RFA(OS)(COMM) 18/2024 and other connected matter Page 1 of 97

$~

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ RFA(OS)(COMM) 18/2024 & CM APPL. 56314/2024

Judgment reserved on: 08.01.2026

Judgment pronounced on:09.03.2026

CROCODILE INTERNATIONAL PTE. LTD. .....Appellant

Through: Mr. Saif Khan, Mr. Shobhit

Agarwal, Mr. Prajjwal Kushwaha and Ms.

Shayal Anand, Advs.

versus

LA CHEMISE LACOSTE AND ANR ....Respondents

Through: Mr. Chander M Lall, Sr. Adv.

with Ms. Nancy Roy and Ms. Prakriti

Varshney, Advs.

+ RFA(OS)(COMM) 10/2025 & CM APPL. 26249/2025

LACOSTE .....Appellant

Through: Mr. Chander M Lall, Sr. Adv.

with Ms. Nancy Roy and Ms. Prakriti

Varshney, Advs.

versus

CROCODILE INTERNATIONAL

PTE. LTD. & ANR. .....Respondents

Through: Mr. Saif Khan, Mr. Shobhit

Agarwal, Mr. Prajjwal Kushwaha and Ms.

Shayal Anand, Advs.

CORAM:

HON'BLE MR. JUSTICE C. HARI SHANKAR

HON'BLE MR. JUSTICE OM PRAKASH SHUKLA

JUDGMENT

% 09.03.2026

OM PRAKASH SHUKLA, J .

Facilitative Index

S.

No.

Particulars Pg.

No.

1. Introduction 3

RFA(OS)(COMM) 18/2024 and other connected matter Page 2 of 97

2. Factual Background 5

3. Proceedings Before the Ld. Single Judge

3.1 The Plaint

3.2 The Written Statement

3.2.1 Pre-198 Agreement

3.2.2 1983 Agreement

3.2.3 1985 Agreement/Letter

3.2.4 1985 till Date

3.3 Other Miscellaneous Proceedings

3.4 The Impugned Judgment

7

4. Proceedings Before this Court

4.1 Contentions on Behalf of

Appellants/Defendants

4.2 Contentions on Behalf of the

Respondents/Plaintiffs

27

5. Findings and Analysis

5.1 Scope of Review

5.2 Issue No. 1: Whether the use of the impugned

mark by Crocodile International amounts to

infringement of the copyright of Lacoste?

5.3 Issue No. 2: Whether the Agreements dated

17.06.1983 and 22.08.1985 between Lacoste and

Crocodile International extend to India? Whether the

aforesaid Agreements entitle Crocodile International

to use the impugned mark in India?

5.3.1 The 1983 Agreement

42

RFA(OS)(COMM) 18/2024 and other connected matter Page 3 of 97

5.3.2 Whether the 1983 Agreement included

the impugned mark in its Schedule A?

5.3.3 The 1985 Agreement/Letter

5.3.4 Permissive Use Under Indian

Trademark Law

5.4 Issue No. 3: Whether the use of the impugned

mark by Crocodile International in India amounts to

infringement of trademark rights of Lacoste?

5.5 Issue No. 4: Whether the use of the impugned

mark by Crocodile International in India amounts to

passing off?

5.6 Issue No. 5: Whether the suit suffers from

acquiescence on behalf of Lacoste?

5.7 Issue No. 6: Whether the learned Single Judge

erred in granting rendition of accounts to Lacoste?

5.8 Issue No. 7: Whether the learned Single Judge

erred in awarding costs to Lacoste?

6. Conclusion and Relief 96

INTRODUCTION

1. The present cross appeals are filed under Section 96 of the Code

of Civil Procedure, 1908

1

read with Section 13 of the Commercial

Courts Act, 2015 and Section 10 of the Delhi High Court Act, 1966

assailing the impugned judgment dated 14.08.2024 passed by learned

Single Judge of this Court in CS (OS) No. 894 of 2001 (subsequently

renumbered as CS (Comm) No. 1550 of 2016).

1

“CPC”, hereinafter

RFA(OS)(COMM) 18/2024 and other connected matter Page 4 of 97

2. For the sake of convenience, RFA (OS) (Comm) No. 18 of 2024

is treated as the lead matter. The parties herein are referred to by the

same name and status as before the learned Single Judge in the civil

suit. Thus, Appellant Nos. 1 and 2 in RFA (OS) (Comm) No. 18 of

2024 are referred to as “Defendant No. 1” and “Defendant No. 2”

respectively, whereas the respondents are referred to as “Plaintiff No.

1” and “Plaintiff No. 2” respectively.

3. The present appeal concerns the issue of intellectual property

rights pertaining to a crocodile emblem. Plaintiff No.1, is a French

company, internationally renowned for its apparel and other products.

Plaintiff No. 2 is a company incorporated in India and serves as the

licensee of Plaintiff No. 1 in India by virtue of a User Agreement (Ex.

PW 2/4) dated 23.07.1994.

4. Defendant No. 1, Crocodile International Pte. Ltd. (formerly

known as “Li Seng Min Company Ltd.”), is a company incorporated

under the laws of Singapore by Dr. Tan Hian Tsing (“Dr. Tan”).

Defendant No. 2, i.e., Crocodile Products Pvt. Ltd., was initially

incorporated on 21.04.1994 by K.L. Narayansa and Associates (a joint

venture and predecessor of Defendant No. 2) and is based in

Bangalore, India. Defendant No. 2 allegedly began selling products

bearing these marks in India around 1998.

5. The parties herein have been involved in a protracted cross-

border legal dispute, with litigation and proceedings ongoing in

various jurisdictions. The present controversy is neither recent nor

RFA(OS)(COMM) 18/2024 and other connected matter Page 5 of 97

obscure, but one of significant international recognition in the realm

of intellectual property law. The present dispute is also part of an

ongoing series of litigation between the parties. This judgment aims to

effectively adjudicate the issues between the parties within the

jurisdiction of India.

FACTUAL BACKGROUND

6. The defendant’s trademark was first registered in India in 1952,

i.e., “ ” and then “ ” was registered in 1990.

Subsequently, the defendants commenced the use of their trademark

in India around the year 1998. Defendant No. 2 allegedly began the

sale of products bearing these marks since around 1998 in India.

However, the core issue in India arose when the defendants began

using the impugned standalone saurian device mark, “ ”

(“impugned mark”), without the accompanying word mark

“CROCODILE”.

7. According to plaintiffs, the impugned mark is deceptively

similar to their registered crocodile device mark, “ ”

which bears registration No. 400267 in Class 25.

8. It is pertinent to clarify that while both parties use various

versions of the crocodile logo and emblems, the present dispute

RFA(OS)(COMM) 18/2024 and other connected matter Page 6 of 97

specifically pertains to the use of the unregistered standalone crocodile

mark (impugned) by the defendants, which is allegedly deceptively

similar to the registered mark of the plaintiffs. For clarity and better

understanding, illustrations of both marks are provided below:

9. Aggrieved by the defendants’ use of the impugned mark, the

plaintiffs instituted a civil suit against the defendants. The defendants

strongly relied on a Letter/Agreement of 1985, contending that it

extends an agreement dated 17.06.1983

2

of mutual co-existence

between the parties to India and, thus, authorising their use of the

impugned mark in India.

10. The plaintiffs categorically denied the defendants’ position,

arguing that the 1985 instrument constitutes no more than a unilateral

communication from the defendants and does not confer any

enforceable right upon the defendants to use the impugned mark in

India.

11. The learned Single Judge of this Court partly decreed the suit in

favour of plaintiffs and against the defendants vide judgment dated

2

“1983 Agreement” hereinafter

RFA(OS)(COMM) 18/2024 and other connected matter Page 7 of 97

14.08.2024. It is against this judgment that the parties have filed the

present cross-appeals.

