.15 Thus, this substantial resemblance strongly supports afinding of deceptive similarity.
48.

In the course of cross-examination, Lacoste questioned the Defendants’witnesses about the likelihood of confusion between the parties’ marks,
particularly referring to a version of the saurian device allegedly used by

Defendant No. 1, depicted at point A10 of Ex. DW 1/16 – “,” which represents a crocodile facing right. The relevant responses of DW-1
are reproduced below:
Testimony of DW1 recorded on 24th February, 2018:“Q55. Please see para no. 13 of your affidavit and explain as to what isyour understanding of there being no cause for “any conflict or confusionin the market”. Is it on account of your Saurian device facing left andplaintiff’s device facing right or are there other considerations as well?
Ans. The direction of Saurian device is one of the main considerations thatis why we have not possibly used trademark A10.”
Testimony of DW2 recorded on 30th November, 2018:

Vol. 4, J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, ⸹23:6 (5th edn.,2023).
15

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VERDICTUM.IN“Q1. Please see the specific trademark encircled in Red in Ex DW2/6 at
Point X and compare the same with the certified copy of plaintiff’s
registered trademark bearing No. 400267 in Class 25 (Ex PW1/12). Please
point out the difference between the two?
A. In the representation of the mark in Ex DW2/6 encircled in red, theCrocodile face is on the left hand side. The tail on this device is turning on
the upper side towards the left. The word Crocodile is written below thedevice. In the registration of the plaintiff on the other hand, the Crocodile
face is on the right hand side and the tail is going on the upper side towards
the right. There are no other differences.
Q2. Is it correct that a mirror image of the defendant mark would makethe crocodile face right and mirror image of plaintiff’s mark would makeit face left?
A That is correct.”[Emphasis Supplied]49.

The above-noted excerpts demonstrate that DW1 and DW2

acknowledge the similarities between Lacoste’s crocodile device andAnnexure-A device, conceding that the key distinction lies in the orientationof the two crocodiles. However, during the course of arguments, counsel for
Crocodile International argued that the images of Lacoste’s trademarks shown

to DW2 viz. “

actual device used “”/“” differ significantly from the”/ “,” thereby suggesting thatthe response of the witness cannot be understood as an admission. However,in the opinion of the Court, the witnesses deposing on behalf of the parties
were fully conscious of the dispute and the trademarks involved in thecontroversy. Therefore, presenting an unclear image to DW 2, the constituted
attorney of Defendant No. 2, does not dilute their admission of the overall
optical similarities. Consequently, this objection raised is rejected.

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50.

To conclude, in light of the jurisprudence of trademark law, which iswell-established by the court rulings referred above, and based on the detailed
visual analysis conducted, the Court observes that the visual and conceptual
parallels between Lacoste’s crocodile device and Annexure-A device have astrong potential to mislead consumers or cause them to confuse one brandwith another. The similarities in shape, silhouette, and key design elements,
especially when coupled with their application to identical products, create asignificant likelihood of consumer confusion. Given these comprehensive
observations, it is evident that the Annexure-A device used by Crocodile
International so nearly resembles Lacoste’s mark that it meets the criteria forbeing deceptively similar under Section 2(1)(d) of the Trade Marks Act, 1958.
I.I.

Judicial precedents cited by Crocodile International51.

To refute the allegation of deceptive similarity, Crocodile Internationalrelied on judgments rendered by courts of different jurisdictions [Ex. DW
1/92 to DW 1/97]. After a thorough examination of the same, the Court findsthat these rulings vary on facts, and do not advance the Defendants’ case forfollowing reasons:51.1. Ex. DW 1/92: Lacoste had instituted a suit against Crocodile
International before the District Court of Yangon, Myanmar claiming
infringement of “LACOSTE” trademark and crocodile device, which was
decreed in their favour. The device impugned in the said suit contained “theword crocodile and the figure of a crocodile.” An appeal was filed before theDivisional Court of Yangon in Civil Appeal No. 2/2001. The Divisional
Court, through judgment dated 07th March, 2001, set aside the District Court’sorder, finding a lack of territorial jurisdiction to entertain the suit. On merits,

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the Court opined that the simultaneous presence of the two marks will not
result in confusion as the word ‘Lacoste’ is contained inside the device of
crocodile, and is distinguishable from a crocodile figure with the word
‘Crocodile.’
51.1.1. The rival trademarks in the instant proceedings are distinct from themarks forming a subject matter of the afore-noted suit. Here, the Defendant isusing the Annexure-A device unaccompanied with the word ‘Crocodile,’ anattribute that considerably increases the likelihood of confusion. Therefore,
the observations of the Divisional Court of Yangon, Myanmar do not holdsignificance in the present context.
51.2. Ex. DW 1/93 and Ex. DW 1/94: Crocodile International filed an
application for registration of a crocodile device containing the word
‘Crocodile’ in respect of clocks, jewellery, watches, shoe ornaments etc. in
Sri Lanka. The application was opposed by Lacoste. The Director General ofIntellectual Property dismissed Lacoste’s objection on 10th September, 2012
[Ex. PW 1/94] in view of the parties’ continued co-existence across classes
and the inclusion of the words ‘Lacoste’ and ‘Crocodile’ in their respective
trademarks. Lacoste challenged these findings before the High Court of theWestern Province Holden in Colombo, Sri Lanka. The High Court delivered
the judgment on 03rd December, 2013 [Ex. DW 1/93], upholding the view of
Director General of Intellectual Property. It opined that there waslongstanding concurrent use of the image/ device of a crocodile with orwithout the words ‘Lacoste’ and ‘Crocodile.’
51.2.1. The trademarks in contest before this Court are distinguishable fromthe judgments discussed above. Further, the observations of the High Courtof uncontested concurrent use are also not relevant to the present dispute as

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Lacoste launched a challenge to Crocodile International’s use of Annexure-A
device at the first instance.
51.3 Ex. DW 1/96 and Ex. DW 1/97: Ex. DW 1/96 and DW 1/97 pertain todecisions of the Court of Appeal of Paris and Supreme Court of Paris. In thesedecisions, the courts categorized Lacoste’s two trademark applications as
fraudulent. This conclusion is premised on Lacoste’s concealment of the 1983
Agreement while pursuing their trademark applications, and is irrelevant to
the dispute at hand. Notably, the Court of Appeal declined to evaluate theeffect of the 1983 Agreement, citing its limited territorial applicability.
52.

In light of the foregoing findings of deceptive similarity between the

two trademarks, we must now address whether the Defendants’ use of
Annexure-A device infringes upon the Plaintiffs’ trademark rights. Thisinquiry necessitates an examination of the Defendants’ defence based on coexistence, anchored in the 1983 Agreement and 1985 Letter. These
agreements or arrangements are critical as they potentially delineate the extent
of legal violations and permissible scope of use for the impugned mark within
specific territories.
II.

The 1983 Agreement

II.I. Historical backdrop to the execution of the 1983 Agreement
presented by Crocodile International53.

In 1971, when Plaintiff No. 1 commenced operations in Japan,

Defendant No. 1 initiated a legal action against Plaintiff No. 1’s licensee inthe District Courts of Osaka, Japan. In the said proceedings, Plaintiff No. 1
contended that their mark, featuring what they described as an ‘alligator’ andprominently including the word “LACOSTE,” was distinct from Defendant

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No. 1’s crocodile device, which diminishes the risk of confusion or deception.
On 24th February, 1971, the court ruled in favour of Plaintiff No. 1, affirming
the distinguishability of the marks.
54.

Subsequent interactions between the parties further underscored thecontentious nature of their relationship concerning rights in their respective
trademarks. On 16th July, 1980, Defendant No. 1 issued a cease-and-desist
letter to Plaintiff No. 1’s licensee in Singapore, Royal Sporting House,demanding that they discontinue the use of the crocodile device [Ex. DW
1/19]. In their response dated 30th July, 1980 [Ex. DW 1/20], Royal Sporting
House maintained that Plaintiff No. 1’s logo represented an alligator rather
than a crocodile, emphasizing the visual distinctions between the two andasserting that their customers associate their products with the name
“LACOSTE” beyond the device itself.
55.

In a gesture acknowledging the established history and reputation of

Defendant No. 1’s crocodile marks, Plaintiff No. 1, on 09th December 1980,
offered a settlement, including a financial compensation, to resolve ongoinglegal disputes [Ex. DW1/21]. The dialogue continued with Plaintiff No. 1
proposing, on 21st January 1983 [Ex. DW 1/18], a draft settlement that aimed
to establish co-existence between the two parties, outlining an offer tocompensate Defendant No. 1 with USD 1 million for their efforts in protecting
their trademarks and for aiding Plaintiff No. 1 in their trademark registrations.
A meeting to develop a co-existence arrangement and to collaboratively
oppose third-party infringements was also suggested.
56.

Defendant No. 1 asserted that by 1983, they had established aformidable brand image and significant value for their crocodile marks, witha reputation that extended across many countries. Plaintiff No. 1 andCS(COMM) 1550/2016

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Defendant No. 1 had been operating in distinct territories. However, when
Plaintiff No. 1 attempted to enter the markets of Asian countries with theirproducts, they encountered the strong presence of Defendant No. 1, whose
crocodile marks enjoyed tremendous reputation and goodwill, effectively
dominating these regions. This realization highlighted the challenges ofmarket entry in regions where Defendant No. 1’s marks were already wellestablished and highly regarded.
57.

Correspondence and clarification of trademark use: On 10th February,

1983, Defendant No. 1’s licensee in Singapore sent a letter to Plaintiff No. 1’s
attorney, enclosing representations of their existing crocodile marks [Ex.
DW1/22]. The enclosed documents detailed three separate and distinct marks

–“

,” “

,” and “”– identified as A4, A3, and B1 in Ex. DW 1/16, respectively. Notably, B1
mark is the subject of contention in the current lawsuit. This correspondence
was intended to clarify the scope of use and registration of these marks,
underscoring the established rights and presence of Defendant No. 1’strademarks in the market.
58.

The settlement proposal initiated a series of negotiations that ultimately

culminated in the signing of the 1983 Agreement on 17th June, 1983 [Ex. PW
1/8]. The Defendants argued that the 1983 Agreement was expressly executed
to resolve and settle existing disputes, legal actions, and controversies,
significantly reducing the potential for conflict in their respective trademark
uses across different markets. Central to this Agreement was the principle ofmutual cooperation and co-existence, articulated clearly and unequivocally

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within the document. The Agreement also envisioned a collaborative stanceagainst third-party infringers, highlighting the expected level of cooperation
between the parties across various jurisdictions. Crocodile International
maintained that under the 1983 Agreement, the mutual intent was not only toco-exist peacefully, but also to extend cooperation globally wherever feasible,
setting a precedent for future interactions. This intention was substantiated by
the specific inclusion in Schedule A of five separate and distinct marks owned
by Defendant No. 1, with the fourth mark (Annexure-A device), currently
under dispute. Since 1983, Defendant No. 1 has actively used these marks,
including Annexure-A device, in Singapore, Indonesia, and other countries as
outlined in the Agreement.
59.

Given these conditions, Crocodile International asseverated that

Lacoste is arguably precluded from initiating an action alleging violation of
intellectual property rights against Crocodile International, as the latter has
adhered to the stipulations of the 1983 Agreement, which underscore theircommitment to resolving trademark disputes amicably and cooperatively.
This, they argued is established by a post Agreement communication dated
13th February 1984, issued by Defendant No. 1 to Plaintiff No. 1 [Ex.
DW1/23]. In this communication, Defendant No. 1 purportedly clarified theirposition concerning the use of various crocodile marks across different
countries. Defendant No. 1 highlighted that although the crocodile family ofmarks included a multitude of designs, they had decided to limit their use to
the marks specifically listed in Schedule A of the 1983 Agreement.
Additionally, Defendant No. 1 informed Plaintiff No. 1 of the concerted
efforts they had undertaken to ensure that their marks and products weredistinctively differentiated from those of Plaintiff No. 1 to minimize market

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confusion, and uphold the spirit of cooperation and distinction as outlined in
the 1983 Agreement.
60.

The evidentiary value and significance of the documents marked as Ex.

DW 1/18 to DW 1/23 shall be examined in a subsequent section that addresses
the contemporaneous documents presented by Crocodile International.
II.II. Co-existence framework established by the 1983 Agreement [Ex.
PW1/8]
61.

The key terms of the 1983 Agreement, which outline the mutual

understanding between Plaintiff No. 1 (referred to as ‘LCL’ in the Agreement)
and Defendant No. 1 (denoted by ‘LSM’ in the Agreement) regarding coexistence of their respective trademarks, are as follows:
“
xx
…
xx
…
xx
WHEREAS LSM and LCL wish to cooperate in the countries listed in
Article -1 of this Agreement.
xx

…

xx

…

xx

WHEREAS LSM and LCL agree that their respective emblem marks asshown in Schedule A and B can co-exist in the market concerned
without confusion.
WHEREAS it is also the intention of the parties to cooperate in otherparts of the world wherever possible.
xx

…

xx

…

xx

ARTICLE I – TERRITORY
This Agreement shall cover the following countries:- TAIWAN- SINGAPORE- INDONESIA- MALAYSIA (Malaya, Sabah, Sarawak)- BRUNEI
Herein referred to as the Territory.
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xx

…

xx

…

xx

3. LSM shall permit LCL to apply for the registration within the
Territory of its various emblem trademarks as shown in Schedule B
appended hereto and shall give LCL all possible assistance to obtainsuch registrations in the various classes of products and services underwhich LCL wishes to do business.
However, it is hereby agreed between the parties that LCL shall not
use nor apply for the registration in the Territory of any Saurianlike
trademark other than those shown in the said Schedule B and shall takeall necessary steps to cancel and/or withdraw registrations and/or
applications, if any, for any Saurian-like trademark other than thoseshown in that Schedule B.
xx

…

xx

…

xx

4. Likewise, LCL shall give all possible assistance to LSM to apply forthe registration within the Territory of its own emblem trademarks asshown in Schedule A appended hereto in the various classes of products
and services under which LSM wishes to do business.
LSM shall not use nor apply for the registration in the Territory of any
Saurian-like trademark other than those shown in the said Schedule A
and shall take all necessary steps to cancel and/or withdraw
registrations and/or applications, if any, for Saurian-like trademarks
other than that shown in Schedule A.
xx

…

xx

…

xx

ARTICLE III – COMPENSATION
In order to compensate LSM for the expenses incurred in the past forprotection and defense of Saurian Trademarks within the Territory,
LCL shall pay LSM the annual payments indicated in Schedule C
appended hereto over the next 15 years commencing in 1982.
xx

…

xx

…

xx

ARTICLE IV – COOPERATION
1. Both parties undertake to cooperate technically in every possible
manner within their own means and rights in the defense of the Saurian
Trademarks against any third party infringers.
2. However, a decision taken by either party not to join in any legal
action against such infringers shall not prevent the other party fromproceeding alone at its own expense.

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ARTICLE V – TERMINATIONPROCEEDINGS AND RELEASESOF

EXISTING

LEGAL

1. LSM and LCL agree that all law suits, legal actions, controversies,
disputes and claims which are the subject of legal proceedings between
them pending before any court or administrative body in any
jurisdiction within the Territory shall be settled and discharged.
2. LSM and LCL therefore waive and abandon hereby any and all
claims and counter-claims at any time made by them in respect of theuse by either party of their respective Saurian Trademarks
3. As a consequence of the foregoing, LSM and LCL shall take all steps
to execute such documents as may be necessary to discontinue, withprejudice, all pending proceedings.”