12. The parties to the present appeals seek the following reliefs:

In RFA (OS) (Comm) No. 18 of 2024:

“(a) Set aside the order and judgment/partial decree dated 14.08.2024

passed by the Ld. Single Judge in CS (Comm) No. 1550/2016 and dismiss

the present suit with costs in favour of the Appellant and against the

Respondent;”

In RFA (OS) (Comm) No. 10 of 2025:

“A. Allow the present appeal thereby setting aside the Impugned Judgment

dated 14thAugust 2024 passed by the Ld. Single Judge in CS (COMM)

1550 of 2016 to the limited extent of findings on passing off and copyright

infringement;

B. Set aside the findings of the Ld. Single Judge in relation to the goodwill

and reputation of the Appellant at the relevant time in India;

C. Pass an order of permanent injunction against the Respondents

restraining them from passing off their goods as that of the Appellant;

D. Pass an order of permanent injunction against the Respondents

restraining them from infringing the copyright of the Appellant;

E. Reimbursement of costs of the present appeal be given to the

Appellant;”

PROCEEDINGS BEFORE THE LD. SINGLE JUDGE

THE PLAINT

12.1 The plaintiffs aver that the crocodile device was first registered

as a trademark on 27.04.1933 in the Office of Clerk of the Commercial

Court of Troyes (France), under registration No. 207916. This was

followed by registration of the trademarks “LACOSTE” and

“CHEMISE LACOSTE” in France on 22.06.1933 and 19.07.1935

under registration Nos. 287668 and 302681, respectively.

RFA(OS)(COMM) 18/2024 and other connected matter Page 8 of 97

12.2 In India, the plaintiffs claim prior registration of their trademark

in 1983 and assert proprietorship over various trademarks that are

valid under Section 32 of the Trade and Merchandise Marks Act of

1958

3

in India. They contend that these marks (“LACOSTE” and the

crocodile device mark) are globally well-known and possess

international reputation due to superior product quality. These marks

are reproduced below:

S.

No.

Trademark Registration

No.

Date Class and

Goods

Description

i. CROCODILE

device (Lacoste

Label)

400265B

(Proposed to be

Used)

19.01.1983 25 – Clothing

including

boots, shoes

and slippers.

3

32. Registration to be conclusive as to validity after seven years.

Subject to the provisions of section 35 and section 46, in all legal proceedings relating to a trade mark

registered in Part A of the register (including applications under section 56), the original registration of the

trade mark shall, after the expiration of seven years from the date of such registration, be taken to be valid in

all respects unless it is proved--

(a) that the original registration was obtained by fraud; or

(b) that the trade mark was registered in contravention of the provisions of section 11 or offends against the

provisions of that section on the date of commencement of the proceedings; or

(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the

registered proprietor.

RFA(OS)(COMM) 18/2024 and other connected matter Page 9 of 97

ii. CROCODILE

device

400267

(Proposed to be

Used)

19.01.1983 25 – Clothing

including

boots, shoes

and slippers.

12.3 Plaintiff No. 1 allegedly commenced commercial activities in

India in 1993 through Plaintiff No. 2, after applying for trademark

registration in 1983. The plaintiffs assert that they have established

significant goodwill in India, and their trademarks have acquired a

secondary meaning. As a result, consumers associate these marks

exclusively with the plaintiffs' enterprise. They rely on their sale

figures of approximately Rs. 25.10 crores and promotional

expenditure of about Rs. 1.29 crores between 1993 to 1999 as reflected

in their books of accounts maintained in the ordinary course of

business to substantiate this claim.

12.4 The plaintiffs aver that the cause of action arose when they

discovered that the defendants were selling products bearing the

standalone crocodile device mark, without the “CROCODILE” word

mark, i.e., , which was alleged to be deceptively and

confusingly similar to plaintiff’s registered crocodile device mark, i.e.,

“ ”. Further, it was averred that the defendants were

wrongfully using the symbol ® with the infringing crocodile device.

RFA(OS)(COMM) 18/2024 and other connected matter Page 10 of 97

12.5 Aggrieved, the plaintiffs issued a letter dated 13.12.1999,

seeking to prevent the defendants from using the impugned mark and

followed up with further communications but to no avail. The

defendants denied the plaintiff’s objections by relying on the 1983

Agreement between Plaintiff No. 1 and Dr. Tan. The defendants

claimed that the said instrument permitted coexistence between the

defendants and plaintiffs and authorised the former to use the

impugned mark in India.

12.6 However, the plaintiffs denied the applicability of the 1983

Agreement to India and contended that it did not allow the defendants

to use the impugned mark without the “CROCODILE” word mark.

The plaintiffs asserted exclusive rights in India over their registered

saurian device, i.e., “ ”.

12.7 The plaint sets out the manner in which the cause of action

arose, specifically the defendants’ continued use of the impugned

mark despite objections from the plaintiffs, in paragraph nos. 31 and

36 as follows:

“31. The cause of action in the present suit arose when the

Plaintiffs recently discovered that the second Defendant has

started using in respect its goods a device of a crocodile which is

deceptively and confusingly similar to the “crocodile device” of

the plaintiffs. This device is also at variance with the logo in

respect of which the first Defendant is the registered proprietor.

***

36. The cause of action first accrued to the Plaintiff in December

1999 when they came to know of the Defendant’s activities

aforesaid. The cause of action thereafter accrued against the

Defendants in January 2001 when the Plaintiff became aware that

the Defendants were continuing to use a device of a crocodile

RFA(OS)(COMM) 18/2024 and other connected matter Page 11 of 97

which is deceptively and confusingly similar to the “crocodile

device” of the Plaintiffs despite having been warned against the

same. The cause of action thereafter accrued in March 2001 when

the Plaintiffs were informed in no uncertain terms that the

Defendants had no intention of giving up their offending activities.

The cause of action is a continuing one and accrues each time the

Defendants sell goods bearing a device deceptively and

confusingly similar to the Plaintiffs “crocodile device”, which

device is also at variance with the logo in respect of which the first

Defendant is the registered proprietor. The suit is within time.”

12.8 Due to the defendants’ failure to desist from using the standalone

saurian device, the plaintiffs filed CS (Comm) No. 1550 of 2016 before

learned Single Judge of this Court seeking, inter alia, permanent

injunction and mandatory injunctions against the defendants.

THE WRITTEN STATEMENT

13. In their written statement, the defendants asserted that the

saurian trademark was created and first adopted in 1947 in Singapore

by Dato Dr. Tan Hian Tsin (“Dr. Tan”), the founder of Defendant No.

1, and has been in continuous use since then. Owing to its long-

standing use and extensive, Dr. Tan is allegedly known as “Mr.

Crocodile” in Singapore and certain other countries.

13.1 Dr. Tan initially carried on business as “Li Seng Min Company

Ltd.”, which was subsequently renamed as “Crocodile International

Pte. Ltd.” on 15.09.1983. The defendants asserted that the saurian

trademark was first registered in Singapore in 1949, and that

Defendant No. 1 has consistently used both the word mark

“CROCODILE” and the standalone saurian device mark on a wide

range of products over the years.

RFA(OS)(COMM) 18/2024 and other connected matter Page 12 of 97

13.2 With respect to India, the defendants claimed that Dr. Tan

registered the saurian trademark in India on 12.06.1952 under

registration No. 154397 in Class 25 for shirts and singlets. This

registration was later assigned to Li Seng Min Co. Ltd., and by virtue

of this assignment, the mark currently vests in Defendant No.1.

Subsequently, the word mark “CROCODILE” along with the device

mark was registered by Defendant No.1 in Class 25 bearing No.

540315 for clothing accessories. The written statement sets out the

following registrations of the defendants, as follows:

13.3 The defendants claimed that they commenced advertising using

the “CROCODILE” word and device marks in 1997. Additionally,

they began their operations in India in August 1998, with the opening

RFA(OS)(COMM) 18/2024 and other connected matter Page 13 of 97

of showrooms in Southern India under the name “Crocodile

Galleries”.

13.4 The defendants contended that their long and uninterrupted use

of the mark, along with substantial promotional expenses, has

conferred upon them exclusive rights to use the impugned mark in

India. To establish the extent of recognition, the defendants’ relied on

a survey conducted by “ORG MARG”, which purportedly ranked the

“Crocodile” brand among the top 15 brands in India, allegedly ranking

higher than the plaintiffs’ brand.

Pre-1983 Agreement

13.5 By way of their Written Statement, the defendants contended

that historically, the plaintiffs operated mainly in European markets,

whereas Defendant No.1 had a significant presence in Asian markets,

and that this balance was disturbed in 1971 when the plaintiffs sought

to enter Japanese markets. Defendant No. 1 challenged that plaintiff’s

use of a crocodile device mark before the District Court of Osaka. In

those proceedings, the plaintiffs maintained that their mark comprised

both the word “LACOSTE” and the saurian device, thereby

distinguishing their mark from Defendant No. 1’s mark, and that

consumers primarily associated their products with the name

“LACOSTE” rather than the device alone. The Osaka District Court

accepted this contention and dismissed Defendant No.1’s claim, ruling

that there was no likelihood of confusion.

RFA(OS)(COMM) 18/2024 and other connected matter Page 14 of 97

13.6 Subsequently, on 16.07.1980, the first defendant issued a cease-

and-desist notice to Royal Sporting House, the Plaintiff No.1’s

licensee, objecting to the use of the saurian device in Singapore. In

response, the plaintiffs reiterated that their device was an alligator, not

a crocodile, and that their brand identity was primarily associated by

the word “LACOSTE”, thus negating any likelihood of confusion.

Thereafter, on 09.12.1980, the plaintiffs offered to settle all legal

disputes with the defendants, and by letter dated 21.01.1983, proposed

a formal co-existence arrangement and offered USD 1 million as

compensation.

The 1983 Agreement (Ex. PW 1/8)

13.7 The aforesaid proposal resulted in an agreement dated

17.06.1983 between the Plaintiff No.1 and Li Seng Min Company Ltd.

(predecessor of Defendant No. 1) to, inter alia, amicably resolve legal

disputes between the parties, to co-exist in certain territories, and co-

operate against third-party infringers. The defendants claim that this

1983 Agreement grants them permissive use and forms the basis for

amicable co-existence in the present dispute.

13.8 Under the 1983 Agreement, the parties agreed that the marks

specified in Schedule A and B of the Agreement could co-exist in the

mutually agreed territories, including Taiwan, Singapore, Indonesia,

Malaysia and Brunei. They are reproduced as follows:

RFA(OS)(COMM) 18/2024 and other connected matter Page 15 of 97

13.9 The defendants contended that Schedule A of this Agreement

included five distinct marks owned by Defendant No.1, with the fourth

mark being the impugned mark in the present dispute. It is further

asserted that these five marks have been in use by the defendants in

various countries since 1983.

13.10 The defendants claim that this Agreement expressly authorised

their use of the impugned mark, thereby, precluding the plaintiffs from

pursuing any legal action against them. They further assert that they

consciously undertook to differentiate their marks from those of the

plaintiffs and confined their use to the marks specified in Schedule A

of the said Agreement, hence, following the principles of co-operation

and coexistence.

The 1985 Agreement/Letter (Ex. DW 1/80)

13.11 The defendants rely on a communication dated 22.08.1985,

wherein Defendant No.1 informed Plaintiff No.1 that the spirit of co-

operation established vide the 1983 Agreement, also extended to other

territories, including Korea, India, Bangladesh and Pakistan. The

RFA(OS)(COMM) 18/2024 and other connected matter Page 16 of 97

Defendant No.1 therein also undertook to not oppose Plaintiff No.1’s

trademark applications in Korea and issue consent letters for India,

Bangladesh and Pakistan. The defendants view this communication as

an extension of the 1983 Agreement.

13.12 The defendants claim that the plaintiffs initially proposed a

territorial exchange, offering Korea in exchange for India, and that Dr.

Tan, as a gesture of goodwill, further included Pakistan and

Bangladesh in this arrangement. The defendants rely on letters dated

16.09.1993 and 15.06.1990 to substantiate this claim.

13.13 The defendants assert that, but for the 1985 arrangement, the

plaintiffs would have been unable to secure trademark registrations in

India, Bangladesh, and Pakistan, due to Defendant No. 1’s prior rights.

They assert that both parties acted in conformity with the 1985

instrument, treating it as a binding agreement rather than a mere

consent letter. They rely on multiple letters, including those dated

13.02.1989, 22.06.1990, 08.01.1991, 28.07.1995, 02.02.1998,

28.05.1998 and 13.12.1999, wherein the plaintiffs allegedly

acknowledged this position.

13.14 More specifically, the defendants claim independent use of the

impugned mark, i.e., saurian device without the word mark. To

substantiate, they rely on a letter dated 10.02.1983, which they

contend led to the 1983 Agreement, and assert that this letter depicted

the impugned mark as an independent and distinct mark, thereby

justifying their use of the standalone saurian device mark.

RFA(OS)(COMM) 18/2024 and other connected matter Page 17 of 97

1985 till Date

13.15 The defendants assert that in furtherance of the 1983 and 1985

Agreements, they refrained from opposing the plaintiff’s trademark

registration in India and co-operated in protecting their marks from

third party infringement. By letter dated 24.02.1994, the defendants

undertook to create distinctions between their products and the

plaintiffs’ to facilitate co-existence. Reliance was placed on various

letters, wherein Plaintiff No. 1 allegedly acted in accordance with the

1983 and 1985 Agreements by consenting to the registration of the

defendants’ marks in Pakistan. Further reliance was placed on a letter

dated 13.02.1989, wherein Plaintiff No. 1 allegedly acknowledged Dr.

Tan’s letter of consent for India dated 10.02.1989 while referring to

the 1985 Agreement. The defendants also relied on a letter dated

13.11.1997, wherein Plaintiff No.1 allegedly reiterated that the

defendants were permitted to use the marks listed in Schedule A of the

1983 Agreement, which purportedly included the impugned mark.

13.16 The defendants claim that the plaintiffs’ letter dated 13.12.1999

failed to specify the nature or extent of their objections raised, thereby

depriving the defendants of a reasonable opportunity to respond. In

response to the subsequent letter dated 25.02.2000, the defendants

claimed that they had timely replied to the plaintiffs objections.

However, the defendants asserted that the plaintiffs took more than a

year to respond. During this period, the defendants expanded their

business under the bona fide belief that no further objections subsisted.

It was also contended that although the plaintiffs first raised an

RFA(OS)(COMM) 18/2024 and other connected matter Page 18 of 97

objection to the use of the impugned mark on 18.12.1998, the

substance of such objection was only elaborated in their letter dated

13.12.1999.

13.17 The defendants raised several preliminary objections based on

the grounds of delay, laches, and acquiescence, asserting that they had

openly used and advertised the impugned mark in India since 1997

with the plaintiffs’ knowledge, as evidenced by their letter dated

18.12.1998; yet the suit was instituted after approximately three years.

The defendants contended that the plaintiffs’ delay in initiating the

suit, coupled with their failure to object at an earlier stage implied

acquiescence to their use of the impugned mark. Additionally, it was

averred that the suit did not disclose a cause of action as required under

Order VII Rule 11 CPC and challenged the territorial jurisdiction of

the Court.

OTHER MISCELLANEOUS PROCEEDINGS

13.18 The plaintiff’s chose not to file replication to the defendants’

written statement.

13.19 Thereafter, vide order dated 14.01.2005, the learned Single

Judge framed 11 issues for adjudication. The following were the

eleven issues adjudicated upon by the learned Single Judge:

(i) Whether the plaintiff is the owner of the copyright in the

“crocodile device”? Decided in favour of P.

RFA(OS)(COMM) 18/2024 and other connected matter Page 19 of 97

(ii) Whether plaintiff is the proprietor of the ‘crocodile

device’ in India by virtue of registrations and use? Decided in

favour of P.

(iii) Whether the suit suffers from gross and unexplained

delay and is hit by laches and acquiescence? Decided in favour

of P.

(iv) 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 17.06.1983 between the parties? Decided

in favour of P.

(v) Whether this Court doesn’t have territorial jurisdiction to

entertain and try the present suit? Decided in favour of P.

(vi) Whether the plaintiffs are not entitled to any relief as they

are guilty of concealing (SIC) vital facts and documents?

Decided in favour of P.

(vii) Whether the plaint if liable to be dismissed on account of

it being fictious with an intention of thwarting the legitimate

business of the defendant? Decided in favour of P.

(viii) 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? Decided in

favour of D.

(ix) 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 trademark in India? Decided

in favour of D.

RFA(OS)(COMM) 18/2024 and other connected matter Page 20 of 97

(x) Whether the first defendant is the prior adopter and user

of the saurian device and the owner of the trademark rights in

the same? Decided in favour of P.

(xi) Whether the first plaintiff and the first defendant signed

and entered into co-existence agreement dated 17.06.1983 and

22.08.1985 for the respective territories? If so, whether such co-

existence extends to Annexure A device in India? Decided in

favour of P.

13.20 The plaintiffs deposed two witnesses, namely, 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].

THE IMPUGNED JUDGEMENT

14. By way of the impugned judgment, the learned Single Judge

partly decreed the suit in favour of the plaintiffs and granted a

permanent injunction in favour of the plaintiffs and against the

defendants.

14.1 Out of eleven issues frames by the learned Single Judge, Issue

Nos. 8 and 9 were decided in favour of the defendants.

14.2 The learned Single Judge held that the defendants had infringed

the plaintiff’s trademark and consequently permanently injuncted the

defendants from using the impugned device mark in India. While the

RFA(OS)(COMM) 18/2024 and other connected matter Page 21 of 97

Court recognised Plaintiff No.1’s exclusive copyright, it did not award

damages on account of the doctrine of merger. The passing off claim

was decided in favour of the defendants since the plaintiffs failed to

provide cogent evidence establishing the goodwill and reputation.