62.

Schedules A and B appended to the 1983 Agreement are as under:

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63.

The parties in their pleadings and evidence have not controverted theexecution of the 1983 Agreement. However, its relevance and applicability to
the Indian territory is the point of dispute. Lacoste has categorically denied
the relevance of the 1983 Agreement [Ex. PW 1/8] to the current proceedings.
They contended that the terms of the Agreement were geographically specificand did not extend to India. This geographical limitation, they argued, clearlydelineates the boundaries of the influence of the 1983 Agreement, thereby
excluding its application to any trademark disputes arising in India or otherunlisted territories. This position underlines Lacoste’s challenge to Crocodile
International’s assertions of a broader, implied scope of the Agreement,
focusing the Court’s attention on the explicit terms and conditions as
documented.
64.

The preamble to the 1983 Agreement stipulates that Plaintiff No. 1 andDefendant No. 1 intended to cooperate in the ‘Territory’ delineated in Article
I. It explicitly states that their respective emblem marks, as detailed in
Schedules A and B, can co-exist in the specified markets without causing
confusion. Crocodile International argues that, based on the parties’ overall
intention to cooperate globally stated in the recitals, the principle of coexistence should apply beyond the specified Territory. This language suggests
flexibility, and thus, requires a careful interpretation by the Court for
determination of applicational boundaries of the 1983 Agreement.

II.II.I.
65.

Geographical Limitations and interpretation

Article I of the 1983 Agreement explicitly lists the territories covered:Taiwan, Singapore, Indonesia, Malaysia (including, Malaya, Sabah, andSarawak), and Brunei. This specific enumeration of countries indicates that

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the 1983 Agreement is intended to apply only within these jurisdictions. The
mention of potential cooperation in other parts of the world does not extend
the operative terms of the Agreement to India or implicitly include it within
the scope of the Agreement. This is evident by the absence of any mention ofIndia in the list of countries in Article I. The clauses concerning trademark
registrations stipulated in Article II also emphasize operational limits withinthese defined territories. Therefore, the argument that the 1983 Agreement
implicitly covers India lacks substantive contractual or documentary support
based on the explicit territorial definitions provided within the Agreement
itself.
66.

Contracts must be expressed in precise and unambiguous terms. The

entire tenor of the 1983 Agreement and its specific clauses clearly delineate
the rights and obligations concerning the use of saurian trademarks by bothparties within the defined territories. There is no documentary evidence orcontractual provision supporting the inference that Plaintiff No. 1 expressly
or impliedly agreed to extend the terms of the 1983 Agreement to encompass
the Indian territory, whether under the notions of ‘understanding,’ ‘spirit of
goodwill,’ ‘cooperation,’ or any other analogous terms. Given these
considerations, the legal status, and implications of the 1983 Agreement must
be confined to the explicit terms agreed upon by the parties. The situation ineach country, including India, must be adjudicated based on the prevailinglaw and the specific rights and obligations arising from the parties’ conduct
and explicit agreements, rather than any implied extension of purported spiritof the 1983 Agreement. The Court thus finds merit in the contention of
Lacoste that the terms of this Agreement cannot be binding on them in the
Indian territory.

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67.

This jurisdictional specificity is particularly relevant when considering

the legal framework under which international trademark agreements operate.
On this issue, it is also crucial to consider the principles of trademark law,particularly the concept of territoriality, which plays a decisive role indetermining the scope of trademark agreements. Trademark rights are
inherently territorial; they are confined to the jurisdictions in which they are
granted and enforced. This principle of territoriality ensures that a trademark
registered in one country does not automatically confer rights to the holder inanother, unless explicitly stated through international agreements or treaties.
In the context of the 1983 Agreement, the explicit listing of certain countries
signifies a clear intention to limit the scope of the Agreement to thoseterritories only. The lack of mention of India or any provisions for its inclusion
at a later date reinforces this intention and aligns with the principle that
trademark rights and obligations cannot be presumed to extend beyond theterritories for which they were specifically negotiated.
68.

The parties’ intention to restrict the co-existence arrangement to thecountries specified in the 1983 Agreement is also evidenced by thecontinuance of legal proceedings by Plaintiff No. 1 pertaining to the use andregistration of parties’ respective crocodile devices in various jurisdictions,such as Myanmar and China. Plaintiff No. 1’s objections to the use of similarmarks by Defendant No. 1 in other regions demonstrates their efforts toprotect their trademark rights rigorously, indicating the restrictive territorial
scope of the co-existence agreement.
The Partial Arbitral Award [Ex. P-1]

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69.

In resolving this issue, it is also imperative for the Court to consider thePartial Arbitral Award dated 15th August, 2011 [Ex. P-1] rendered inarbitration proceedings between Plaintiff No. 1 and Defendant No. 1 inSingapore, which also addressed the applicability of the 1983 Agreement
beyond the territories explicitly listed therein. The dispute before the Tribunal
originated from Defendant No. 1’s registration of the trademark “,” which exceeded the devices enlisted in Schedule A to the1983 Agreement, in Indonesia. Although Indonesia is enlisted as ‘Territory’under Article I of the Agreement, an issue concerning the territorial scope of1983 Agreement was raised. The findings of the Arbitral Tribunal provide
crucial insights into the interpretation and enforcement of the 1983
Agreement across additional territories. The relevant portions of the Award,
which are extracted and analysed below, will shed light on how the Tribunal
perceived the scope of the 1983 Agreement and whether it found any basis for
its application in other international contexts beyond those explicitly
mentioned:“The Tribunal’s construction of the Agreement
… xx
178.

179.

… xx

…

xx…

There is also no dispute that these obligations relate to the territory
only. The Tribunal agrees and finds that these obligations, as set
out in Article II, are clearly confined only to the five countries
listed as ‘the Territory’ in the Agreement.
Crocodile International, however, goes further. It says that prior to
the signing of the Agreement there was potential for disputes arising
between the Parties in countries other than those five countries listed
in the Territory because both Parties used saurian-like trade marks,
Crocodile International using a left facing crocodile and Lacosteusing a right facing crocodile or alligator. Thus, says Crocodile
International, the Parties wished to do more than just settle thedisputes in the five countries listed in the Territory and to provide aCS(COMM) 1550/2016

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framework for those countries going forward, they also wanted toprovide a framework whereby disputes, wherever they arose, would
not arise in the future, there would be cooperation between theParties and each Party would be able to develop its own business.
The Tribunal notes parenthetically that if this truly was the purposeof the Agreement, it has significantly failed. Lacoste says that there
are or have been 123 pieces of litigation between the Parties.
Crocodile International disputes the figure and says that it is only
84; either way it is a very substantial number.
… xx
185.

186.

187.

188.

189.
190.

… xx

…

xx…

Lacoste argues that there are four pillars to the Agreement, limited
geographical scope (Article I), coexistence (Article II), entry to the
Territory (Article III), and cooperation (Article IV). In respect of theobligation of cooperation, Lacoste accepts that the obligation ofcooperation is not limited geographically but argues that thecooperation extends only to the cooperation of both Parties inrelation to third party infringers, is for the protection of the Parties’
trade marks and is an obligation of technical co-operation only.
‘Technical cooperation’, according to Lacoste, is cooperation onsuch matters as investigations of infringements of the Parties’ trade
marks by third parties and the taking of action to prevent or stopsuch infringements.
Crocodile International says that cooperating technically is incontrast to commercial cooperation (e.g. joint marketing) but
includes practical technical cooperation in matters concerning
protection of the trade mark from attack.
Lacoste says that the reason why the obligation contained in Article
IV is not limited geographically in the Agreement is that it might benecessary for the Parties to take action in countries outside the
Territory to prevent infringements in countries within the Territory,
the most obvious example being a manufacturer situated outside the
Territory whose products (which contain infringing trade marks)
are distributed and sold within the Territory. Crocodile
International goes further and says that the proper construction ofClause 1 of Article IV includes an obligation that neither Party willseek to adopt for itself the other Party’s marks as set out in
Schedules A and B in any geographical region and that neither Party
will attack the other Party’s registered marks in any geographicalregion.
The Tribunal accepts Lacoste's arguments on the construction of theAgreement in relation to cooperation and coexistence.
In the first place it seems to the Tribunal that the Agreement isclear on its face in its meaning and that there is no ambiguity in

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191.

192.

193.

194.

195.

its use of language.
Article I of the Agreement clearly provides that the Agreement
covers the five countries in the Territory and Article II also clearly
limits the Parties’ obligations under that Article to the Territory.
The only Articles which do not refer to the Territory are Article IV
in relation to co-operation and Article VII, the arbitration
provision. The Tribunal rejects Crocodile International’s
argument that the words “in the market concerned”, in the fourthrecital of the Agreement are used to contrast with the countries
listed in the Territory defined in Article I and relate to countries
where market conditions are similar to any of those which exist in
any of the five countries of the Territory, and would include any
countries in Asia “at least”.
The Tribunal finds that the words “in the market concerned” refer
only to the countries listed under the Territory in Article I. Each of
those countries is a “market”. The countries together constitute the“'Territory'”. Whilst it might have been clearer for the fourthrecital, which in any event is only a part of the preamble to theAgreement, to refer specifically to the countries listed in Article I,
the Tribunal is clear that “the market concerned” intended to referto those countries. In the Tribunal’s view, the fourth recital must beread subject to Article I of the Agreement, which plainly restricts thescope of the Agreement to the five countries listed. It states
specifically that “this Agreement” covers the five countries in the
Territory.
The Tribunal finds that the only contractual obligation whichtakes effect outside the Territory is that contained in Article IV.
The Tribunal accepts Lacoste’s contention that this only concerns
technical cooperation in combating third party infringers outside
the Territory. The obligation is expressed exactly in those words.
The Tribunal does not accept that the fourth recital contains acollateral agreement, or creates a binding estoppel by convention(or otherwise) to the effect that the Parties’ marks can coexist
outside the Territory, as contended by Crocodile International.
In the first place the Tribunal finds that the fourth recital is entirely
consistent with the remainder of the Agreement if one reads “themarket concerned” in the sense identified above. The Tribunal isunable to give the phrase the extended meaning put forward by
Crocodile International. If this was the correct meaning the
Tribunal would have expected there to have been express wording
to that effect as it would run contrary to the main provisions of theAgreement.
Secondly, in order to found an estoppel by convention, it must be
shown that there was a course of dealing such that the Parties
proceeded on the basis of an agreed interpretation of the contract

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196.

197.

198.

(see for example Singapore Island Country Club v Hilbourne [1996]
3 SLR (R) 418). In this case, far from there having been an
established course of dealing between the parties under which they
cooperated and coexisted, or a shared assumption by them that theywould do so, there has been a multitude of disputes between theparties.
Thirdly, the argument that “in the market concerned” means themarket in any countries where market conditions are similar to thosein the five countries listed in the Territory, seems to the Tribunal
extremely (and fatally) vague. Where are market conditions“similar”? Is the provision limited to Asia or is it applicable to otherparts of the world? Are market conditions similar in Europe? Or
North America? Commercial certainty would be necessary if
Crocodile International’s argument of a collateral contract were to
succeed and the Tribunal does not consider that Crocodile
International’s interpretation of the phrase “in the market
concerned” is sufficiently certain. Faced with a construction which,in the Tribunal’s view, is consistent with the geographical scope of
the Agreement expressed in Article I and a construction which is atbest vague, and which runs counter to Article I, the Tribunal has nohesitation in finding that the former construction is to be preferred.
As regards Crocodile International’s argument that implicit inClause 1 of Article IV is an obligation by each Party that it will not“hi-jack” or attack the other's marks outside the Territory, theTribunal considers that, if the Parties had truly intended to impose
such important mutual obligations, they would have clearly said soin the Agreement, which they have not done. This is discussed infurther detail below when the Tribunal considers Crocodile
International’s Counterclaim.
Accordingly, the Tribunal finds that there is no obligation upon
the Parties that their trademarks should coexist outside the
Territory and that the Parties’ obligations of cooperation
contained in Article IV, read with the fifth recital, whilst existingoutside the Territory, are limited to technical cooperation in themanner described in paragraph 189 above.
… xx

228.

229.

… xx

…

xx…

The Tribunal therefore finds that in putting forward a
misconstruction of the effect of the Agreement, Crocodile
International has not acted in breach of contract. This finding only
affects Lacoste’s claim for damages in respect of past cases, anddoes not affect its claim for declarations on the effect of theAgreement which it seeks in connection with possible future
litigation, and which will be considered in Section L below.
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misrepresentation or mischaracterisation of the Agreement is nota breach of the Agreement, the Tribunal would hope that, in thelight of this Award, Crocodile International does not repeat suchmisrepresentation or mischaracterisation in any Court or tribunal
in the future.
… xx
261.

262.

M

3.

… xx

…

xx…

The Tribunal has carefully considered Crocodile International’s
arguments but concludes that the granting of appropriate
declarations by this Tribunal will assist both Parties in the event offurther litigation between the Parties where the question of the scopeand effect of the Agreement arises.
It is quite evident to the Tribunal from the record in these arbitration
proceedings that the construction and effect of the Agreement has
been mischaracterised by Crocodile International in various
proceedings outside the Territory and that time has been taken up,
sometimes considerable time, in dealing with this issue. The
Tribunal is, by virtue of the arbitration agreement confirmed in theAgreement, the judge of the Agreement’s true construction. The
Tribunal accepts that its declarations, of themselves, may not havethe effect of preventing future litigation between the Parties, and that
other issues may arise, such as whether or not there is a likelihoodof confusion between the Parties’ marks, which fall outside the ambitof the Agreement. However, the Tribunal hopes that thedeclarations it gives in this Award will at least put an end to theissue of the Agreement’s true construction and effect.
… xx

… xx

…

xx…

… xx

… xx

…

xx…

THE AWARD

The Tribunal declares that upon a true construction of theAgreement:(i)
The Agreement does not require either Party to theAgreement to consent to registration of the other Party’s
trade marks outside the five countries in the Territory namedin the Agreement, that is Taiwan, Singapore, Indonesia,
Malaysia and Brunei, nor does the Agreement constitutesuch consent(ii)
The Parties’ undertakings of technical cooperation are
directed against third party infringers only and do notinclude any obligation not to object to the other Party’s trade

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marks enumerated in Schedules A and B of the Agreement.
The preamble to the Agreement gives rise neither to anagreement nor a binding statement of facts according towhich the trade marks enumerated in Schedules A and B of
the Agreement can coexist outside the Territory.
[Emphasis Supplied]70.

Thus, the Arbitral Tribunal determined that aside from the parties’commitment to collaborate technically to combat infringement by third
parties, the terms of the 1983 Agreement cannot be extended to jurisdictions
not originally specified in Article I of the Agreement. The Tribunal also
specifically notes that the preamble to the 1983 Agreement cannot be
construed as a binding obligation of parties to co-exist in jurisdictions beyond
the delineated Territory. Additionally, the Tribunal noted that Defendant No.
1 must refrain from misrepresenting or mischaracterizing the nature and scopeof 1983 Agreement before judicial fora outside the Territory. The Arbitral
Tribunal’s determinations specifically constraining the application of theterms of mutual co-existence to Territory, further reinforce this Court’s view.
Notably, this Partial Arbitral Award was made final on 18th April, 2016 [MarkX-1]. In his testimony, DW1 has accepted this fact. 16 This Award has also notbeen challenged and is binding on parties.
Testimony of DW1
71.

The territorial constraints on applicability of the 1983 Agreement arealso substantiated by deposition of DW1. During his cross-examination on
22nd February, 2018, DW1 has also admitted that the 1983 Agreement does
not extend to India, in the following terms:“Q2. According to you, do the terms of the agreement extend to India?
16

Refer: Cross-examination conducted on 24th January, 2017.

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A. Specifically in the case of 1983 agreement, the record shows that it does
not extend to India.”72.

This categorical acknowledgment of DW1 reflects the parties’ intention

to extend the cooperation framework contained in the 1983 Agreement to only
select countries mentioned in Article I.
Conclusion
73.

In absence of an express provision or subsequent amendment

incorporating India into the territories covered coupled with the findings of
the Arbitral Tribunal’s, which has not been challenged by either of the parties,
and DW1’s admission, any assumption of the applicability of the 1983
Agreement to Indian territory would contravene its letter and spirit. Therefore,
any attempt by Defendant No. 1 to enforce rights or claim co-existence underthe 1983 Agreement within Indian jurisdiction lacks a legal basis and isinconsistent with the territorial nature of trademark rights.
II.III. Decision of the Supreme Court of the People’s Republic of China[Ex. DW 1/95]
74.

Crocodile International has presented the judgment dated 29th

December, 2010 delivered in a suit for trademark infringement filed byLacoste against Crocodile International as Ex. DW 1/95. The conflictedtrademarks before the Supreme Court of China mentioned in Appendices 2
and 3 to the judgment, are as follows:
Lacoste’s trademarks:

Crocodile International’s trademarks:

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75.

The Supreme Court, while acknowledging the similarity between the

trademarks, refused to grant any relief in view of the longstanding global coexistence of the parties, underscored by the 1983 Agreement. The Court
opined that non-inclusion of China in the defined Territory would notpreclude the Court from considering its impact and the parties’ sharedintention of concurrent existence. The restricted commercial reach of
Lacoste’s products in China also weighed with the Court in holding that noconsumer confusion would ensue from the use of the two marks.
Significantly, the Court directed Crocodile International to ensure steps todisassociate their labels from Lacoste’s registered trademarks to the
maximum extent possible.
76.

The Court respectfully disagrees with the afore-noted decision. As

discussed hereinabove, the scope of co-existence and mutual cooperation
envisaged in the 1983 Agreement is confined to the territories delineated in
Article I. This view is reinforced by the Arbitral Award [Ex. P-1] as well as
the parties’ conduct in protesting the use of their respective trademarks indifferent jurisdictions. By executing the 1983 Agreement, Plaintiff No. 1 andDefendant No. 1 did not envision an all-encompassing arrangement for coexistence worldwide. Moreover, in 2023, the Beijing Higher People’s Court
has followed a similar approach, upholding Lacoste’s rights in a suitconcerning the conflict between Lacoste’s “CS(COMM) 1550/2016” and Crocodile

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International’s “” titled Xinjiang Kae E-commerce Co. Ltd. andAnr. v. Lacoste and connected matters and bearing (2022) Jing Mingzhong,No. 293 [Ex. P-2].17
III.

Extended co-existence and the 1985 Letter

77.

Building upon the foundation laid by the 1983 Agreement, Crocodile

International cites several correspondences whereby Plaintiff No. 1 andDefendant No. 1 mutually agreed to the use of the other’s trademarks, thus
facilitating the mark’s registrations across countries. These correspondences
have been tendered in evidence as Ex. DW 1/24 to DW 1/79.18 To demonstratethat the mutual co-existence understanding was formally extended to include
Korea, India, Bangladesh, and Pakistan, Crocodile International specificallyreferences to the letter dated 22nd August, 1985 [Ex. DW 1/80]. Through thiscommunication, Defendant No. 1 assented to the trademark applications for
Plaintiff No. 1’s emblems in the afore-noted countries, in the following terms:“22 August 1985
I, Tan Hian Tsin, acting in my own name and on behalf of CROCODILE
INTERNATIONAL PTE LTD of 89 Neil Road, Singapore 0208 (formerly known
as LI SENG MIN CO SDN BHD) and/or of any individual or corporate bodycontrolling, controlled by or under common control or affiliated with
CROCODILE INTERNATIONAL PTE LTD, hereby undertake:1.
Not to oppose to present or future applications filed by LA CHEMISELACOSTE for the hereunder LA CHEMISE LACOSTE’s emblem marks or marks
containing said emblems in Korea.

17

On 31st July, 2024, with the consent of the counsel for parties, the judgment of Beijing Higher People’s
Court was admitted as evidence, and is being allocated an exhibit number – Ex. P-2.
18
Collectively, “contemporaneous documents.”

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2.
Should CROCODILE INTERNATIONAL’s application or registration in
Korea be opposed or in conflict with LA CHEMISE LACOSTE application(s) as
defined in paragraph 1 hereabove, to supply LA CHEMISE LACOSTE upon its
requests with the appropriate consent letter.
3.
To withdraw in Korea oppositions eventually filed against LA CHEMISELACOSTE’s applications as defined in prargraph 1 hereabove and never filed,directly or indirectly, any invalidation or cancellation actions against said
defined marks.
4.
To supply LA CHEMISE LACOSTE, upon its request, with the appropriate
consent letter(s), that LCL might need to register the hereunder LA CHEMISELACOSTE’s emblem marks or marks containing said emblem in BANGLADESH,
INDIA and PAKISTAN.

Yours faithfully
For and on behalf of
CROCODILE INTERNATIONAL PTE LTD
TAN HIAN TSIN”

78.

Crocodile International traced the inception of the understanding

entailed in the 1985 Letter to an offer from Plaintiff No. 1, proposing to
exchange their market presence in Korea for Defendant No. 1’s position inIndia, with Dr. Tan including Pakistan and Bangladesh within the ambit ofthis arrangement. This expansion was purportedly a gesture of goodwill,emphasizing the unequal market values between these regions. As perCS(COMM) 1550/2016

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Crocodile International, the practical enforcement and recognition of the 1985
Letter, as evidenced by various communications submitted in evidence, affirm
its status as a legally binding contract. This Letter enabled Plaintiff No. 1 toregister their trademarks in India, Bangladesh, and Pakistan – regions where
Defendant No. 1 already held prior rights. Without Defendant No. 1’s consent,
it would have been impossible for Plaintiff No. 1 to secure registrations andmarket its products in these territories. Defendants also argued that the 1985
Letter, which reflects a joint commitment to combat third-party infringers,aligns with the cooperation between the parties envisaged in the 1983
Agreement. However, Lacoste has allegedly not disclosed these critical
documents, which not only continued the cooperative intent of the 1983
Agreement, but also explicitly extended it to new territories including India,
Bangladesh, Pakistan, and Korea. This concealment, according to Crocodile
International, undermines the full context of mutual co-existence andcooperation that was intended to transcend geographical boundaries.
79.

On the other hand, Lacoste challenged this interpretation, pointing outthat the 1985 Letter was unilaterally issued by Defendant No. 1, and lacks
formal acknowledgment or a response from Plaintiff No. 1. They argued that
it was neither addressed to Plaintiff No. 1, nor signed by them, thus lacking
the essential of a bilateral agreement for extending the terms of the 1983
Agreement. The 1985 Letter, according to Lacoste, cannot be connected to
the 1983 Agreement or to the use of the Annexure-A device, as it does notconstitute a mutual agreement or bear any legal weight that modifies orextends the original terms set forth in 1983. They further highlighted that
Plaintiff No. 1 had already registered their trademarks in India prior to the1985 Letter, eliminating the need for any consent letter from Defendant No.

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1 in this jurisdiction. Thus, they contended that reference in the 1985 Letterto provide consent letters ‘upon request’ to Plaintiff No. 1 had no practical
implication since Plaintiff No. 1’s trademarks proceeded to registration inclass 25 without such letters.
80.

The Court has considered the afore-noted contentions. The 1985 Letter

issued by Defendant No. 1 records their consent to the registration of two
formative variants of Plaintiff No. 1’s crocodile devices in Korea and acommitment to deliver consent letter for registration of the said devices inIndia, upon Plaintiff No. 1’s request. This Letter, allegedly issued pursuant tonegotiations between the parties to allow for concurrent presence in otherregions, does not bear reference to any previous communications/ documents.
There is no documentary or oral evidence evincing the events antecedent to
the issuance of the 1985 Letter. In these circumstances, Crocodile
International seeks to induct an inference to the 1983 Agreement in the 1985
Letter, advocating for application of the terms entailed in the Agreement 1983
to the Indian territory. This situation highlights the need for clear, specific,
and actionable agreements in international trademark law. General
expressions of support or non-opposition, as demonstrated in the 1985 Letter,must be backed by precise legal documentation that clearly delineate therights and obligations of each party, especially in a complex legal landscape
like trademark registration in foreign jurisdictions. Absence of this specificity
undermines the characterization of the 1985 Letter as an ‘agreement’ as it
does not reflect the reciprocal obligations of Plaintiff No. 1, particularly their
no-objection to the use of Annexure-A device by Crocodile International,
which is the foundation of this infringement action. Lacoste also pointed out
the lack of evidence demonstrating Plaintiff No. 1’s demand and subsequent

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use of the consent letter to secure trademark registration, which is bolsteredby the following excerpts from the cross-examination of DW1 conducted on
22nd and 23rd February, 2018:“Q2. According to you, do the terms of the agreement extend to India?
A.
Specifically in the case of 1983 agreement, the record shows that it
does not extend to India.
Q.3 In your affidavit, you have referred to several co-existence
documents. What according to you was the need for these documents?
A.
This is to show the acknowledgement of each party in terms of the
trademarks that are owned or used.
xx

…

xx …

xx

Q.8 Is there any document to show that the plaintiff requested this socalled 1985 letter from the defendant. If yes, please point out which is that
document?
A.
This is a letter Mark-J dated 22.06.1990 written by the plaintiff todefendant. In the second paragraph, it is stated “our agreement for South
Korea given in counterpart of yours for India and Pakistan”. So in thisstatement, there was a request for consent letter for India in return forconsent in South Korea.
Q.9 Are you saying that a 1985 consent letter was issued by the
defendant upon a request made by the plaintiff in 1990?
A.
I was not involved directly during that time but from the company
history, I believe it was requested by the plaintiff
Q.10 Is there any other letter that you were able to locate in your company
history making a request for a consent letter from the plaintiff to thedefendant prior to 1985 against which the defendant purportedly issued
the 1985 consent letter?
A.
I have to check with my company records but the letters in theaffidavit clearly shows that the plaintiff requires our consent letter toregister the plaintiff marks.
The witness is directed to check the records of the company and inform on
the next date of hearing.
xx

…

xx …

xx

Q43. Have you checked the company records as stated by you in answer
to question 10?
Ans. We cannot locate the specific request letter as of now but in a letterby the plaintiffs dated 13th February, 1989, there was an acknowledgementof consent letter made by defendants thus implying that there should have

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been a request for such consent made by the plaintiffs.
Q44. Were you able to locate any consent letter issued by the plaintiffs tothe defendant anywhere in the world consenting to use of the device
forming annexure - A to the plaint?
Ans. The consent letters submitted along with my affidavit of evidenceshow the facts clearly.
Q45. Which particular consent letter are you referring to?
Ans. Since I do not recall all the consent letters so I leave it to the court
to judge.”

81.

The elusive responses of DW1 noted above, including in reference to

the Annexure-A device, further diminish the significance of the 1985 Letterto the present proceedings and cast doubts on its practical impact.
82.

In determining the link of the 1985 Letter to parties’ previous

agreement regarding co-existence, reference must also be made to the ArbitralAward [Ex. P-1], which recognizes that while both parties adhered to the 1983
Agreement within the specified territories, outside those territories, eachparty’s actions were governed by national laws on a case-by-case basis.
Notably, in countries like Hungary, Japan, Myanmar, Uganda, India,
Pakistan, Vietnam, Cambodia, Laos, Italy, and China, Lacoste often rejected
Crocodile International’s requests and opposed their applications based on theapplicable national laws, indicating a strategic and legal approach that varied
significantly from the cooperative spirit intended in the 1983 Agreement.
Thus, while Crocodile International may argue for an extended understandingof mutual co-existence, the legal realities and Lacoste’s actions reflect a more
complex interplay of consent, trademark rights, and national legal
frameworks.
83.

Extensive arguments were presented to the Court concerning theinterpretation of trademarks listed in Schedule A to the 1983 Agreement, with

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Crocodile International emphasizing that the Schedule A includes five distinct
trademarks, including the Annexure-A device. Crocodile International
contended that Lacoste permitted the use of Annexure-A device in India
through the arrangement entered in 1985. Applying this interpretation, theyargued that 1985 Letter permits use of Annexure-A device on terms stipulated
in the 1983 Agreement. However, this position is not supported by the 1985
Letter, where Defendant No. 1 has explicitly restricted their consent to only
two devices of Plaintiff No. 1 mentioned in Schedule B of the 1983
Agreement, and not all of them. This decision to confine consent to only two
devices of Schedule B reinforces the view that the terms of co-existence of1983 Agreement do not apply to India, and co-existence arrangements, if any,
were specifically tailored to the region in question. Thus, the specific context
in which the 1985 Letter was issued becomes critical, a point that Defendant
No. 1 has not adequately demonstrated. However, since Crocodile
International heavily relied on the contemporaneous documents to invalidate
Lacoste’s claims, attempting to show Plaintiff’s subsequent acknowledgmentof the co-existence arrangement within India, the Court now proceeds to deal
with the same.
III.I. The contemporaneous documents
84.

For ease of reference and a convenient read, the relevant

communications referred by Crocodile International are encapsulated in thetabular chart annexed with the judgment as Annexure-B.
85.

Ex. DW 1/13 to Ex. DW1/35, Ex. DW 1/37 to DW 1/40 and Ex. DW

1/45 to DW 1/79 were tendered in evidence on 23rd January, 2017. Lacoste
objected to the aforesaid documents being read into evidence, citing failure to

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produce originals before the Court. It is their contention that Defendants havenot led any secondary evidence and therefore, the contemporaneous
documents have not been proved in accordance with law, and have noevidentiary value. The documents were tentatively given an exhibit number,leaving these objections to be decided at the final stage. The admissibility andstrength of the contemporaneous documents are detailed in the forthcoming
segment of the judgment.
III.I.I.
86.

Probative value of the contemporaneous documents

Crocodile

Internationalhaspresented

photocopies

of

the

communications Ex. DW 1/18 to Ex. DW 1/23 and the contemporaneous
documents submitted as Ex. DW 1/24 to Ex. DW 1/35, Ex. DW 1/37 to Ex.
DW 1/40, and Ex. DW 1/45 to Ex. DW 1/79. Apart from DW 1/36 and DW
1/44, these documents have been denied by Lacoste. Therefore, to take aid of
the above-mentioned documents in invalidating Lacoste’s claim, Crocodile
International must establish a case for leading secondary evidence in order tolegally prove the contents of the said documents. On this aspect, referring to
the holding of the Supreme Court in Dhanpat v. Sheo Ram (Deceased)through LRs and Ors.,19 they argued that the Court’s permission for leading
secondary evidence is not required, so long as their pleadings and evidence
sufficiently justify this approach. The principle of law propounded by
Crocodile International cannot be disputed. Section 65 of the Evidence Act,
1872 enlists the circumstances where secondary evidence as to the existence,
condition or contents of a document may be submitted in trial. In H. Siddiqui19(2020) 16 SCC 209.