14.3 The learned Single Judge also took upon himself the arduous

task of adjudicating the defendants’ objection to the territorial

jurisdiction of the Court. The defendants’ objection was rejected by

holding that under Section 62(2) of the Copyright Act, the suit was

maintainable in Delhi since Plaintiff No. 2 carried on business within

the Court’s jurisdiction. Additionally, the sale of impugned goods in

Delhi attracted jurisdiction under Section 20(c) of CPC. The Court

further held that the defendants’ commercial activities in Delhi were

sufficient to confer territorial jurisdiction for trademark infringement

and passing off claims.

14.4 With respect to Issue No. 1, the Court held that Plaintiff No. 1,

being the registered proprietor of a valid and subsisting copyright

registration bearing No. 62692/2002 dated 16.01.2002 (Ex. PW 1/10),

i.e., “ ”, possessed exclusive rights to control the

reproduction of its artwork. The Court further noted that as per the

registration, the first publication of the artwork took place in France

in 1927 and in 1992 in India.

14.5 Pertaining to copyright infringement, the learned Single Judge

applied the doctrine of merger and held that no infringement was made

out. The Court analysed the originality and expression of Plaintiff

RFA(OS)(COMM) 18/2024 and other connected matter Page 22 of 97

No.1’s artwork and opined that mere similarity capable of causing

consumer confusion, does not automatically constitute infringement

of copyright, especially if the manner of expression is limited. The

Court held that the impugned mark was an independent creation

derived from the general idea of a crocodile.

14.6 While dealing with Issue No. 2, the learned Single Judge noted

that the plaintiffs asserted ownership of the saurian device based on

their trademark registrations and use since October 1993, which was

not disputed by the defendants. The Court observed that Plaintiff No.

1 held a valid trademark registration bearing no. 400367 dated

19.01.1983 for a standalone saurian mark in India, i.e., “

”. It was reasoned that the said registrations along with the

uncontroverted evidence of use by the plaintiffs, established the

plaintiffs’ exclusive rights over the impugned device mark.

14.7 In relation to Issue No. 10, the Court took note of the

defendants’ claim of use of various crocodile marks since 1947, their

registrations bearing Nos. 154397 and 540315 dated 12.06.1952 and

21.11.1990 respectively, and their commercial use (advertising) in

India since 1997 along with their documented sales activity from

August 1998. It was observed that the defendants’ advertisements

depicted the impugned mark alongside the “CROCODILE/

CROCODILE INTERNATIONAL” word mark and there was no

specific pleading of prior adoption or use of the impugned standalone

saurian mark. It was held that though Defendant No. 1’s composite

mark was registered in 1952 and the same predated the plaintiff’s 1983

RFA(OS)(COMM) 18/2024 and other connected matter Page 23 of 97

registration, with respect to the impugned mark, the plaintiffs were the

prior adopters and users. It was reasoned that the plaintiffs held valid

registration for the standalone saurian device mark since 1983 and had

launched it commercially in 1993.

14.8 Addressing Issue Nos. 4, 8, and 11 together, the Court

undertook a detailed analysis. The learned Single Judge analysed

individual elements of both marks, such as posture, angle, limbs, and

overall appearance. The Court also took in account, the testimonies of

DW1 and DW2, who acknowledged the similarities between the two

marks. Thus, the Court concluded that the marks were, “conceptually

identical and leaving little room for dispute on the point of similarity”

and that, “The near-exact duplication of the specific posture of the

crocodile and other features by Crocodile International exacerbates

the deceptive similarity between the two marks, creating a substantial

likelihood of consumer confusion”. Thus, the Court found the marks

to be deceptively similar and likely to cause confusion among

consumers. The Court acknowledged that while the parties had agreed

to co-exist in certain countries, a closer examination of the marks was

required in light of the present dispute.

14.9 The learned Single Judge also analysed various judicial

precedents cited by the defendants involving the present parties in

other jurisdictions and assessed their relevance to the present

proceedings. The Court reasoned that the marks involved in those

cases were distinct from the rival marks herein and did not have any

direct bearing on the issue before this Court.

RFA(OS)(COMM) 18/2024 and other connected matter Page 24 of 97

14.10 The Court further examined the 1983 and 1985 Agreements

(Ex. PW 1/8 and Ex. DW 1/80, respectively). While the existence of

the 1983 Agreement was undisputed, the Court noted that the sole

controversy pertained to its applicability in India. It was held that as

per Article I of the said Agreement did not extend to India, as the

territories for co-existence were explicitly specified. The Court further

observed that the plaintiffs’ conduct of pursuing litigation in

jurisdictions beyond those specified in the Agreement supported the

conclusion that co-existence did not extend beyond the specified

territories.

14.11 The Court also considered the Partial Award dated 15.08.2011

(Ex. P-1) passed in Singapore, which examined the territorial

applicability of the 1983 Agreement. The Tribunal held that the

Agreement was explicit and did not apply to jurisdictions other than

the ones stipulated in Article I. The Court relied on the cross-

examination of DW1 dated 22.02.2018, wherein DW1 admitted that

the 1983 Agreement did not extend to India.

14.12 The Court referred to the decision of the Supreme Court of

China in a dispute between the same parties where despite holding that

the 1983 Agreement did not apply to China, the Court considered its

impact and directed the defendants to distinguish their marks from

those of the plaintiffs. The learned Single Judge disagreed with this

decision and reaffirmed the territorial limitation of the 1983

Agreement. With respect to the 1985 Agreement/Letter, the Court

found it vague, ambiguous, and lacking mutual consent, and held that

it did not confer any right to use the impugned mark. The Court relied

RFA(OS)(COMM) 18/2024 and other connected matter Page 25 of 97

on letters issued by Plaintiff No. 1 dated 29.03.1995 (Ex. DW 1/36)

and 28.05.1998 (Ex. DW 1/44), which objected to the use of the

saurian device without the “CROCODILE” word mark in Korea. The

Court concluded that the plaintiffs had not consented to the use of the

impugned mark in India.

14.13 The Court also examined the probative value of the documents

submitted by the defendants and noted the absence of any explanation

for the non-production of originals or proof that the copies were true

copies, as required under Section 65 of the Indian Evidence Act,

1872

4

. In light of the aforesaid and by placing reliance on Prem

Chandra Jain (Deceased) represented by LRs v. Sri Ram (Deceased)

represented by LRs

5

and Vijay v. Union of India & Ors.

6

, it was held

that Ex. DW 1/18 to Ex. 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 were not

proved in accordance with law. Notwithstanding the aforesaid, the

learned Single Judge examined the said documents to determine their

relevance to the suit.

14.14 The learned Single Judge applied the classic trinity test for

passing off and held that the plaintiffs failed to prove their reputation

and consumer association with the impugned mark in India at the time

of the defendants’ adoption of the mark in 1998. The plaintiffs’ survey

report was deemed unreliable, as it pertained to the market in 2004 and

lacked proper background documentation. Additionally, the chartered

4

“IEA” hereinafter

5

2009 SCC OnLine Del 3202.

6

2023 INSC 1030.

RFA(OS)(COMM) 18/2024 and other connected matter Page 26 of 97

accountant’s certificate

7

(Ex. PW 2/5) was held to be unreliable due to

the absence of supporting document. The lack of testimony of the

concerned CA was also noted by the Court.

14.15 Succinctly, the learned Single Judge held as follows:

(i) The 1983 Agreement did not extend to India.

(ii) The 1985 Letter/Agreement lacked mutual consent and

specificity regarding India and the impugned mark.

(iii) No mutual consent existed for the use of impugned mark

in India.

(iv) The impugned mark, “ ”, was found to be

infringing due to its deceptive similarity to the plaintiffs’ mark,

“ ”..

(v) The plaintiffs failed to prove passing off due to lack of

goodwill in India.

(vi) Copyright infringement was not found as the defendants’

artwork, “ ” was an independent creation.

(viii) The plaintiffs were not barred by delay, laches and

acquiescence.

(ix) The defendants’ use of the ® symbol was deemed an

honest oversight.

7

“CA certificate” hereinafter

RFA(OS)(COMM) 18/2024 and other connected matter Page 27 of 97

14.16 Aggrieved, both the plaintiffs and defendants filed cross appeals

seeking to set aside the impugned judgment dated 14.08.2024 passed

in CS (Comm) No. 1550 of 2016 titled as “Lacoste & Anr. v.