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VERDICTUM.IN(Dead) by LRs v. A. Ramalingam,20 it has been held that the right to adduce
secondary evidence is not unrestricted, and the non-production of the original
document must be accounted for in the factual foundation laid by the party.
87.

On a scrutiny of the pleadings and evidence presented by Crocodile

International, the Court is unable to discern the foundational facts explaining
the non-availability of the original letters by the Defendants. There is noaverment to this effect in the written statement. While the affidavit by way ofevidence of DW1 mentions that ‘office copies’ of certain documents havebeen filed on record, there is a notable absence of any reason justifying thenon-production of originals. The Defendants ought to have led evidence
demonstrating the circumstances entailed in Section 65 of the Evidence Act,
either through examination of their witnesses or cross-examination of thePlaintiffs’ witnesses.21 In the course of his cross-examination on 25th January,
2017, DW1 deposed as under:
Q. Please see para no.19 of your affidavit Ex.DW1/A, do you haveoriginals of documents other than Ex.DW1/36 and Ex.DW1/41 to
Ex.DW1/44?
Ans. I do not know. Vol. but some documents were sent in original to theplaintiffs, so defendant no.1is not having originals of the same.

88.

DW1 has vaguely alluded to “some documents,” originals whereof

were sent to Plaintiff No. 1. Such an unclear and imprecise explanation fails
to qualify the criteria for foundational pleadings or evidence envisioned forleading secondary evidence under Section 65 of the Evidence Act.
Resultantly, the Court finds that the documentary evidence marked as Ex. DW
1/18 to DW 1/23, Ex. DW 1/24 to Ex. DW 1/35, Ex. DW 1/37 to Ex. DW
20(2011) 4 SCC 240.
See: Prem Chandra Jain (Deceased) represented by LRs v. Sri Ram (Deceased) represented by LRs,
2009 SCC OnLine Del 3202.
21

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1/40, and Ex. DW 1/45 to Ex. DW 1/79 has not been proved in accordancewith the prescribed legal standard. There is no foundational evidence
authenticating that the alleged copy is a true copy of the original and thus, thedocuments are inadmissible in evidence and cannot be considered by thisCourt.22
III.I.II.

Significance of the contemporaneous documents to merits ofthe case
89.

Despite the earlier noted observations about the inadmissibility of Ex.

DW 1/18 to DW 1/23, Ex. DW 1/24 to Ex. DW 1/35, Ex. DW 1/37 to Ex. DW
1/40, and Ex. DW 1/45 to Ex. DW 1/79, the Court has nonetheless reviewed
these documents to evaluate the strength of Crocodile International’s
argument about the co-existence of Lacoste’s crocodile devices with theAnnexure-A device in India, as allegedly outlined in the 1985 Letter.
Ex. DW 1/18 to 1/23:
90.

The communication marked as Ex. DW1/18 was written by Plaintiff

No. 1 to Defendant No. 1 proposing the terms of an amicable resolution of
their trademark disputes. Ex. DW 1/19 is Defendant No. 1’s cease-and-desist
notice dated 16th July, 1980 issued to Plaintiff No. 1’s licensee in Singapore,protesting the use of crocodile device by the licensee in Singapore. Ex. DW
1/20 and DW 1/21 are the communications dated 30th July, 1980 and 09th
December, 1980, respectively, ensuing from the cease-and-desist notice. In
Ex. DW 1/20, Plaintiff No. 1’s licensee, asserting their rights over the“LACOSTE” trademark and alligator device in Singapore, emphasized the22

See: Vijay v. Union of India and Ors., SC Neutral Citation: 2023 INSC 1030.

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points of distinction between the parties’ marks, customer base, price range
and product quality. As per Plaintiff No. 1’s licensee, these factors dispel
consumer confusion between the brands. Ex. DW 1/21 contains Plaintiff No.
1’s offer to amicably resolve the perceived trademark conflicts, whichapparently culminated in the 1983 Agreement. Crocodile International
strongly urged that the communication dated 10th February, 1983 [Ex. DW
1/22] establishes that the 1983 Agreement envisaged co-existence vis-à-vis
the Annexure-A device. This communication, preceding the execution of the1983 Agreement, proposed three separate and distinct marks – “,” “,” and “” for inclusion

within the Agreement’s scope. Ex. DW 1/23 dated 13th February, 1984 wasaddressed by Defendant No. 1 to Plaintiff No. 1 highlighting their extensive
and consistent efforts to avoid consumer confusion in the market.
91.

Upon careful review, the Court finds that while these documents form

part of the preliminary discussions leading up to the formal agreement, theirrelevance to the present proceedings concerning the Indian territory is limited.
The arguments and assertions made within these letters pertain primarily toregions explicitly outside of India and as such, do not directly impact the legal
standing or implications within the Indian jurisdiction. The territorial
specificity of trademark rights, as outlined in previous discussions, restricts
the enforceability and relevance of objections and rights to the territories inwhich they are legally recognized and registered. Moreover, the 1983
Agreement, which was subsequently finalized, explicitly delineates theterritories where co-existence was agreed upon, and India is not among them.

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The Defendants have not provided concrete evidence to support their claimthat these letters indicate a global co-existence intent that includes India. The
explicit terms of the 1983 Agreement, which followed these letters, supersede
the preliminary discussions, and outline the agreed-upon territories for coexistence.
92.

Therefore, Ex. DW 1/18 to DW 1/23 do not substantiate the

Defendants’ claim of an extended co-existence agreement covering India. Ex.
DW 1/18 to Ex. DW 1/22 are letters precursor to the 1983 Agreement,
whereas Ex. DW 1/23 demonstrates Defendant No. 1’s proactive trademark
management in other regions, and does not hold independent relevance in thecurrent context. As such, they are rejected as evidence of any binding
agreement applicable to the use of the Annexure-A device in India.
Ex. DW 1/24 and Ex. DW 1/25:
93.

Ex. DW1/24 is the letter dated 10th February, 1989 addressed by

Defendant No. 1 to Plaintiff No. 1, which Crocodile International cites asevidence of the ongoing spirit of co-existence between the parties in Asia.
This letter references to Defendant No. 1’s intention to not oppose Plaintiff
No. 1’s trademark application in India, and a reciprocal offer to seek
assistance of Plaintiff No. 1 in registering the “CROCODILE” mark in the
Middle Eastern countries. Ex. DW 1/24 was responded to by Defendant No.
1 on 13th February, 1989 [Ex. DW 1/25], recognizing that Defendant No. 1’s
choice to not oppose Plaintiff No. 1’s application was in line with thearrangement arrived at in 1985. The Defendants asserted that Ex. DW 1/25
contains an express acknowledgment of the ‘1985 agreement,’ suggesting aCS(COMM) 1550/2016

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mutual recognition of extension of terms beyond the specific territories
initially outlined in the 1983 Agreement.
94.

Lacoste, on the other hand, contested the implications that Crocodile

International seeks to draw from these documents. They pointed out that while
Ex. DW 1/24 expresses a willingness from Defendant No. 1 not to oppose
Plaintiff No. 1’s mark in India, it lacks details about which particular markthe consent pertains to. Additionally, Lacoste argued that Ex. DW 1/24 is
CC’d to Mr. Bernard Lacoste, linking it to an earlier correspondence dated
21st January, 1983, which initially proposed co-existence between the parties.
This connection is being misused by Crocodile International to argue that
there was a consistent, mutual understanding aimed at supporting each other’s
trademark registrations across various jurisdictions, including India.
95.

In the opinion of the Court, these documents do not establish any

binding agreement that was formally signed in 1985 in relation to India
pertaining to the Annexure-A device. The reference to a general spirit of coexistence in Ex. DW 1/24 is insufficient to establish a binding agreement
applicable to new territories, such as India. For an agreement to be
enforceable, it must be clear, specific, and mutually acknowledged, which thisletter fails to achieve, rendering it ineffective as a basis for use of AnnexureA device in India. Likewise, Ex. DW 1/25, even if taken at face value, does
not constitute legal evidence of an enforceable co-existence agreement vis-àvis Annexure-A device, and is thus, irrelevant to the instant lawsuit.
Ex. DW 1/26 (colly):96.

Ex. DW 1/26 comprises of the letter dated 06th March, 1989 of

Defendant No. 1, apprising Plaintiff No. 1 of the prevalence of counterfeit

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shirts of Lacoste in Indonesia and the ensuing communications dated 13th,
14th, and 23rd March, 1989 deliberating the legal avenues for combating the
problem. Through these documents, Crocodile International sought to portraya co-existence arrangement between the parties that embraces various
countries, and argued that same should apply to India. However, in the Court’sview, since Indonesia comprises the ‘Territory’ defined in Article I of the1983 Agreement, the parties’ conjoint efforts to protect their trademark rights
within Indonesia do not advance the Defendants’ case. Instead, Ex. DW 1/26
further fortifies the view that parties’ collaboration was restricted to specificregions.
Ex. DW 1/27 (colly):
97.

This exhibit includes a letter from Defendant No. 1 to Plaintiff No. 1

dated 15th June, 1990, and a corresponding reply from Plaintiff No. 1 of 22ndJune, 1990. In the communication dated 15th June, 1990, Defendant No. 1
inter alia requested Plaintiff No. 1 to not object to their application for the
trademark “CROCOKIDS” in Korea, citing the co-existence agreement
allowing registration of “CROCODILE” mark in Defendant No. 1’s favour,in exchange for their consent to Plaintiff No. 1’s registration in India. In their
reply issued on 22nd June, 1990, Plaintiff No. 1 refused to abide by Defendant
No. 1’s request, clarifying that the “agreement for Korea given in counterpartof yours for India and Pakistan concerned your original crocodile device andword trademark.” In their oral arguments, Crocodile International claimed
that the reply letter from Plaintiff No. 1 constitutes an admission that there
was an agreement to mutually refrain from opposing each other’s trademarks
in India. This interpretation is used to argue that there was a recognized andCS(COMM) 1550/2016

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ongoing understanding between the parties regarding non-opposition to theAnnexure-A device in India. Lacoste, however, disputes this interpretation.
They contended that the subject matter of Ex. DW 1/27 does not pertain to theAnnexure-A device. Specifically, item number 1 in the correspondence
references a third-party trademark application No. 435480 for the trademark“” in the name of Gaja Shoes, which is unrelated to thedevices directly contested between the parties.
98.

The Court finds that the clarification supplied by Plaintiff No. 1 in their

response clearly demarcates the extent of their consent to Defendant No. 1’scomposite trademark that entails the crocodile device and the word
‘Crocodile.’ This suggests that the correspondence was focused on specifictrademark issues, rather than establishing or acknowledging a broad nonopposition agreement in India, encompassing the Annexure-A device.
Therefore, Ex. DW 1/27 does not substantiate Crocodile International’s claimof an agreed strategy of mutual non-opposition across all trademarks in India,
especially in the absence of a formal, documented agreement to that effect.
The legal significance of this correspondence is limited to the trademarks
specifically discussed, and does not extend to a broader contractual
understanding between the parties.
Ex. DW 1/28 to DW 1/31:
99.

Ex. DW 1/28, Ex. DW 1/29 and Ex. DW 1/30 are Defendant No. 1’sletters to Plaintiff No. 1, dated 16th August, 1990, 20th September, 1990, and28th September, 1990, respectively. In the said communications, Defendant

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No. 1 describes the co-existence arrangement in Korea, India, and Pakistan asa “gentleman’s agreement,” and offers suggestions to maintain this coexistence in the territories outlined in the letters. The letter dated 08th January,
1991, marked as Ex. DW 1/31, was addressed by Plaintiff No. 1 to Defendant
No. 1, apprising Defendant No. 1 of the course of action adopted by Plaintiff
No. 1 in respect of third parties operating in South Korea, where a“gentleman’s agreement to coexist” subsisted between the parties. Throughthese documents, Crocodile International sought to demonstrate an ongoing
intent for co-existence under the terms of the 1985 Agreement. However,Lacoste contested the significance and implications of these letters, pointing
out that Ex. DW 1/28 to Ex. DW 1/30 were unilateral communications from
Defendant No. 1.
100. The exhibits referred above also do not pertain to the Annexure-A
device specifically contested in this case. As highlighted by Lacoste,
Defendant No. 1, within Ex. DW 1/28 to Ex. DW 1/30 itself, acknowledges
that the mark accepted by Plaintiff No. 1 in certain countries is referred to as
the “Crocodile Brand,” which is distinct from the Annexure-A device. The
analysis of these letters must consider the principles of contract and trademark
law, particularly focusing on the requirement for mutual consent and clear,bilateral agreements for co-existence to be enforceable. Additionally, thecontext of the correspondences is crucial. Without explicit references to theAnnexure-A device, these letters cannot be assumed to demonstrate an
ongoing mutual understanding and intent for co-existence, implying that
Plaintiff No. 1 agreed to a non-formal, yet binding, arrangement concerning
the use of the Annexure-A device in India. Moreover, for any “gentleman’s
promise” or informal understanding to have legal standing, there must be clear

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evidence of mutual consent and acknowledgment from both parties. Informal
understandings or promises, unless clearly documented and mutually agreed
upon, do not hold the same legal weight as formally executed agreements.
101. Thus, the lack of specific references to the Annexure-A device
undermines the argument that these letters constitute an acknowledgment ofco-existence regarding the trademark in question in the current proceedings.
The specific acknowledgment by Defendant No. 1 that only certain aspects of
their branding were accepted by Plaintiff No. 1 in some countries is crucial as
it delineates the boundaries of what was agreed upon by the parties. Given
these considerations, Ex. DW 1/28 to Ex. DW 1/31 are only indicative of
Defendant No. 1’s perspective and intentions, rather than as conclusive proofof a mutual, legally binding agreement on trademark co-existence in India in
relation to the Annexure-A device.
Ex. DW 1/32 to Ex. DW 1/35:
102. Defendant No. 1’s communication dated 01st February, 1993 [Ex. DW
1/32] raises concerns over a raid executed by Plaintiff No. 1’s legal
representative at the premises of Defendant No. 1’s licensee in Bangkok. In
this letter, referencing to the ‘good relation and co-operation’ of the parties,
Defendant No. 1 had offered to counsel their licensee not to proceed against
Plaintiff No. 1 in Bangkok. Ex. DW 1/34 (dated 24th February, 1994) and Ex.
DW 1/35 (dated 18th May, 1994) are letters of Defendant No. 1 underlining
their consistent efforts to distinguish their trademarks from Plaintiff No. 1’s
across various markets. Ex. DW 1/33 is a letter by Defendant No. 1,
expressing gratitude to Plaintiff No. 1 for their consent to the registration of
the “crocodile & device” trademark in Pakistan as per parties’ co-existence

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arrangement for India, Korea, and Pakistan. The Plaintiffs strongly refuted
Defendants’ implied understanding of spirit of goodwill/ cooperation fromthese documents, asserting that these letters are unilateral communications
from Defendant No. 1 and do not specifically pertain to the Annexure-A
device.
103. These exhibits must be evaluated on the anvil of specific references to
the Annexure-A device together with an explicit mention of the Indian
market, which are noticeably absent from the letters. In fact, Lacoste’s
consistent clarification that consent was only limited to the original crocodile
device is underscored by Ex. DW 1/33, which indicates that Plaintiff No. 1
supposedly furnished a no-objection for registration application of the markconsisting of crocodile device and the word ‘Crocodile’ in Pakistan. This
clearly indicates that there was no broader, generalized enforceable agreement
qua Annexure-A device that could be inferred to apply to India. The legal
relevance of these documents is limited to demonstrating Defendant No. 1’s
perspective, and cannot substantiate a claim of a mutual, binding agreement
impacting the current legal proceedings.
Ex. DW 1/36 and Ex. DW 1/37:
104. The above-referred exhibits are crucial in ascertaining the alleged
cooperation between parties regarding the use of standalone saurian device by
Crocodile International in Korea under the 1985 Letter. Ex. DW 1/36 wasissued by Plaintiff No. 1 on 29th March, 1995, protesting the use of a“crocodile without the signature crocodile above” by Defendant No. 1’slicensee in the Korean market. Plaintiff No. 1’s grievance noted in Ex. DW
1/36, is reproduced below:

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VERDICTUM.IN“Dear Mr. Tan,
We have received your fax dated March 27, 1995 and thank you for the
instructions you gave to your Licensee concerning the deletion of thewording “FRANCE” and “PARIS” from the brochure and thewithdrawal of such from the market.
We will, within the next weeks, ask our Licensee to check if yours hascomplied with your request and of course we will let you know.
Unfortunately, as regards the second issue raised in my letter, related tothe use in Korea by your Licensee of a Crocodile without the signature
Crocodile above, your answer is not at all satisfactory.
As you certainly know, our products with our Crocodile trademark havebeen distributed and sold on the Korean market since 10 years and in
Korea, amongst other countries, a Crocodile on a garment on a productwhatsoever necessarily implies, in the mind of the public, that is a
LACOSTE garment or a LACOSTE product.
Accordingly, if we can coexist on the Korean market, the condition is thatthe design of your emblem does not create any possibility of confusion
with ours which is not the case as it is its exact replica, the only
difference being that is looks left.
We consider that the Crocodile as used by your Licensee on the chest of
the polo-shirt is too close to ours and infringes our trademark rights as itis quite different from the shape of the one registered.
This is also the opinion of our Licensee, the SUKWANG Company, andof our Trademark Agent.
We accordingly request that your Licensee uses on the products a
Crocodile strictly identical to the one you have been able to register, withour consent, i.e. not only looking left but also thinner, longer and in an
oblique position.
Unless this be done, we and our Licensee shall have no alternative but totake the necessary legal steps for the protection of our Crocodile
emblem.
Thank you to let us know your decision within a fortnight.
Looking forward to hearing from you.
Yours sincerely,
Sd/Christian LONDON
Legal Manager”

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105. The afore-noted communication has not been refuted by Lacoste.
Instead, they argued that this letter clarifies that co-existence is only feasible
if the emblem used by Crocodile International is not an exact replica of
Lacoste’s mark, with the sole difference being the direction that the crocodile
faces. This indicates that Plaintiff No. 1’s consent under the parties’
understanding of 1985 envisions registration of the crocodile device which
entails the word ‘Crocodile’ alongside the crocodile device. Ex. DW 1/36
specifically addresses issues related to use of crocodile device without theaccompanying signature ‘Crocodile’ on top i.e., the Annexure-A device. Ex.
DW 1/37 is the response from Defendant No. 1 dated 06th April, 1995. During
oral arguments, Crocodile International contended that this letter addresses
and clarifies the contention regarding mention of five and three marks in
Schedule A of the 1983 Agreement and supports their position on the mutual
understanding of trademark use and co-existence under the 1985 Letter. The
Court finds that Ex. DW 1/37 is only a response to the specific objection
raised by Plaintiff No. 1. Plaintiff No. 1’s objections to the use of the crocodile
device without ‘Crocodile’ signature underscore their insistence on clear
differentiation between the trademarks to avoid consumer confusion. The
response from the Defendant, therefore, must be viewed within the context ofaddressing specific conditions for trademark use rather than establishing acomprehensive co-existence agreement, envisaging the Annexure-A device
within its ambit.
106. In conclusion, Ex. DW 1/36 and Ex. DW 1/37, while indicative of somelevel of understanding between the parties regarding the crocodile device
accompanied with the word ‘Crocodile,’ does not substantiate Crocodile
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Annexure-A device in the Indian market. Rather, the letter’s specific focus
and the conditions outlined by Plaintiff No. 1 for acceptable co-existence
further reinforces that Plaintiff No. 1 never consented to the use of AnnexureA device even in Korea, a purported co-existence agreement country.
Ex. DW 1/38 to Ex. DW 1/40:
107. Ex. DW-1/38 (letter dated 25th July, 1995), Ex. DW 1/39 (letter dated
28th July, 1995) and Ex. DW 1/40 (letter dated 02nd August, 1995) arecorrespondences between the parties seeking to establish a co-existence
regime in China. In these communications, both parties refer to an
arrangement of 22nd August, 1985 and thus, Crocodile International relied
upon these documents to demonstrate the acknowledgement of co-existence
and the applicability of the 1985 Agreement.
108. As these exhibits do not address the Annexure-A device directly, which
is a crucial aspect of the current dispute, they cannot be construed as evidenceof an agreement related to its use in India. Thus, these documents hold limited
legal weight in the context of the current dispute.
Ex. DW 1/41:
109. Ex. DW 1/41 is the refusal by Plaintiff No. 1 to Defendant No. 1’srequest for consent to trademark registration in Vietnam. The contents of the
document neither reveal the trademark in question nor a cooperationagreement in Vietnam. Nonetheless, in absence of cogent proof, any supposed
collaboration in Vietnam would not extend to India. Therefore, Ex. DW 1/41
is not relevant to the instant dispute.

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Ex. DW 1/42:
110. Ex. DW-1/42 is a letter dated 13th November, 1997, which Crocodile
International has relied upon to argue that Plaintiff No. 1 admitted to thestandalone saurian device (Annexure-A device) forming a part of the 1983
Agreement. Through this letter, Plaintiff No. 1 opposed the use of a crocodile
emblem facing left on the suitcases manufactured by Defendant No. 1. The
letter notes as follows:“Dear Mr Tan,One of our representatives took the attached photo in the Mitsukoshi
Department Store in Taipei showing suitcases bearing a Crocodile
emblem looking left which is the exact mirror representation of ourLacoste Crocodile emblem.
May we remind you that the Crocodile devices you have been authorized
to use or register according to the provisions of our Settlement
Agreement of June 1983 are strictly limited to ones:

We consider that this is a strong and unacceptable infringement to said
Agreement and to our trademark rights.
We suppose that this line of products has been licensed by you to a third
party. Accordingly, we would appreciate that you ask your licensee toimmediately stop the manufacturing and selling of these products andmodify their branding including the labels, the leaflets, etc… according
to our Agreement.
We are sure that you understand our position and are confident that you
will take the necessary steps in order to maintain our peacefulcoexistence in the markets agreed between us.
Yours faithfully,
Sd/Christian LONDON”

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111. Lacoste explained that their representative in Taiwan discovered acrocodile emblem being used by Defendant No. 1, which was an exact mirror
image of Plaintiff No. 1’s crocodile device. Consequently, Plaintiff No. 1
immediately wrote to Defendant No. 1, highlighting this issue and reminding
them that under the 1983 Agreement, they were only permitted to use two
specific types of crocodile devices as specified in the Agreement. The use of
any other device, including the contested Annexure-A device, would
constitute a breach of the 1983 Agreement. However, Lacoste submitted that
there was an error in reproducing the two crocodile devices in paragraph No.
2 of the letter, noted above. They submitted that the annexure to the letter
clearly depicts the objectionable device used by Defendant No. 1 as “,” which is an exact mirror representation of Plaintiff
No. 1’s crocodile device.
112. The letter clearly identifies the objectionable use of the crocodile
device in Taiwan, indicating that Plaintiff No. 1 was actively monitoring andenforcing the terms of the 1983 Agreement. The annexure provides visualevidence of the device contested in the letter, supporting the Plaintiffs’
assertion. Thus, the acknowledgment of an error in the letter regarding thespecific objection does not undermine the overall argument as it clarifies thecontext in which the objection was made. Irrespective, given the failure of
Defendant No. 1 in demonstrating application of the terms of 1983 Agreement
to the Indian territory discussed hereinabove, the issue of inclusion ofstandalone Annexure-A device in Schedule A of the 1983 Agreement
becomes irrelevant to the dispute at hand. Therefore, Ex. DW 1/42 does not

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buttress the Defendants’ claim of an agreed-upon use of the Annexure-A
device within India.
Ex. DW 1/43:
113. Ex. DW 1/43 is a letter dated 02nd February, 1998 from Plaintiff No. 1
to Defendant No. 1, wherein Plaintiff No. 1 objected to the use and registrationof the crocodile device by Defendant No. 1 in Myanmar, labelling the sameas a contravention of the agreements made in 1984 and 1985, which were
specific to certain countries. As per Crocodile International, this lettersuggests an acknowledgement of the ongoing mutual understanding andwillingness to co-exist under the terms outlined in the 1985 Agreement.
114. This letter’s content does not indicate mutual consent to extend the1983 Agreement to India or acknowledges the Annexure-A device. Instead, it
reaffirms Plaintiff No. 1’s efforts to restrict the Agreement’s applicability andprotect their trademarks from unauthorized use in countries outside the agreed
territories, highlighting their vigilance in protecting their trademark rights.
Therefore, this document also does not substantiate the Defendants’ claims.
Ex. DW 1/44:
115. This letter, dated 28th May, 1998, clarifies the scope of parties’ coexistence arrangement prevalent in Korea. Through this communication,
Plaintiff No. 1 raised concerns regarding use of a crocodile emblem facing
right by Defendant No. 1’s licensee. Plaintiff No. 1 stressed that Defendant
No. 1 was authorized to register the mark “” in Korea and useof other variants of the crocodile symbol by Defendant No. 1 would constituteinfringement of Plaintiff No. 1’s trademark rights. This explicit

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acknowledgement of the ambit of parties’ understanding for a harmonious coexistence in Korea, which forms the subject matter of the 1985 Letter,
unequivocally proves the reluctance of Plaintiff No. 1 to permit use andregistration of designs other than the composite crocodile device, including
Annexure-A device, by Defendant No. 1.
Ex. DW 1/45 and Ex. DW 1/46:
116. Ex. DW 1/45 is a letter dated 18th December, 1998. Through this letter,recognizing that parties have been co-existing in several Asian countries as
per specific written agreements, Plaintiff No. 1 protested the infringement of
their exclusive rights over their trademarks in China. Further, they also
objected to the manner of use of crocodile device in India. Ex. DW 1/46 is
Defendant No. 1’s response to Ex. DW 1/45, offering to mutually resolve theissue in India. Ex. DW 1/45 is pivotal in confirming Lacoste’s position
regarding the territorial scope of the 1983 Agreement and their consistentopposition to any unauthorized use of the crocodile trademark by Crocodile
International, ensuring that no implied consent or co-existence in respect of
the Annexure-A device can be inferred in territories outside the agreed
regions, including India.
Ex. DW 1/47 to Ex. DW 1/79:
117. Ex. DW 1/47 to Ex. DW 1/79 consist of a series of consent lettersexchanged between the parties. Crocodile International argued that thiscollection of consent letters, covering various countries, demonstrates anoverarching intent of co-existence between the parties. They suggested that

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the issuance of these consent letters reflects a mutual understanding andwillingness to allow the use of certain trademarks in different jurisdictions.
118. The consent letters included in Ex. DW 1/47 to Ex. DW 1/79 pertain tovarious countries, reflecting the parties’ agreements in those specificjurisdictions. However, the absence of any consent letter related to the use of
Annexure-A device in India underscores Lacoste’s stance and weakens
Crocodile International’s arguments. For a co-existence agreement to be
relevant to the current dispute, it must explicitly cover the specific trademark
in question. The issuance of consent letters in various jurisdictions does
indicate a willingness to co-exist under certain conditions. However, thiswillingness does not automatically extend to all trademarks or all countries.
Each consent letter must be assessed based on its specific terms and thejurisdictions it covers.
119. Therefore,

these

documents

donotsubstantiate

Crocodile

International’s claims of a broader co-existence agreement applicable to thecurrent dispute. The legal relevance of these consent letters is confined to thespecific countries and trademarks they explicitly address, reinforcing
Lacoste’s position regarding the territorial and trademark limitations of theiragreements.
III.III.
Does the mutual co-existence under the 1985 Letter apply to
the Annexure-A device in India?
120. The 1985 Letter, as argued by Crocodile International, purportedly
extended the mutual co-existence understanding founded in the 1983
Agreement to additional territories, including India. They assiduously
maintained that their right to use the Annexure-A device in India, contested

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in the present proceedings, originates from an agreement established in 1985
between the parties. Crocodile International contended that the parties had amutual understanding for harmonious co-existence within the markets of
Korea, India, Pakistan, and Bangladesh in respect of Annexure-A device.
However, this purported mutual agreement is not borne out from the 1985
Letter, which is a unilateral communication issued by Defendant No. 1. Thisletter offers support for use and registration of the devices “

and “

”

” in Korea and proposes furnishing of a similar

undertaking in India, upon Plaintiff No. 1’s request. Furthermore, there is noreference to any prior communication that would suggest ongoingnegotiations between the parties. No other documentary evidence crystalizing
this alleged mutual understanding has been put forth by Crocodile
International. The lack of mutual acknowledgment from Lacoste further
weakens the argument for an expanded co-existence agreement. The
principles of contract and trademark law require clear mutual consent for coexistence agreements to be enforceable. In this case, such mutual consent isconspicuously lacking for the extension of the agreements to India.
121. In absence of a formal written agreement, Crocodile International
aimed to corroborate their stance through the contemporaneous documents[Ex. DW 1/24 to Ex. DW 1/79], which allegedly contain admissions of the1985 co-existence agreement for India by Plaintiff No. 1. However, Ex. DW
1/24 to Ex. DW 1/35, Ex. DW 1/37 to Ex. DW 1/40, and Ex. DW 1/45 to Ex.

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DW 1/79 have not been proved by the Defendants, restricting their ability torely on these purported admissions.
122. Notwithstanding their inadmissibility, upon thorough examination, it
becomes clear that the aforesaid documents do not provide concrete evidence
supporting the claim that Crocodile International is utilizing the Annexure-A
device in India with Lacoste’s consent. Even when taken on face value, at thehighest, these exhibits suggest an arrangement between Plaintiff No. 1 andDefendant No. 1 permitting the use of crocodile device accompanied with theword ‘Crocodile’ by the Defendants. The Court’s view is reinforced by Ex.
DW 1/36 and Ex. DW 1/44, which have been admitted in evidence as
Defendant No. 1 produced the originals. These documents demonstrate
Plaintiffs’ disinclination to sanction continuous use of a crocodile symbol
without the ‘Crocodile’ signature in Korea, underscoring their commitment toprotecting their trademark rights and limiting the scope of co-existence.
123. Significantly,

neitherthe

1985Letternortheadmissible

contemporaneous documents evince an extended agreement, covering thecrocodile devices, especially Annexure-A device, in India. Given the explicit
territorial limitations of the 1983 Agreement and the lack of substantial
evidence supporting the extension of the 1985 Letter to Annexure-A device,
the Court concludes that the Plaintiffs have not consented to the use of
Annexure-A device by Defendants in India.
IV.