Crocodile International Pte. Ltd. & Anr.”.

PROCEEDINGS BEFORE THIS COURT

15. RFA (OS)(COMM) 18 of 2024 was first listed on 24.09.2025,

whereby the Court issued a direction that the enforcement of the

impugned judgment would remain stayed, subject to the defendant

depositing the costs as determined by the Registry of this Court.

15.1 Subsequently, vide order dated 12.12.2024, this Court noted that

there was scope for an amicable resolution between the parties;

however, such resolution did not materialise.

15.2 Following this, both sides were heard, and the matter was

reserved for judgment.

CONTENTIONS ON BEHALF OF T HE

APPELLANTS/DEFENDANTS

16. Mr. Saif Khan, the learned Counsel appearing on behalf of the

appellants/defendants, premised the case on the assertion that they

were not dishonest users and, therefore, had not infringed the

plaintiffs’ rights. Rather, it was emphasized that the defendants’ use

of the mark was bona fide and in light of the 1983 and 1985

RFA(OS)(COMM) 18/2024 and other connected matter Page 28 of 97

Agreements, which provided for co-existence between the plaintiffs

and defendants in India as well.

16.1 It was emphasised that the present dispute was unique and arose

from an intricate chain of communications regarding the permission

of the plaintiffs. The appellants/defendants contended that had the

marks not been similar, the need for a co-existence arrangement would

not have arisen in the first place.

16.2 The learned Counsel presented two major prongs of their case.

The first prong was that the defendants’ right to use the impugned

mark arose from the 1983 Agreement of co-existence and its extension

to India vide the 1985 Agreement, and subsequent letters

acknowledging the same. The second prong focused on the alleged

errors in the impugned judgment, thereby warranting interference by

this Court. Besides these contentions, detailed submissions were

advanced challenging the findings in the impugned judgment

regarding copyright infringement and passing off.

16.3 With respect to the first prong, learned Counsel submitted that

the impugned judgment suffered from lapses in both law and facts. It

was submitted that Defendant No. 1 was a renowned international

clothing brand that used a left-facing crocodile device mark with and

without any accompanying “CROCODILE” word mark and that its

first registration in India dated back to 1952, whereas the Plaintiff No.

1 used a right-facing crocodile with a registration in India from 1983.

RFA(OS)(COMM) 18/2024 and other connected matter Page 29 of 97

16.4 The learned Counsel traced the history of both brands, asserting

that it was the defendants who initially objected to the plaintiffs’ use

of the saurian device and in response, the plaintiffs asserted that their

rival marks were distinct, primarily associating their brand with

“LACOSTE” rather than the ‘crocodile’ device alone. This dispute

ended with the 1983 Agreement of co-existence between Plaintiff No.

1 and Defendant No. 1.

16.5 It was argued that the 1983 agreement explicitly included the

impugned mark, “ ” as one of the marks use by the

defendants. Furthermore, the 1985 agreement was presented as an

extension of the 1983 Agreement, which extended to certain other

territories, including India.

16.6 It was submitted that subsequent letters acknowledged the 1985

Agreement. Specific reliance was placed on the letter dated

10.12.1989, wherein defendant No.1 undertook not to oppose Plaintiff

No.1’s registration application in India and offered assistance in

obtaining registration in Pakistan. Reliance was also placed on letter

dated 13.02.1989 from Plaintiff No. 1, which acknowledged the 1985

Agreement with respect to India and confirmed receipt Defendant No.

1’s letter, and allegedly consented to the use of the impugned mark by

defendant in India.

16.7 For the second prong, the learned Counsel identified four

alleged errors in the impugned judgment that warranted interference.

RFA(OS)(COMM) 18/2024 and other connected matter Page 30 of 97

Firstly, it was submitted learned Single Judge erred in holding that the

letters depicting an enforceable co-existence relationship between the

parties were inadmissible. It was submitted that under Indian contract

law, an agreement does not need to be “clear, specific, and mutually

acknowledged” to be binding by relying on Section 4 of the Indian

Contract Act, 1872, to contend that the letter dated 10.02.1989 (Ex.

DW 1/24), even if considered a unilateral proposal, was accepted by

Plaintiff No.1 through the letter dated 13.02.1989 (Ex. DW 1/25), and

there was no revocation of this acceptance placed on record. The

learned Counsel further argued that the aforementioned letters (Ex.

DW 1/24-1/25), read with the 1985 Agreement formed part of a series

of transactions that, under Section 6 of the Indian Contract Act, 1872,

established the existence of an overarching agreement of mutual co-

operation and co-existence. These documents must, therefore, be read

together.

16.8 The learned Counsel further contended that the learned Single

Judge applied an unduly high threshold of proof akin to beyond

reasonable doubt instead of preponderance of probabilities while

examining documentary evidence. It was argued that the letters were

sent by fax, rendering production of originals impossible, and further

submitted that the plaintiffs did not challenge the veracity or existence

of said documents which should have been considered by the learned

Single Judge while assessing their evidentiary value.

16.9 The second error, as submitted by the learned Counsel, pertains

to the erroneous application of trademark law. It was argued that co-

existence agreement between the parties necessarily implies a degree

RFA(OS)(COMM) 18/2024 and other connected matter Page 31 of 97

of similarity between their marks, and the learned Single Judge erred

in reversing the impugned mark and comparing it with the mirror

image of the plaintiffs’ mark. It was contended that the plaintiffs failed

to provide evidence of actual consumer confusion. It was also

contended that the plaintiffs had benefitted from the 1985 Agreement

by securing trademark registration without opposition by the

defendants but failed to fulfil their reciprocal obligations. To bring out

the mala fides, reliance was placed on Plaintiff No.1’s attempt to

register the “CROCODILE” word mark, the said application was later

deemed fraudulent by the appellate court and the Supreme Court in

France (Ex. DW 1/96 and Ex. DW 1/97). It was also submitted that

the learned Single Judge had failed to consider the various

international judicial decisions concerning plaintiffs and defendant.

16.10 The third error in the impugned judgment, as highlighted by the

learned Counsel, was the lack of consideration of the defence of

acquiescence. It was argued that defendants’ use of the impugned

mark was honest and concurrent, arising out of the understanding of

co-existence and mutual co-operation between the parties established

by the 1983 and 1985 Agreements and subsequent consent letters. The

defendants further urged that the marks were not confusing or

deceptively similar and that Defendant No. 1 honestly adopted the

impugned mark.

16.11 As the fourth alleged error in the impugned judgment, the

learned Counsel highlighted the disregard of the letter dated

10.02.1989 (Ex. DW 1/24) and its reply dated 13.02.1989 (Ex. DW

1/25). It was pointed out that Plaintiff No. 1 had applied for trademark

RFA(OS)(COMM) 18/2024 and other connected matter Page 32 of 97

registrations bearing Nos. 400265 and 400267 on 19.01.1983 which

were granted in 1990. Following the first application in Journal No.

949 on 16.12.1988, the three-month opposition period was set to

expire in March of 1989. It was contended the decision to not oppose

the applications that during this period was consistent with the 1985

Agreement to co-exist in India, which was communicated to the

plaintiffs vide letter dated 10.02.1989 and acknowledged by Plaintiff

No.1 on 13.02.1989. The plaintiffs’ contention that they did not need

such consent since they already held a registration prior to the 1985

Agreement, was argued to be incorrect, as the registrations were only

granted in 1990. It was therefore submitted that the learned Single

Judge erred in disregarding these letters merely on the ground that the

applications were filed in 1983.

16.12 Regarding copyright infringement, the learned Counsel

submitted that while the threshold in trademark law is based on the

likelihood of confusion between marks, copyright law prohibits the

reproduction or substantial reproduction of another’s work. It was

contended that the learned Single Judge did not make any finding that

the rival marks are identical. It was submitted that copyright law

operates without territorial limits, meaning that once an artistic work

is independently created anywhere in the world, it does not become a

reproduction for the purposes of copyright infringement merely by use

in another jurisdiction, even if such use is deemed infringing under

trademark law in that jurisdiction. The learned Counsel further argued

that the impugned mark could not be considered a reproduction of the

plaintiffs’ mark because it had been recognised as Defendant No.1’s

mark under the 1983 Agreement.

RFA(OS)(COMM) 18/2024 and other connected matter Page 33 of 97

16.13 The learned Counsel submitted that the artwork protected under

Plaintiff No.1’s copyright registration, “ ” (Ex. PW

1/10) substantially differed from their device mark, “

”. It was pointed out that the plaintiffs failed to

provide specifics of the copyright registration, such as the authorship

and creation details, in the plaint. Furthermore, the copyright

registration, which was granted in 2002, was obtained after the filing

of the present suit, and no amendment was made to the plaint to reflect

this fact.