Concluding observations on the 1983 Agreement, 1985 Letter and thecontemporaneous documents
124. The 1983 Agreement is confined to the five countries explicitly
mentioned in Article I, and does not extend to India. The 1985 Letter, while

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intended to promote co-existence in additional territories, lacks the necessary
mutual consent and specific references to be applicable to India or the
Annexure-A device. The contemporaneous documents do not show mutual
consent or acknowledgment from Lacoste to the use of Annexure-A device inIndia. The Arbitral Award and the continuous actions of the Plaintiffs toprotect their trademarks further reinforce this conclusion. Lacoste’s consistentobjections and clarifications in their communications undermine Crocodile
International’s claims of an extended co-existence agreement associated with
the Annexure-A device in India.
125. The evidence on record overwhelmingly supports Lacoste’s position
that the 1983 Agreement and 1985 Letter do not cover the Annexure-A device
in India. Therefore, they are not bound by these agreements, and theirobjections to Crocodile International’s use of Annexure-A device are legallyvalid and enforceable. Accordingly, the Court upholds the Plaintiffs’
trademark rights and rejects the Defendants’ claims of an extended coexistence agreement covering these aspects.
V.

Conclusion on violation of trademark rights

V.I. Infringement
126. While the co-existence of the parties’ registered trademarks – “

”

and

“

”,

and

“

”

and

“

” – suggests a degree of tolerance within the Indian market
for similar designs, the exact nature and execution of the subject designs – “CS(COMM) 1550/2016

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VERDICTUM.IN” and “” i.e., how they are perceived by the average

consumer, will ultimately dictate whether infringement has occurred. In lightof the detailed observations in the preceding paragraphs, it is evident that
Annexure-A device of Crocodile International is deceptively similar toLacoste’s mark. The visual and conceptual parallels between the marks
support a strong case for trademark infringement, underscoring theimportance of protecting the distinctiveness of the Lacoste trademarks. Under
Section 29(1) of the Trade Marks Act, 1958, this degree of deceptive
similarity can cause confusion and deceive the average consumer and thus
violates the Plaintiffs’ trademark rights.
V.II. Assessing the allegations of passing off
127. Having established the deceptive similarity between the two
trademarks, the Court now proceeds to examine whether the use of theAnnexure-A device by Crocodile International amounts to passing off theirgoods as that of Lacoste.
128. A passing off action is intended to protect the reputation or goodwillthat has overtime come to be associated with a trademark. The doctrine aims
to safeguard the public interest by preventing a party from dishonestly
conducting their business as another’s. In order to prove that Crocodile
International is indulging in passing off by falsely presenting their goods asthat of Lacoste, Plaintiffs must conclusively demonstrate that they fulfil theclassic trinity test, established in the landmark case of Reckitt and Colman

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Products Ltd v. Borden Inc.,23 and later adopted and endorsed by theSupreme Court in Laxmikant V. Patel v. Chetanbhat Shah and Anr.,24 andnumerous other judgments. The test comprises of three prongs – (a) reputationof the Plaintiff, (b) misrepresentation to the public by the Defendant, and (c)damage to the Plaintiff’s goodwill or reputation caused from the Defendant’s
impugned actions.
129. Lacoste’s witnesses asserted that the trademark “LACOSTE” and thecrocodile device carry significant reputation in India. PW1 deposed regarding

Lacoste’s registrations of the trademarks “” and “”dated 19th January, 1983, which marked their entry into the Indian market.
According to the witnesses, these devices were first commercially used inIndia in 1993. To demonstrate reputation and goodwill in the Indian market,
Lacoste has presented the following oral and documentary evidence:(a)

The examination-in-chief of PW1 and PW2 (through affidavits by wayof evidence) marked as Ex PW 1/A and PW 2/A. Paragraphs No. 19 to 22 of
Ex. PW 1/A and paragraphs No. 4, 7, 8 of PW 2/A, which primarily echo thecontents of the plaint, proclaim extensive reputation of “LACOSTE”
trademark and the crocodile device in India, with the public identifying themas the exclusive source of the concerned products.
(b)Electronic documents in two compact discs,25 which were marked as

Ex. PW 1/15 and Ex. PW 1/16, along with prints of selective documents
referred above. Ex. PW 1/15 contains information concerning Plaintiff No.

23[1990] 1 WLR 491.
(2002) 3 SCC 65.
25“CDs.”
24

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1’s founding, adoption of the trademarks, articles and advertisements
displaying the trademarks stored electronically. Ex. PW 1/16 is the electronic
copy of the report of a study conducted on the awareness of “LACOSTE”
trademark and the crocodile device inter alia in India. PW1 has specifically
produced print outs of the outcome of the study in India.
(c)

Certificate issued by a Chartered Accountant endorsing the sales

figures and promotional expenses of Plaintiff No. 2, marked as Ex. PW 2/5
and presented in evidence by PW2.
(d)Ex-parte ad-interim orders submitted as Ex. PW 1/17 passed by thisCourt granting injunction in favour of the Plaintiffs, restraining third parties
from using “LACOSTE” mark and the crocodile device.
(e)Computer-generated prints of newspaper articles accompanied with anaffidavit dated 02nd December, 2005 under Section 65B of the Evidence Act,
1872. These documents were neither referred to by any of the Plaintiffs’
witnesses in their testimony, nor were they tendered in evidence.
130. In the realm of trademark law, establishing reputation and goodwill ofa mark is paramount for a Plaintiff seeking protection against passing off. At
the heart of a passing off claim lies the necessity to demonstrate that thetrademark in question had garnered substantial recognition and goodwill inthe marketplace on the date of adoption of the impugned mark, to the extent
that its unauthorized use by another party could lead to consumer confusionand damage to the Plaintiff’s business. Reputation refers to the recognitionand standing that a trademark has acquired amongst the relevant public. It isa measure of the mark’s distinctiveness and the associations that consumers
form with the quality and characteristics of the goods or services it represents.
Reputation is usually built over time through consistent use, quality

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assurance, and strategic marketing efforts. Goodwill is the intangible asset
that arises from the reputation of a trademark. It encompasses the positive
perception and customer loyalty that the mark commands. Goodwill is areflection of the trust and confidence consumers place in the trademark,translating into repeated business and competitive advantage. The concepts ofreputation and goodwill have evolved significantly. In earlier times,
reputation was largely confined to physical marketplaces and local trading
areas. However, with the advent of mass media, globalization, and digitalmarketing, the scope of reputation has expanded. Today, a trademark’s
reputation can transcend geographical boundaries, garnering recognition in
multiple jurisdictions through social media, advertisements, and global trade.
We must therefore, remind ourselves that the assessment in this case has to bein the context prevalent over two decades ago.
V.II.I. Goodwill and reputation of Lacoste131. The standard for assessing ‘reputation and goodwill’ is stringent.
Therefore, the Court must meticulously assess the evidence presented todetermine reputation and goodwill. Under the Indian Evidence Act,
specifically, Section 101 to 104, the burden of proof lies on the Plaintiffs toprovide concrete and credible evidence to prove the reputation of theirtrademark. At the final stage of the suit, courts require a higher standard of
proof from the Plaintiffs, moving beyond prima facie considerations to athorough examination of the facts. In the present case, the oral anddocumentary evidence presented by Lacoste does not establish their exclusive
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of adoption of Annexure-A device by Crocodile International. A detailed
analysis of the evidence presented, underpinning this conclusion is as follows:
132.1 Non-conformity with Section 65B of the Evidence Act:132.1.1.

As noted above, Plaintiffs have presented several pieces of

documentary evidence, including printouts of articles published in print
media, a market survey report on brand recognition, and photographs of theirproducts and endorsements by celebrities adorning their branded apparels.
These documents are central to establishing widespread recognition andreputation of the Plaintiffs’ trademark within the Indian market. However, themanner of presenting these crucial evidences raises pertinent questions
concerning the admissibility of electronic records and the necessary
compliance with Section 65B under the Evidence Act. Evidently, at the timeof producing Ex. PW 1/15 and Ex. PW 1/16 with the evidence by way ofaffidavit of PW1 filed on 03rd December, 2005, Lacoste did not submit acertificate under Section 65B of the Evidence Act.
132.1.2.

According to the testimony of PW1, the press articles,

advertisements and photographs contained in Ex. PW 1/15 were apparently
originally printed in magazines and newspapers, and then scanned and stored
as electronic records on a computer resource. Thus, as per PW1’s own
admission, this documentary evidence was presented as an electronic copy ofthe primary evidence (on a CD or as selective printouts on paper). This
necessitated the submission of a certificate under Section 65B(4) of the
Evidence Act when Ex. PW 1/15 and PW 1/16 were presented as electronic
copies. This is because the digital scans stored on a computer are treated aselectronic records, and the copies made therefrom are considered to be derived
from electronic records. The absence of originals or certified copies of these

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print articles impinges the evidentiary value of these copies. Without a
Section 65B certificate, these documents cannot fulfil the threshold of
reliability and authenticity required by law, significantly weakening thePlaintiffs’ case. The Supreme Court of India, in a landmark case titled Arjun
Panditrao Khotkar v. Kailash Kushanrao Gorantyal,26 has elucidated on the
mandatory nature of the compliance under Section 65B for producing
electronic records in evidence. The Supreme Court has categorically ruled on
the significance of the certificate under Section 65B(4). It has been held thatfor the deeming fiction regarding the admissibility of electronic record to takeeffect, all the conditions stipulated in Section 65B must be satisfied. A
certificate under Section 65B(4) is sine qua non for admissibility of electronic
evidence. Further, overruling the decision in K. Ramajyam v. Inspector of
Police,27 the Supreme Court held that oral evidence cannot substitute themandatory requirement of law entailed in Section 65B(4) of the Evidence Act.
An exception was created to this obligation in the cases of production oforiginal document through the original owner of the computer device, whoshould prove the source and legitimacy of the information. This rulingunderscores the necessity of adhering to procedural requirements to ensurethat the evidence considered is genuine, reliable, and capable of substantiating
the claims made. The statutory requirements contained in Section 65B forpresenting electronic records are indispensable. This lack of certification
coupled with the absence of original documents, renders Plaintiffs’ evidence
contained in Ex PW1/15 and Ex. PW 1/16 and the accompanying printouts to
be inadmissible and ineffective in proving their trademark reputation.
26
27(2020) 7 SCC 1.
2016 SCC OnLine Mad 451.

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132.1.3.

In the seminal judgment of State of Karnataka v. T. Naseer andOrs.,28 concerning the admissibility of electronic evidence in criminal trials –a principle equally pertinent to civil matters – the Supreme Court, reiterating
the view in Arjun Panditrao (Supra), elaborated extensively on the
mandatory nature of Section 65B of the Evidence Act. The Court
unequivocally stated that electronic records must be accompanied by acertification detailing their production and affirming their authenticity to beadmissible. Crucially, this certification can be submitted at any trial stage,
provided the trial has not concluded, thus classifying the absence of an initialcertificate as a curable defect. However, in the present case, the Plaintiffs havefailed to produce such certification at any trial stage, highlighting a significant
procedural oversight.
132.1.4.

It appears that the Plaintiffs realised this lacuna and sought tomitigate the situation. This becomes evident from their attempt to re-examine
PW1. However, that effort, in the opinion of the Court, does not salvage thesituation as Plaintiffs cannot be permitted to overcome the mandatory
requirement of producing the necessary certification under Section 65B
through re-examination of a witness. This impediment is further exacerbatedby the fact that the scope of re-examination, as prescribed under Section 138of the Evidence Act, is strictly confined to matters arising from the crossexamination. This principle was underscored during the recording of evidence
on 20th January, 2007, where the Defendants’ counsel objected to the scopeof re-examination, arguing that it extended beyond issues raised during crossexamination.

28

2023 SCC OnLine SC 1447.

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132.1.5.

Joint Registrar’s permission to re-examine and observations

made during re-examination: Permission to re-examine PW1 was granted
under exceptional circumstances. The Plaintiffs’ counsel articulated the needto clarify certain issues that emerged during cross-examination. However, theDefendants’ counsel objected, contending that re-examination is not an
inherent right and argued that appropriate permission from the Court had notbeen sought. It was emphasized that the necessity for re-examination had notbeen adequately explained or justified before the Court. In response, thePlaintiffs’ counsel submitted that clarifications were necessary due tolanguage difficulties experienced by the witness. Given the urgency, as thewitness was scheduled to leave India the same day, on 20th January, 2007, theJoint Registrar permitted the re-examination, albeit subject to subsequent
approval by the Court.
132.1.6.

Utilization of the permission to re-examine to introduce new

evidence: Taking advantage of this allowance, the Plaintiffs’ counsel
introduced evidence related to electronic records marked as Ex.PW1/15 and
Ex.PW1/16, which had not been addressed during the initial crossexamination. This action was promptly challenged by the Defendants’counsel, who argued that the Plaintiffs were effectively attempting to
introduce new evidence under the guise of seeking clarifications. Indeed, suchan expansion of the testimony of PW1 is not permitted in re-examination,
especially in matters not previously broached during cross-examination. In
Simrin Singh v. Amrit Srinivasan and Anr.,29 this Court stressed that thescope of re-examination is restricted to “explain the matters referred to in

29

2018 SCC OnLine Del 7177.

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cross-examination.” However, this phrase cannot be construed widely so as
to permit the witness to “undo what has been achieved/ revealed in crossexamination.” The Court held that re-examination in civil litigations must
seldom be allowed and must be confined to clarifying the sense or meaningof the ambiguous or unclear expressions used by a witness in crossexamination, and to explain the motive behind the witness’ responses.
Further, it was categorically held that lacunae in evidence led cannot be cured
under the pretext of re-examination.
132.1.7.

The testimony of PW1 during re-examination exceeded thebounds set by Section 138 of the Evidence Act, which permits re-examination
only for clarifying issues explored during cross-examination, and not for
introducing new evidence or matters unrelated to the original testimony. Here,the Plaintiffs’ attempt to embed additional evidence through the backdoor of
re-examination undermines the integrity of evidential proceedings.
Accordingly, the Court holds that the re-examination conducted on 20th
January, 2007, aimed at providing information relating to the admissibility ofelectronic records stored in computers in the office of Plaintiff No. 1 situatedin Paris, is inadmissible in law, being beyond the scope of Section 138 of the
Evidence Act. Therefore, that part of the testimony of PW1 shall not be readin evidence.
132.1.8.

Nonetheless, even if the Court were to consider the deposition of

PW1 during re-examination, it becomes evident that the requirements
stipulated under Section 65B(4) of the Evidence Act were still not satisfied.
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activities, whichever is appropriate, must furnish a certificate identifying theelectronic record and describing the manner in which it was produced. Thiscertificate must also detail the particulars of the device involved in the
production of the electronic record and affirm that the electronic record was
produced by a computer during the regular course of activities. Additionally,
the deponent must specify information related to conditions specified in
Section 65B(2) of Evidence Act.
132.1.9.

During the re-examination, PW1 failed to provide these essential

details. Specifically, the witness did not describe the manner in which theelectronic records were produced nor did he give particulars of any device
involved in producing the electronic record. Furthermore, there was no
discussion about whether the computers were operating properly at the time
the records were created, a requirement under Section 65B(2) of the Evidence
Act, which states that the information must be produced during the regularcourse of operations and that the integrity of the electronic records must be
maintained. The significance of these omissions has been consistently
underscored by judicial precedents, such as Arjun Panditrao (Supra) and T.
Naseer (Supra), where the Supreme Court has emphasized the critical natureof the Section 65B certificate. Therefore, in any proceedings where electronic
evidence is sought to be produced, either a person occupying a responsible
official position in relation to the device or a person in-charge of the
management of the relevant activities, must produce a certificate that: (a)identifies the electronic record which contains the statement, (b) sets out theparticulars of the computer device involved in production of the record, and(c) endorses the criteria enumerated in Section 65B(2).