16.14 The learned Counsel submitted that, as per the plaintiffs’ claim,

the artwork was created in 1927, and thus, the protection was likely to

have expired. It was further argued that the plaintiffs failed to establish

the authorship of the artwork through evidence and did not assert that

the impugned mark was a copy or a reproduction of their copyrighted

work, either in India or anywhere. It was contended that had the

impugned mark been infringing, it could not have survived in other

jurisdictions.

16.15 It was submitted that while the similarity between the marks

may constitute trademark infringement, it should not amount to

copyright infringement, as it is not a reproduction of the plaintiffs’

work, but rather an independent creation. The learned Counsel

supported and reiterated the finding of the learned Single Judge that

RFA(OS)(COMM) 18/2024 and other connected matter Page 34 of 97

the impugned mark was an independent creation. It was submitted that

there are limited ways to depict a strong and ferocious crocodile, and

the learned Single Judge correctly observed that copyright does not

protect ideas, only their expression. Thus, independent creations of the

same subject matter, such as a leaping tiger, may share inherent

similarities without constituting copyright infringement.

16.16 It was submitted that the learned Single Judge rightly held that

the plaintiffs failed to establish goodwill in India as of 1998, when the

defendants began commercial use of the impugned mark. It was

argued that by 1998, the plaintiffs had only been operating for

approximately 5 years in India and did not provide sufficient proof of

the goodwill and repute for the relevant year. Further, no evidence of

actual consumer confusion or any demonstrable damage caused to

plaintiffs was furnished. It was emphasised that therefore the essential

elements of the classic trinity test to establish passing off were not

sufficiently proved.

16.17 The learned Counsel further contended that the learned Single

Judge correctly excluded certain evidence due to the lack of a

certificate as under Section 65B of IEA. It was pointed out that the CA

Certificate (Ex. PW 2/5) presented by the plaintiffs contained figures

that differed from those stipulated in the plaint, and that the concerned

Chartered Accountant

8

was not examined to verify the accuracy of the

certificate. Instead, only PW2, who was not a chartered Accountant,

was examined in relation thereto.

8

“CA” hereinafter

RFA(OS)(COMM) 18/2024 and other connected matter Page 35 of 97

16.18 The learned Counsel highlighted a typographical error in

Plaintiff No.1’s letter dated 13.02.1989 (Ex. DW 1/25), which referred

to an agreement of 27.08.1985. The actual agreement was dated

22.08.1985 (Ex. DW. 1/80), and the learned Counsel argued that such

a clerical error could not be used to dispute the authenticity of the

agreement, especially when no such objection had been raised by the

plaintiffs during the pendency of the suit for over two decades, and

therefore, the plaintiffs must be estopped from raising this objection at

a belated stage.

16.19 It was also argued that although the 1983 Agreement did not

apply to India, it remained relevant for understanding the specific

marks belonging to the parties. It was contended that the 1983

Agreement explicitly referred to 5 marks of the defendants, including

the standalone impugned mark. The plaintiffs’ claim that Schedule A

of the 1983 Agreement only included 3 of the defendants’ mark was

contested, especially since the standalone device mark had been used

and registered in five other countries covered by the Agreement. The

learned Counsel relied on paragraph nos. 106, 108 and 132 of the

arbitral award of Singapore, which acknowledged the existence of the

standalone marks.

16.20 The learned Counsel relied upon Rule 20 of the Delhi High

Court Intellectual Property Rights Division Rules of 2022

9

to contend

9

20. Damages/Account of profits– A party seeking damages/account of profits, shall give a reasonable

estimate of the amounts claimed and the foundational facts/account statements in respect thereof along with

any evidence, documentary and/or oral led by the parties to support such a claim. In addition, the Court shall

consider the following factors while determining the

quantum of damages:

(i) Lost profits suffered by the injured party;

(ii) Profits earned by the infringing party;

(iii) Quantum of income which the injured party may have earned through royalties/license fees, had the use

of the subject IPR been duly authorized;

RFA(OS)(COMM) 18/2024 and other connected matter Page 36 of 97

that the learned Single Judge erred in directing the examination of the

defendants’ accounts without the plaintiffs first proving that they had

suffered any loss. It was also submitted that the prolonged pendency

of the suit was attributable to the plaintiffs’, since they took 11 years

to present and examine their witnesses. It was argued that the learned

Single Judge erred in awarding costs against the defendants,

emphasizing the “conduct of party” criteria under Section 35(3)(a) of

the Commercial Courts Act of 2015.

CONTENTIONS ON BEHALF OF THE

RESPONDENTS/PLAINTIFFS

16.21 Per contra, Mr. Lall, the learned Senior Counsel appearing for

the respondents/plaintiffs, submitted that their challenge to the

impugned judgment rested on three major premises: (i) the finding of

the learned Single Judge on copyright infringement, (ii) the claim of

passing off, and (iii) the finding that the plaintiffs failed to establish

their goodwill and reputation.

16.22 It was urged that the defendants were attempting to characterize

the letter dated 22.08.1985 as an agreement. The plaintiffs vehemently

denied that any letter/agreement existed whereby they gave consent to

the defendants’ use of the impugned mark. It was argued that the 1983

Agreement and the 1985 letter were distinct and that the latter lacked

the necessary signatures of Plaintiff No. 1 to constitute a binding

(iv) The duration of the infringement;

(v) Degree of intention/neglect underlying the infringement;

(vi) Conduct of the infringing party to mitigate the damages being incurred by the injured party;

In the computation of damages, the Court may take the assistance of an expert as provided for under Rule 31

of these Rules.

RFA(OS)(COMM) 18/2024 and other connected matter Page 37 of 97

agreement. The learned Senior Counsel reiterated the learned Single

Judge’s conclusion that the 1985 instrument was merely a unilateral

communication, not a bilateral binding contract, and it did not specify

which of the plaintiffs’ marks Defendant No. 1 was permitted to use.

16.23 The learned Senior Counsel contended that the plaintiffs had

successfully established their copyright ownership, which was duly

recognised by the learned Single Judge. It was submitted that even if

the defendants’ adoption of the mark was honest, substantial similarity

between the marks would still amount to copyright infringement. It

was argued that if the conceptually identical crocodile mark was found

to infringe the plaintiffs’ trademark, it would necessarily violate their

copyright as well.

16.24 The learned Senior Counsel supported findings of the learned

Single Judge that the 1983 Agreement did not extend to India, relying

on the Arbitral Award dated 15.08.2011, which confined the 1983

Agreement to the territories explicitly mentioned in the agreement. It

was noted that the Tribunal had denied Defendant No. 1 rights over “

” in Indonesia, which was part of the 1983

Agreement. This, it was argued, demonstrated that even in countries

covered by the 1983 Agreement, the defendants could not use or

register the standalone impugned mark. With respect to Plaintiff No.

1’s trademark, it was pointed out that the defendants had never

challenged the registration of the mark.

RFA(OS)(COMM) 18/2024 and other connected matter Page 38 of 97

16.25 Reference was made to paragraph nos. 43, 44, 46, 47, 49 and 50

of the impugned judgment to submit that the impugned mark was

rightly found to be conceptually identical, giving rise to a likelihood

of consumer confusion.

16.26 It was further submitted that the learned Single Judge relied on

the cross-examination of DW1 and DW2, whereby they

acknowledged the similarities between the rival marks, the only

distinction being the direction of the crocodile. It was argued that the

learned Single Judge rightly held that the impugned mark was not an

independent creation but a copy of the plaintiffs’ mark, with no honest

adoption by the defendants.

16.27 With respect to passing off, it was contended that the plaintiffs’

goodwill was never disputed. Plaintiff No. 1 was the first to create and

use the following marks since 1927 “ ” (copyright

artwork), “ ”, “ ” (the mark

plaintiffs’ herein seek to protect) and . In contrast,

Defendant No. 1 adopted their mark only in 1947, being “

”. It was strongly contended that the defendants

RFA(OS)(COMM) 18/2024 and other connected matter Page 39 of 97

were well-aware of the plaintiffs’ use of the mark “ ” as

early as 1980, having issued a cease-and-desist notice to the Plaintiff

No. 1 in Singapore. It was submitted that this led to negotiations

culminating in the 1983 Agreement, which was limited to five

countries, and it expressly included the plaintiff’s mark “

”. Plaintiff No.1 applied for registration of in India in

1983 and commenced commercial use in 1993, while Defendant No.

1 began using the impugned mark in India in 1998 and applied for

registration in 1999 on a proposed-to-be-used basis, which remains

pending due to the plaintiff’s opposition.

16.28 It was further submitted that the plaintiffs were able to establish

their reputation and goodwill in the Indian market within 5 years (by

1998), i.e., by the time the defendants entered the Indian market with

the impugned mark. This was substantiated by the following evidence:

(i) Sales figures of the plaintiffs between 1993-98 amounted

to approximately Rs. 22,84,86,256/- as reflected in the CA

certificate (PW 2/5).

(ii) Promotional expenditure between 1993-98 was around

Rs. 1,10,64,607/- as verified by the same CA certificate (PW

2/5).

(iii) The plaintiffs’ trademark registrations in other parts of

the world prior to the defendants’ entry into the Indian market

were detailed in Exhibit PW 1/14A to PW 1/14K.

RFA(OS)(COMM) 18/2024 and other connected matter Page 40 of 97

(iv) 14 Orders of this Court granted ex-parte ad interim and

interim injunctions in favour of the plaintiffs prior to the

institution of the suit (Ex. PW 1/17), further substantiated their

claim of established goodwill.

(v) The plaintiff’s “LACOSTE” word mark and crocodile

device had been extensively advertised since 1933 in India, and

their products were available at various international airports.

Hence, the plaintiffs had acquired significant goodwill and

reputation by 1998.

16.29 The learned Senior Counsel contested the rejection by the

learned Single Judge of several crucial documents, including the CA

certificate (PW 2/5), interim orders passed by this Court, worldwide

trademark registration certificates of the plaintiffs, and Lacoste’s book

showcasing advertisements with the crocodile device mark since

1933, solely for the want of a Section 65B certificate under IEA, even

though the plaintiffs had established the existence of dishonesty and

misrepresentation by the defendants. It was further argued that the

learned Single Judge incorrectly applied the test of significant

reputation and consumer recognition, as conceptually similarity itself

warranted the consideration of the injury to the plaintiffs.

16.30 Addressing the defendants’ challenge to the plaintiffs’ 1983

Indian trademark application, it was submitted that since the

application for registration was filed in 1983, defendant’s consent was

not required. The defendant’s non-opposition could not be construed

as consent under the 1985 agreement.

RFA(OS)(COMM) 18/2024 and other connected matter Page 41 of 97

16.31 On rendition of accounts, it was submitted that the learned

Single Judge had correctly directed a separate trial to ascertain the

profits incurred from sale of infringing goods, but the defendants had

deliberately delayed proceedings by failing to file their evidence

affidavit.

16.32 The learned Senior Counsel drew the Court’s attention to an

error in a document where the date “22.08.1985” was stipulated. It was

submitted that the actual date was 27.08.1985, which was smudged

and “22.08.1985” was mentioned. It was submitted that as per court

record, the actual date was 27.08.1985, and that this letter was not

placed on record.

16.33 With respect to the defendants’ claim that the 1983 Agreement

referred to only 3 marks of the defendants and not 5, it was argued that

the markings A1, A2, etc. in Schedule A of the Agreement were not

part of the original document but had been subsequently added by the

defendants themselves. The learned Senior Counsel urged the Court to

consider the entire context of the Agreement, which reflected that the

defendant’s standalone impugned mark was not agreed upon for co-

existence.

16.34 The learned Senior Counsel assailed the rejection of the CA

certificate (PW 2/5) on the ground that supporting invoices were

unnecessary since the very purpose of a CA certificate is that such

documents need not be exhibited, as they have already been audited.

RFA(OS)(COMM) 18/2024 and other connected matter Page 42 of 97

16.35 In rejoinder, the learned Counsel on behalf of the defendants

argued that copyright infringement required substantial copying of the

protected artwork. It was further argued that the defendants did not

have access to the plaintiffs’ accounts and, as such, the concerned CA

should have been deposed to validate the financial figures presented.

With respect to the rendition of accounts, it was contended that there

was no fiduciary or direct commercial relationship between the

defendants and the plaintiffs. The defendants maintained that they

were honest users of their mark, and thus, the rendition of accounts

was not warranted in this case.

16.36 In sur-rejoinder, reliance was placed on Section 35(2) of the

Commercial Courts Act, 2015, to submit that the general rule

regarding the award of costs is that the unsuccessful party shall be

ordered to pay the costs of the successful party. It was further

submitted that as per Section 135 of the Trade Marks Act, 1999 there

is no requirement of a fiduciary or direct commercial relationship

between the parties for awarding damages and rendering accounts.

Honesty was argued to be irrelevant once infringement was

established. Thus, the plaintiffs contended that the defendants honest

use of the mark was immaterial if their use was found to constitute

infringement, and that the rendition of accounts was indeed warranted

in the present case.

FINDINGS AND ANALYSIS

17. We have carefully considered the present lis in its entirety,

heard the learned Counsels appearing on behalf of both parties at

RFA(OS)(COMM) 18/2024 and other connected matter Page 43 of 97

length, meticulously examined the material placed on record and

thoroughly analysed the impugned judgment.

17.1 For the sake of convenience, the appellants/defendants will be

collectively referred to as “Crocodile International” and the

respondents/plaintiffs as “Lacoste”.

SCOPE OF REVIEW

17.2 It is needless to say that the first appellate court functions as the

final court of fact and, and it is permissible for the appellate court to

independently review and consider the evidence presented at the

appeal stage.

17.3 It is equally well-settled that an appellate court’s judgment must

reflect a conscious application of mind and must provide clear findings

supported by reasoned analysis on every issue that arises, as well as

on the contentions raised and pressed by the parties for its

determination.

17.4 Further, where an appellate court proposes to reverse a finding

of fact, it must engage with the reasoning of the Trial Court and clearly

articulate its own reasoning for arriving at a different conclusion.

17.5 In accordance with Order XLI Rule 31 of CPC, it is crucial to

identify the points of determination in the present dispute. These

points are as follows:

RFA(OS)(COMM) 18/2024 and other connected matter Page 44 of 97

(i) Whether the use of the impugned mark by Crocodile

International amounts to infringement of the copyright of

Lacoste?

(ii) Whether the Agreements dated 17.06.1983 and

22.08.1985 between Lacoste and Crocodile International extend

to India? Whether these Agreements entitle Crocodile

International to use the impugned mark in India?

(iii) Whether the use of the impugned mark by Crocodile

International in India amounts to infringement of Lacoste’s

trademark rights?

(iv) Whether the use of the impugned mark by Crocodile

International in India amounts to passing off?

(v) Whether the suit suffers from acquiescence on the part of

Lacoste?

(vi) Whether the learned Single Judge erred in awarding the

rendition of accounts to Lacoste?

(vii) Whether the learned Single Judge erred in awarding costs

to Lacoste?

17.6 In light of the above, we shall independently examine the

findings of the learned Single Judge on each of the issues and address

the submissions made by both the parties.

Issue 1: Whether the use of the impugned mark by Crocodile

International amounts to infringement of the copyright of Lacoste?

17.7 To begin, it is essential to outline the relevant statutory

framework applicable to the present issue.

RFA(OS)(COMM) 18/2024 and other connected matter Page 45 of 97

17.8 The subject of copyright is well-articulated by the Supreme

Court in Engineering Analysis Centre of Excellence (P) Ltd. v.

CIT

10

, the same reads as follows:

“128.1. Copyright is an exclusive right, which is negative in

nature, being a right to restrict others from doing certain acts.

128.2. Copyright is an intangible, incorporeal right, in the nature

of a privilege, which is quite independent of any material

substance. Ownership of copyright in a work is different from the

ownership of the physical material in which the copyrighted work

may happen to be embodied. An obvious example is the purchaser

of a book or a CD/DVD, who becomes the owner of the physical

article, but does not become the owner of the copyright inherent in

the work, such copyright remaining exclusively with the owner.

128.3. Parting with copyright entails parting with the right to do

any of the acts mentioned in Section 14 of the Copyright Act. The

transfer of the material substance does not, of itself, serve to

transfer the copyright therein. The transfer of the ownership of the

physical substance, in which copyright subsists, gives the

purchaser the right to do with it whatever he pleases, except the

right to reproduce the same and issue it to the public, unless such

copies are already in circulation, and the other acts mentioned in

Section 14 of the Copyright Act.”