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132.1.10.

The electronic records in PW1/15 and PW1/16 cannot be

admitted as evidence because they lack the necessary authentication to ensure
its reliability and authenticity. The absence of a proper certificate under
Section 65B in the present case, combined with the inability of the witness toprovide specifics about the creation of electronic records and maintenancesignificantly undermines the admissibility of the evidence. Considering that
PW1 is not the original owner of the electronic devices on which the data wasproduced, his oral deposition regarding the process for recording and storingsuch information fails to meet the legal standard of demonstrating theadmissibility of Ex. PW 1/15 and Ex. PW 1/16. Consequently, the Courtcannot rely on electronic records lacking this crucial authentication, as it
would compromise the evidentiary standards set forth by the Evidence Act.
The portion of PW1’s testimony relating to the electronic records cannot be
considered in reaching a decision on the merits of the case.
132.2. Insignificance of affidavit dated 02nd December, 2005:
132.2.1.

Mr. Christian London [PW1] had filed an affidavit under Section

65B of the Evidence Act on 02nd December, 2005 concerning promotion of“LACOSTE” mark/ brand through certain computer-generated newspaper
articles circulated in China, France, and the United States. However, thiscertificate pertains to a set of documents, which have not been tendered inevidence. Considering these deficiencies, the Court finds that the testimony
regarding the electronic records does not meet the statutory requirements ofSection 65B of the Evidence Act.
132.3. The survey report [Ex. PW 1/16]:

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132.3.1.

The Court now turns to the market survey reports produced inevidence by PW1 that purportedly establish the reputation and goodwill of
Lacoste’s trademarks. Such survey reports typically provide direct evidenceof brand recognition, consumer preferences, and the extent of consumer
association of a trademark with specific goods or services. The strength ofsuch reports in legal disputes lies in their ability to present empirical data
directly reflecting the public perceptions and behaviours. The survey reportpresented by the Plaintiffs as Ex. PW 1/16, concededly, an electronic record
apart from being unsupported by an affidavit under Section 65B of the
Evidence Act, is problematic on several other fronts. Results of this survey
reflect the public perception in July 2004. For Lacoste to prove that use of
Annexure-A device amounts to passing off of their trademark, they must
establish reputation in 1998, which is the professed date of adoption of theAnnexure-A device. The report lacks any form of authentication as it isunsigned, and except for mention of “Sociovision Cofremca,” it does not
specify the author. Further, there is lack of background documentation anddata, which are crucial for verifying the methodology, sample size, andanalysis techniques used in the survey to support the conclusions. Thisabsence makes it difficult to evaluate the trustworthiness of the conclusions
drawn, and immediately raises concerns about its credibility and reliability as
evidence.
132.3.2.

In the legal context, a document is considered “self-serving” if itis prepared unilaterally by a party to the litigation and is intended to be infavour of that party without cross-verification or external validation. Without
the background documents detailing how the survey was conducted, the datacollected, and the methodology employed, the report remains uncorroborated

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and self-serving. This undermines its evidentiary value under Section 9 of the
Evidence Act, which concerns the facts necessary to support a case, andSection 101, which places the burden of proof on the person who asserts afact. Consequently, the market survey report – unsigned, unauthenticated, andwithout supporting documents – fails to meet the legal standards set by the
Indian Evidence Act for admissibility of evidence. The absence of supporting
background documents to substantiate the conclusions drawn in the survey
further diminishes its probative value.
132.4. The Chartered Accountant’s certificate [Ex. PW 2/5]:
132.4.1.

Now, we turn our attention to Exhibit PW 2/5, the Chartered

Accountant’s certificate in respect of the turnover and promotional expensesof Plaintiff No. 2, through which the Plaintiffs seek to prove the reputation of
the “LACOSTE” trademark and crocodile device. Indeed, this data is criticalin proving the reputation of a trademark. High sales figures demonstrate
market penetration and consumer acceptance, while substantial promotional
expenses indicate an investment in building brand recognition and consumer
trust. Together, these metrics provide a quantitative measure of the
trademark’s reputation.
132.4.2.

The Plaintiffs had also asserted these figures in the plaint, whichwere denied by the Defendants in their written statement. Under Section 101
of the Evidence Act, the burden of proof lies on the party who substantiallyasserts the affirmative of the issue. In the instant case, this means proving the
reputation of their trademark through reliable, authentic, and substantiatedevidence. Lacoste was required to prove the sales figures and promotional
expenses which they sought to do through Ex. PW 2/5. Thus, the Court must

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assess whether the Chartered Accountant’s certificate suffices to prove thefacts and consequently, conclusively establishes the trademark’s reputationand goodwill.
132.4.3.

Ex. PW2/5 summarizes financial data, but lacks detailed context

and supporting documents, including invoices, receipts, and ledgers, that
could provide a comprehensive view of Plaintiffs’ commercial activities andsupport the figures and promotional expenses mentioned in the certificate.
These detailed accounts would have enabled verification by the Court andcross-examination by the Defendants, thus ensuring the credibility of theevidence. Notably, the Plaintiffs did not summon the Chartered Accountant
as their witness, but instead, sought to prove the authenticity of the financial
data through PW2. However, PW2 is not a Chartered Accountant and his
involvement in the payment and maintenance of Plaintiff No. 2’s accounts has
not been clarified in evidence. During his cross-examination on 28th January,
2016, PW2 admitted that the books of account of Plaintiff No. 2, licensee ofPlaintiff No. 1, for the years 1993-94 to 2006-07 had not been produced. A
simpliciter production of a statement of their advertising expenditures andannual turnover does not sufficiently discharge the Plaintiffs’ burden to proveauthenticity of these figures for the Court to conclusively rule on theirtrademark’s reputation. It has been consistently held that even entries in thebooks of accounts are to be supplemented with persuasive supporting
material, including testimonies of the persons involved. In numerous judicial
pronouncements, referring to the provisions of Section 34 of the Evidence
Act, the courts have consistently emphasized that statements of accounts do
not disclose the relevant commercial dealings and cannot act as the sole basis

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for proving a financial transaction.30 The absence of these detailed accountsof commercial transactions prevents a granular view of the financial data,
thereby limiting the transparency and thorough examination by the Court.
This also hindered the ability of the Defendants to effectively cross-examine
the evidence presented.
132.4.4.

The suit is at the final stage, where the Court requires concreteand comprehensive evidence to rule on the reputation of Plaintiff’s trademark.
While the Chartered Accountant’s certificate is a valuable piece of evidence,
it is not supplemented with detailed accounts and supporting documents toprovide a complete and verifiable record of the Plaintiffs’ sales andpromotional activities. The Plaintiffs’ reliance on such an incomplete report
unfortunately, does not suffice to substantiate the claimed reputation of the
trademark, thus impacting the strength of their passing off claim.
132.5. Failure to produce translated versions of the documents: Lastly, theCourt must also note that Ex. PW1/15 also contains certain documents in
French language, of which the Plaintiffs did not file translated copies. Those
documents thus do not meet the evidentiary requirement for being admitted
in evidence stipulated under Rule 5 of Chapter XIII of the Delhi High Court(Original Side) Rules, 1967 read with Section 162 of the Evidence Act, andare thus, disregarded.
133. Conclusion: To prevail in a claim of passing off, Lacoste was required
to establish significant reputation and consumer recognition of theirtrademarks in India at the time when Crocodile International commenced the30

Refer: Chanradhar Goswami and Ors. v. Gauhati Bank Ltd., 1967 AIR 816, Central Bureau of
Investigation v. VC Shukla and Ors., AIR 1998 SC 1406, and Deluxe Road Lines v. PK Palani Chetty,(1992) 2 MLJ 481.

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infringing activities. The evidence crucial for substantiating such a reputation
presented by Lacoste, however, is markedly insufficient in this case. The
Court has scrutinized the documents and other material submitted by Lacoste.
The Chartered Accountant’s certificate [Ex. PW 2/5] and electronic records[Ex. PW 1/15 and Ex. PW 1/16] are found lacking in several respects. Ex. PW
2/5, intended to demonstrate sales figures and promotional expenses
indicative of market penetration and brand recognition, is not supported bydetailed accounts, or corroborated by a competent witness. This absence ofdetailed financial data and the failure to substantiate the figures throughprimary documentation or a qualified witness who is competent to prove thesame, significantly undermines the certificate’s reliability and the authenticityof the claims based thereon. Moreover, Ex. PW 1/15 and Ex. PW 1/16, being
electronic records, were not accompanied by the mandatory certificate under
Section 65B of the Evidence Act, a statutory requirement that ensures theauthenticity and reliability of such records. Without this certification, theCourt cannot accept these records as valid evidence. Additionally, theattempted introduction of new evidence during re-examination, without
proper procedural compliance, further detracts from the credibility of theevidence presented. Due to these evidentiary deficiencies, the Court finds that
Lacoste has not successfully demonstrated that their trademarks had acquired
a substantial reputation in India at the critical juncture when Crocodile
International began using a similar mark.
134. The absence of convincing proof of reputation, a fundamental elementof a passing off claim, renders Lacoste’s assertions unsustainable. Therefore,
based on the evidence and the law, the Court concludes that Crocodile
International’s actions do not constitute passing off of Lacoste’s trademarks.

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This decision is grounded in the principle that the onus to establish the key
elements of passing off, particularly trademark reputation and consumer
association, lies firmly with the claimant – a burden that Lacoste has failed todischarge to the requisite legal standard.
VI.

Copyright violation

135. Copyright protects original works of authorship, including literary,dramatic, musical, and artistic works, such as poetry, novels, movies, songs,
computer software, and architectural designs. Copyright infringement occurs
when someone copies, distributes, publicly performs, displays, or creates
derivative works from a copyrighted work, without the authorization of the
copyright holder. The primary concern in copyright law is to protect the rightsof creators by granting them exclusive rights to use, reproduce, and distribute
their works. The realm of protection offered under the copyright andtrademark laws is distinctly defined. Copyright entitles an author to inhibit
the imitation of their work in any medium, whereas trademark precludes
unsanctioned use of an identical/ similar trademark on goods and services intrade as would cause consumer confusion, thereby eroding the proprietor’s
exclusive rights or associated goodwill. In examining the claim of copyright
infringement asserted by Lacoste, the Court must remain wary of thedemarcated peripheries of both copyright and trademark protection. The nearresemblance in parties’ contesting devices, which may yield consumer
confusion or deception may not necessarily convey an infringement of
copyright. Thus, it is essential to undertake an independent assessment of the
Copyright Act, 1957, which governs protection of artistic works in India.
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their distinctive crocodile design “” [Ex. PW 1/10], assertsthat the reproduction of this design by Crocodile International constitutes a
substantial imitation, thus infringing upon their exclusive rights as the
copyright holder.
136. Copyright protection to an artistic work is aimed at protecting
expressions of creativity of the author, allowing them the exclusive rights tocommercially benefit from its reproduction. This protection however, does
not extend to the idea for conception of the work in question. It is theoriginality in the depiction and representation of the artistic elements, and notin the novelty of concept, that is safeguarded by the Copyright Act. The ideaexpression dichotomy in copyright law has given rise to the ‘merger doctrine,’
recognized in the celebrated decision of Herbert Rosenthal Jewellery
Corporation v. Kalpakian.31 This principle posits that when an idea and its
expression are so entangled inasmuch as they are indistinguishable, a creatorcannot be accorded monopoly over the idea which forms the foundation for
its creative expression. Simply put, when the manner of expression of aconcept is restricted, the Courts will not confer exclusive rights on the idea
itself.32
137. In the case at hand, the underlying concept of both conflicting works is
identical – both are graphical representations of a ferocious crocodile in an
aggressive stance. The portrayal of a fierce crocodile invariably includes
common features such as a tail, limbs, an open mouth with pointed teeth,31
32

446 F.2d 738 (1971).
Refer: Mattel, Inc & Ors. v. Mr. Jayant Agarwalla and Ors., 2008 SCC OnLine 1059.

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scales, and claws. Therefore, this abstract will certainly have limited ways of
expression, where the author’s creativity can be illustrated from the uniqueand artistic manner of meticulously crafting the constituent elements. In thiscontext, both parties’ crocodile designs are artistic works imbued with uniqueelements that distinguish it as a copyrighted creation, entitled for legal
protection.
138.

The crocodile devices of Plaintiff No. 1 and Defendant No. 1 are

independent creations, flowing from the same abstract. Both parties haveconvincingly elucidated their narratives of having opted for an artwork of acrocodile, initially intended for commercial use in territories of origin. In
these circumstances, the Court is unable to draw an inference of ‘copying’ of
Plaintiff No. 1’s design by Defendant No. 1. Similarities between the two
designs, arising from the same underlying idea with limited means ofmanifestation, cannot constitute infringement of Lacoste’s copyright. In thecase of Allen v. Academic Games League of Am.,33 the Court held that “ideas
contained in a copyrighted work may be freely used so long as the copyrighted
expression is not wholly appropriated.” The impugned artistic work “” exhibits novel independent artistic qualities that do not support
Lacoste’s allegations of imitation of their design, as the creator was at liberty
to draw from the general idea of a crocodile.
139. Therefore, given the convergence of the idea and execution in Lacoste’s
artistic expression, applying the merger doctrine, the Court does not find acase for copyright infringement by Crocodile International.
33

89 F.3d 614 (9th Cir. 1996).

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Finding on issue No. 4
140. In light of the explicit territorial scope of the 1983 Agreement, there isno evidence of a binding co-existence agreement, enabling the use of theAnnexure-A device by Defendants in India. Therefore, issue No. 4 is
answered in favour of the Plaintiffs, and against the Defendants.
Finding on issue No. 11
141. In view of the evidence presented and the parties’ concurrence, it isevident that the parties entered into a co-existence arrangement on 17th June,
1983. However, as noted above, the 1983 Agreement envisioned aharmonious co-existence of the parties within the five territories explicitly
delineated in Article I of the Agreement, and as such, do not entitle
Defendants to use the Annexure-A device in India.
142. Insofar as the 1985 Letter is concerned, the Defendants have failed toestablish a mutual arrangement between Plaintiff No. 1 and Defendant No. 1,
which facilitates the use of the Annexure-A device in India. The 1985 Letter
is a unilateral communication, and Plaintiffs cannot be held bound thereby.
As such, they are not precluded from objecting to the use of Annexure-A
device in India. Furthermore, given the consistent stance of Plaintiffs
protesting the use of Annexure-A device by Defendants in Korea, thereciprocal understanding, if any, does not cover the Annexure-A device in the
Indian territory.
143. Consequently, issue No. 11 is decided in favour of the Plaintiffs,
holding that the parties never executed a co-existence agreement for
Annexure-A device in India.
Finding on issue No. 8

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144. Keeping in view the established jurisprudence of trademark law
consistently recognized by the courts in India, the striking resemblance in theoverall characteristics of the Plaintiffs’ emblem “” with the Annexure-A device “”/ “,” and Plaintiffs’

established prior use in India, it is held that use of Annexure-A device by the
Defendants infringes the Plaintiffs’ trademark rights. However, given the
failure of Plaintiffs to prove their reputation in India, a case for passing off ofthe Plaintiffs’ trademarks is not made out.
145. As regards the issue of copyright violation, the creator of the artwork “” independently conceptualized the device, deriving from ageneric idea having restricted means of expression. In view of thefoundational idea of a crocodile, which can be expressed in a limited manner,
the Court holds that Defendants’ artwork does not violate Plaintiffs’
copyright.
146. Issue No. 8 is answered in the above terms.
ISSUE NO. 6- WHETHER THE PLAINTIFFS ARE NOT ENTITLED TO ANY RELIEF
AS THEY ARE GUILTY OF CONCEALING (SIC) VITAL FACTS AND DOCUMENTS?
OPD

147. The onus of proof for this issue is on the Defendants. They relied on
the contemporaneous documents exhibited as DW 1/22 to DW 1/46 to argue
that Lacoste has concealed vital facts and documents by not referring to these

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letters. As admitted by the Defendants in paragraph No. 6 of their written
submissions dated 08th March, 2024, all these letters pertained to historicalevents which were put to rest upon the subsequent mutual understandings
between the parties. In any case, as detailed hereinabove, these documents arephotocopies, and have not been proven in accordance with law and no casehas been made out for leading secondary evidence qua them. Additionally,
these exhibits are irrelevant to the present proceedings as they do not pertain
to use of Annexure-A device in India.
148. In view of the above, the Court finds that there has been no concealmentof any significant fact by Lacoste. Crocodile International has failed to show
any relevant fact or document in relation to the trademark in issue which has
been concealed by Lacoste, disentitling them from the desired reliefs. Hence,
this issue is decided in favour of Plaintiffs.
ISSUE NO. 3- WHETHER THE SUIT SUFFERS FROM GROSS AND UNEXPLAINEDDELAY AND IS HIT BY LACHES AND ACQUIESCENCE?
OPD

149. The onus of proof was on Crocodile International as they have objectedto the maintainability of the present suit on the ground of delay, laches, andacquiescence. However, no arguments, either oral or written, were presented
to the Court on this issue. Additionally, there has not been any substantial
cross-examination on this aspect. Nevertheless, the Court has reviewed theavailable pleadings and evidence to decide this issue.
150. The cause of action narrated in the plaint occurred in 1999 when
Plaintiffs came to know of Defendants’ use of Annexure-A device, which has
been alleged to be deceptively and confusingly similar to Plaintiffs’ crocodile
device. Crocodile International, on the other hand, denied the cause of action

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and have objected to the maintainability of the suit, alleging that the impugned
mark has been used on their products in India since 1998, and has been openly
advertised since 1997. Thus, they contended that it is inconceivable that
Lacoste did not learn of their business operations earlier. Lacoste’s silence forall these years, according to Crocodile International, echoes theiracquiescence to the development, growth, and expansion of business
operations of Defendants. They further relied on letter dated 18th December,1998 [Ex. DW 1/45] of Plaintiff No. 1, expressing their concern, at the use of
crocodile device by Defendant No. 1 in India.
151. In evaluating Crocodile International’s objection, it must first be notedthat Ex. DW 1/45, being a photocopy, has not been duly proved in trial.
Further, it is important to consider the established jurisprudence on delay,laches, and acquiescence. The principle of laches requires not just a meredelay in filing the suit, but also that the delay must cause some detriment to
the Defendant. For acquiescence to apply, it must be shown that the Plaintiff
actively represented that they would not assert their rights or that they stoodby while their rights were infringed upon, resulting in the Defendants being
misled to their detriment.34 In this case, the alleged delay of three years is notconsidered excessive, especially in the context of trademark and copyrightdisputes which often involve complex considerations and necessitate
thorough investigation before litigation. Furthermore, Lacoste’s timely legal
notices, marked as Ex. PW 1/4 to Ex. PW 1/7, which have been admitted by
the Defendants, and subsequent lawsuit indicate a proactive stance rather thanpassive acquiescence.
34

See: Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia and Ors., (2004) 3 SCC 90 and Hindustan
Pencils Private Limited v. M/s India Stationary Products and Co., 1989 SCC OnLine Del 34.

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152. The Court finds that the Plaintiffs acted within a reasonable timeframe
upon becoming aware of the infringement, issuing a legal notice promptly
followed by institution of the lawsuit. There is no evidence to suggest that
their actions misled Crocodile International or allowed them to believe that
their use of the impugned mark was unchallenged. Therefore, the objection
on the grounds of delay, laches, and acquiescence lacks merit.
153. The issue is accordingly decided in favour of Plaintiffs and against
Defendants.
ISSUE NO. 7- WHETHER THE PLAINT IS LIABLE TO BE DISMISSED ON ACCOUNTOF IT BEING FICTITIOUS WITH AN INTENTION OF THWARTING THE
LEGITIMATE BUSINESS OF THE DEFENDANT?
OPD

154. In their written statement, Crocodile International alleged that thepresent suit is fictitious and has been filed with the intention of thwarting theirlegitimate business operations. However, they have failed to substantiate thisallegation with any concrete evidence or detailed arguments. The burden of
proof rested on the Defendants to demonstrate that Lacoste’s claims arebaseless and that the suit was filed with a malicious intent. In the absence ofany such submission or evidence, this claim remains unsubstantiated.
155. In assessing the Defendants’ allegation that the suit is fictitious, it isessential to consider the legal standards for such a determination. A suit canbe deemed fictitious if it is based on false claims or lacks any genuine legal
basis, typically aimed at harassing the other party. In the case at hand, thePlaintiffs have provided ample evidence supporting their legal rights and theinfringement by the Defendants. The suit is grounded in well-documented
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malicious intent to harass or unjustly interfere with the Defendants’ business
operations. The Plaintiffs’ actions, including the issuance of legal notices andthe filing of the suit, are consistent with their legal rights and obligations toprotect their intellectual property. These actions are standard practice in theenforcement of rights in trademark and copyright and do not indicate any
fictitious or malicious intent.
156. Thus, given the afore-noted and the lack of any concrete evidence from
Defendants to prove the fictitious nature of the lawsuit, the Court finds no
merit in the Defendants’ allegation. Accordingly, issue No. 7 is decided infavour of the Plaintiffs and against the Defendants.
ISSUE NO. 9-WHETHER THE DEFENDANT IS LIABLE TO BE PROSECUTED AND
NON-SUITED ON ACCOUNT OF USE OF THE SYMBOL ® WITH A VIEW TO
MISREPRESENT THE MEMBERS OF THE TRADE AND PUBLIC THAT THE‘CROCODILE DEVICE’ IS A REGISTERED TRADE MARK IN INDIA?
OPP

157. The onus to prove this issue is on the Plaintiffs. Lacoste had pointed
out that Crocodile International affixed the ‘®’ symbol over the Annexure-A
device to cause a misperception that the device is registered in India. Thus,
they contended that Crocodile International is liable to be prosecuted under
the Trade Marks Act, 1958.
158. The Defendants, in the written statement, have acknowledged their
mistake, stating that the error occurred purely due to oversight. They clarified
that since the Annexure-A device has been registered in numerous countries
where their products are exported, the use of the symbol in some batches was
an inadvertent error, not intended to deceive the public. Further, theDefendants claimed that even prior to the institution of the present
proceedings, they promptly undertook steps to remove the ‘®’ symbol from

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the goods. Moreover, Defendant No. 2 has consistently mentioned theregistration number for Annexure-A device issued in Singapore, in all press
releases in India.
159. The Defendants’ explanation indicates that their mistake was genuine.
They acknowledged their fault and undertook remedial steps to recall the
products with the symbol ‘®’ and prevent its occurrence in future. The
Plaintiffs have not been able to prove any malice on the part of Defendants
during cross-examination of DW1 or DW2. In the opinion of the Court, theDefendants cannot be non-suited due to this unintentional error. Nonetheless,if this lapse warrants prosecution, it falls within the remit of the Registrar of
Trademarks or any other authorized officer, as per Section 89 of the Trade
Marks Act, 1958. Thus, the appropriate course for the Plaintiffs would be toapproach the Appropriate Authority to seek redress for the alleged
misrepresentation.
Finding160. In view of the Defendants’ acknowledgement and their prompt
corrective measures, the Court answers this issue in favour of the Defendants.
RELIEF161. In view of the foregoing discussion, a decree for permanent injunction
is issued in favour of the Plaintiffs and against the Defendants, restraining
them, or anybody acting on their behalf, from manufacturing, selling, offering
for sale, advertising, or in any other manner using the trademark depicted in
Annexure-A to the plaint that would amount to infringement of the Plaintiffs’
registered trademarks.

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162. In view of the findings of infringement of Plaintiffs’ registeredtrademarks, the Defendants must account for the profits made from the saleof goods bearing the Annexure-A device impugned in the suit. Accordingly,
they shall, within six weeks from today, render their statement(s) of accounts
of profits earned from the sale of goods under the Annexure-A device,commencing from August 1998 till the date of cessation of use.
163. Mr. Amar Nath, District and Sessions Judge (Retd.) [Contact No.: +919958697030] is appointed as a Local Commissioner to go into the
Defendants’ accounts of profits earned from the sale of goods under the
Annexure-A device, commencing from August 1998 till the date of cessationof use.
164. The Defendants shall file their affidavit(s) by way of evidence(examination-in-chief) within six weeks from today and furnish their booksof accounts and all other information as required by the Local Commissioner.
165. The fee of the Local Commissioner is fixed at Rs. 3,00,000/- besides
the out-of-pocket expenses, subject to revision if the proceedings so demand.
The aforesaid sum shall be paid by the Plaintiffs in advance.
166. The Local Commissioner shall fix the dates for recording of thestatement(s) in consultation with the counsel for the parties.
167. The commission be concluded within four months from the date of first
appearance. The Report of the Local Commissioner be submitted within fourweeks from the date of conclusion of recording of evidence.
168. Additionally, the Plaintiffs are entitled to actual costs recoverable fromthe Defendants, in terms of the Commercial Courts Act, 2015 and Delhi High
Court (Original Side) Rules, 2018 read with Delhi High Court Intellectual
Property Division Rules, 2022. Plaintiff shall file their bill of costs in terms

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of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules,
2018 on or before 14th September, 2024. As and when the same is filed, thematter will be listed before the Taxing Officer for computation of costs.
169. The suit is partially decreed in the above terms. Decree sheet be drawn
up.
170. Decree for the amount so determined from the accounts of profits shallfollow after the consideration of report of the Local Commissioner.
171. List after the proceedings before the Local Commissioner areconcluded.

SANJEEV NARULA, J
AUGUST 14, 2024
d.negi

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APPENDIX-A
EXHIBITS OF THE PLAINTIFFS REFERRED IN THE JUDGEMENT
Exhibit
NumberEx P-1
Ex P-2
Ex PW1/2
Ex. PW 1/8
Ex. PW 1/10
Ex. PW 1/11
Ex. PW 1/12
Ex. PW 1/14
(colly)Ex. PW 1/15

Ex. PW 1/16
Ex. PW 1/17
Ex. PW1/ D2
Ex PW 2/4
Ex PW 2/5

CS(COMM) 1550/2016

Description of the document
Arbitral award dated 15th Aug 2011
Judgement of Beijing Higher People’s Court
Documents tendered by PW1
Use of Annexure-A device.
Agreement dated 17th June, 1983.
Copyright registration of Plaintiff No. 1 bearing No. A62692/2002.
LPC for Plaintiff No. 1’s Trademark No. 400265.
LPC for Plaintiff No. 1’s Trademark No. 400267.
Plaintiff No. 1’s trademark registrations for “LACOSTE” and“Crocodile device.”
CD containing information regarding notoriety of thePlaintiff’s trademarks, printouts of event brochure, articles onfounders etc.
CD containing survey reports regarding awareness ofLacoste’s trademarks in India and few other countries.
Certified copies of orders in suits instituted by the Plaintiffs
against third-parties.
Consent letter dated 22nd August, 1985.
Documents tendered by PW2User Agreement between the Plaintiffs.
CA certificate certifying the sales and promotional figures forgoods bearing ‘Lacoste’ and the ‘crocodile device’ between
1993-94 to 2006-07

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APPENDIX-B
EXHIBITS OF DEFENDANTS REFERRED IN THE JUDGEMENT
Exhibit Number
DW 1/16 (colly)
DW 1/17
DW 1/18
DW 1/19
DW 1/20
DW 1/21
DW 1/22
DW 1/ 23
DW 1/24
DW 1/25
DW 1/26 (colly)

DW 1/27 (colly)
DW 1/28
DW 1/29
DW 1/30
DW 1/31
DW 1/32
DW 1/33
DW 1/34
DW 1/35
DW 1/36
DW 1/37
DW 1/38
DW 1/39
DW 1/40
DW 1/41
DW 1/42
DW 1/43
DW 1/44
DW 1/45
DW 1/46

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Description of the document
Documents tendered by DW1List of saurian marks of Defendant No. 1.
Material showing commercial use of Annexure A device.
Letter of Plaintiff No. 1 dated 21st Jan 1983
Defendant No. 1’s C&D notice dated 16th July, 1980 to
Plaintiff No. 1’s licensee in Singapore.
Response to C&D letter dated 30th July 1980.
Letter dated 09th December, 1980 of Plaintiff No. 1.
Letter dated 10th February, 1983.
Letter dated 13th February, 1984.
Contemporaneous documents
Letter dated 10th February, 1989.
Letter dated 13th February 1989.
Letter dated 6th March 1989 addressed by Defendant No. 1
to Plaintiff No. 1 and responses dated 13th March, 14th
March, and 23rd March, 1989.
Letter dated 15th June,1990 addressed by Defendant No. 1
to Plaintiff No. 1 and reply thereto dated 22nd June, 1990.
Letter dated 16th August, 1990.
Letter dated 20th September 1990.
Letter dated 28th September,1990.
Letter dated 8th January, 1991.
Letter dated 1st February, 1993.
Letter dated 16th September, 1993.
Letter dated 24th February 1994.
Letter dated 18th May, 1994.
Letter dated 29th March, 1995.
Letter dated 6th April, 1994.
Letter dated 25th July, 1995.
Letter dated 28th July, 1995.
Letter dated 02nd August, 1995.
Letter dated 07th April, 1997.
Letter dated 13th November 1997.
Letter dated 02nd February, 1998.
Letter dated 28th May, 1998.
Letter dated 18th December, 1984.
Letter dated 24th December, 1998.

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DW 1/47 to DW 1/79

DW 1/80
DW 1/81 to DW 1/90
DW 1/91
DW 1/92
DW 1/93
DW 1/94
DW 1/95
DW 1/96
DW 1/97
DW 2/6
DW 2/ P3

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Consent letters exchanged between the parties, permittinguse/ registration of their respective trademarks in various
territories.
Judicial precedents
Letter dated 22nd August, 1985.
Defendant No. 1’s registrations across the world forcrocodile device, including Annexure-A device.
Plaintiff No. 1’s trademark application No. 893320 for theword trademark “Crocodile” in India.
Order by Divisional Court of Yangon, Myanmar dated 07th
Mar, 2001.
Order of High Court of Western Province Holden in
Colombo, Sri Lanka dated 03rd Dec 2013.
Order of Director General of Intellectual Property, Sri
Lanka dated 10th Sep 2012.
Order dated 29th Dec 2010 of the Supreme People’s Courtof People’s Republic of China.
Order dated 12th October, 2012 of Court of Appeal of Paris.
Order dated 20th May, 2014 of Supreme Court of France.
Documents tendered by DW2Caution notice issued by Defendant No. 2 in Hindi on 27th
April, 1998.
Caution notice in Deccan Herald on 05th December, 1995.

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