17.9 Section 14(c) of the Copyright Act, 1957 defines “copyright” as

the exclusive right to, inter alia, reproduce a work, issue copies of the

work to the public, and communicate the work to the public. The

author of the work is the first owner of the copyright under Section 17

of the Act. Section 54 defines the “owner of copyright” as including

the author of a literary, dramatic, musical or artistic work, whether

known or unknown. The Act does not mandate compulsory

registration of copyright, as evidenced by employing the term “may”

in Section 45. This is further supported by Section 51, which stipulates

the circumstances under which a copyright is said to have been

infringed. The said provision does not impose any explicit requirement

10

(2022) 3 SCC 321

RFA(OS)(COMM) 18/2024 and other connected matter Page 46 of 97

of copyright registration to seek remedies. Section 55 and 63 outline

civil and criminal remedies for copyright infringement.

17.10 Therefore, the Copyright Act, 1957 does not restrict protection

solely to registered copyright holders. This view was also upheld by a

co-ordinate Bench of this Court in Rajesh Masrani v. Tahiliani

Design (P) Ltd.

11

as follows:

“33. A person has an inherent copyright in an original

composition or compilation without the necessity of its

registration. [Satsang v. Kiron Chandra Mukhopadhyay, AIR

1972 Calcutta 533 (V 59 C 114)]. Registration of the work under

the Act is not compulsory and registration is not a condition

precedent for maintaining a suit for damages for infringement of

copyright. The safest test to determine whether or not there has

been a violation of copyright is to find out if the reader, spectator

or viewer after having read or seen both the works can get an

impression that the impugned work or film is an imitation of the

other. In the instant case, no prudent man who has seen the film

and read the novel Alayazhi will come with an impression that the

former is an imitation of the latter. (R. Madhavan v. S.K. Nayar,

AIR 1988 Kerala 39). Registration of such right under Sec. 44 of

the Act is not a condition precedent for availing the remedy, such

as suing for an injunction restraining infringement of the right,

damages and for accounting. Provision for registration under

Section 44 is not mandatory but only intended to provide for prima

facie proof of the particulars regarding the right as stated in

Section 48. (Nav Sahitya Prakash v. Anand Kumar, AIR 1981

Allahabad 200).”

(emphasis supplied)

17.11 Section 13 of the Act provides that only “original” literary,

artistic, dramatic, and musical works can be protected by copyright.

The threshold for “originality” has evolved, as seen in Eastern Book

11

2008 SCC OnLine Del 1283

RFA(OS)(COMM) 18/2024 and other connected matter Page 47 of 97

Company v. DB Modak

12

, where the Supreme Court adopted a middle

ground between ‘sweat of the brow’ doctrine

13

and the ‘modicum of

creativity’

14

standard.

17.12 Copyright law is rooted in the principle that “no man is entitled

to steal or appropriate the result of another man’s brain, skill or

labour.”

15

Copyright does not protect ideas, but rather their

expression.

16

However, not every expression of an idea is protected.

17.13 One exception to copyright protection is the doctrine of merger.

This doctrine holds that if an idea and its expression are so intrinsically

connected that the expression becomes indistinguishable from the

idea, the expression is not entitled to copyright protection to avoid

monopolizing general ideas

17

.

17.14 In relation to copyright infringement, the Supreme Court in

R.G. Anand v. Delux Films

18

laid down the following test for

infringement, which shall serve as a guiding principle in assessing

infringement in the present case. The same merits reproduction, as

follows:

“46. Thus, on a careful consideration and elucidation of the

various authorities and the case law on the subject discussed

above, the following propositions emerge:

1. There can be no copyright in an idea, subject-matter, themes,

plots or historical or legendary facts and violation of the copyright

12

(2008) 1 SCC 1

13

University London Press v. University Tutorial Press, [1916] 2 Ch. 601

14

Fiest Publication Inc. v. Rural Telephone Service, 199 US 340 (1991)

15

Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1

16

Baker v. Seldon, 101 US 99 [1879], Nichols v. Universal Pictures Corp., 45 F.2d (2d Cir. 1930), RG

Anand v. Delux Films, (1978) 4 SCC 118

17

Herbert Rosenthal Jewelry Corporation v. Kalpakian, 446 F.2d 738 (1971); Mattel, Inc. v. Jayant

Agarwalla, 2008 SCC OnLine Del 1059

18

(1978) 4 SCC 118

RFA(OS)(COMM) 18/2024 and other connected matter Page 48 of 97

in such cases is confined to the form, manner and arrangement and

expression of the idea by the author of the copyrighted work.

2. Where the same idea is being developed in a different manner,

it is manifest that the source being common, similarities are

bound to occur. In such a case the courts should determine

whether or not the similarities are on fundamental or substantial

aspects of the mode of expression adopted in the copyrighted

work. If the defendant's work is nothing but a literal imitation of

the copyrighted work with some variations here and there it

would amount to violation of the copyright. In other words, in

order to be actionable the copy must be a substantial and material

one which at once leads to the conclusion that the defendant is

guilty of an act of piracy.

3. One of the surest and the safest test to determine whether or not

there has been a violation of copyright is to see if the reader,

spectator or the viewer after having read or seen both the works

is clearly of the opinion and gets an unmistakable impression

that the subsequent work appears to be a copy of the original.

4. Where the theme is the same but is presented and treated

differently so that the subsequent work becomes a completely new

work, no question of violation of copyright arises.

5. Where however apart from the similarities appearing in the

two works there are also material and broad dissimilarities which

negative the intention to copy the original and the coincidences

appearing in the two works are clearly incidental no

infringement of the copyright comes into existence.

6. As a violation of copyright amounts to an act of piracy it must

be proved by clear and cogent evidence after applying the various

tests laid down by the case-law discussed above.

7. Where however the question is of the violation of the copyright

of stage play by a film producer or a director the task of the

plaintiff becomes more difficult to prove piracy. It is manifest that

unlike a stage play a film has a much broader prospective, wider

field and a bigger background where the defendants can by

introducing a variety of incidents give a colour and complexion

different from the manner in which the copyrighted work has

expressed the idea. Even so, if the viewer after seeing the film gets

a totality of impression that the film is by and large a copy of the

original play, violation of the copyright may be said to be proved.”

(emphasis supplied)

17.15 A copyright registration does not automatically entitle the

registered proprietor to a remedy for infringement. A remedy follows

if copyright subsists, i.e., authorship and originality of the expression

of an idea is proved and infringement under Section 51 is established.

RFA(OS)(COMM) 18/2024 and other connected matter Page 49 of 97

Hence, the aforesaid test is to be employed in order to determine

whether the similarities between the defendants’ work and the

plaintiffs’ work are substantial enough to cause readers to believe that

the defendant’s work is a copy of the plaintiff’s, or whether the

defendants’ work is merely a literal copy of the plaintiffs’ work.

17.16 Upon applying the test laid down in R.G. Anand (supra), this

Court observes that Lacoste holds a valid and subsisting copyright

registration bearing No. A-62692/2002 in the artwork, “ ”

(Ex. PW 1/10). The registration reveals Mr. Robert George as the

author of the work. Lacoste contended that their saurian device was

created by Mr. George in France back in 1927 and that Mr. George

thereafter conferred his rights onto Lacoste (Plaintiff No. 1). This was

duly supported by the testimony of PW1, which was notably not

challenged by the Crocodile International. Therefore, by virtue of

conveyance of rights, Lacoste (Plaintiff No.1) is the exclusive

copyright owner of the said artwork and has the right to control its

reproduction. It is also noted that this artwork functions as the logo of

the Lacoste brand.

17.17 The learned Single Judge applied the doctrine of merger and

concluded that there were a limited number of ways to express a fierce

crocodile. The unique constituent elements of both works were

examined, and it was concluded that the impugned mark was an

independent creation. Consequently, both marks were deemed entitled

to legal protection. The relevant excerpt reads as follows:

RFA(OS)(COMM) 18/2024 and other connected matter Page 50 of 97

“138. The crocodile devices of Plaintiff No. 1 and Defendant No.1

are independent creations, flowing from the same abstract. Both

parties have convincingly elucidated their narratives of having

opted for an artwork of a crocodile, 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

of manifestation, cannot constitute infringement of Lacoste’s

copyright. In the case of Allen v. Academic Games League of Am.

(89 F.3d 614 (9th Cir. 1996), 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.”

(emphasis supplied)

17.18 We respectfully disagree with the finding of the learned Single

Judge for the following reasons.

17.19 The present case is unique due to findings of conceptual and

visual similarity of the rival marks for the purposes of trademark

infringement by the learned Single Judge. This peculiarity is further

heightened by the application of the doctrine of merger for copyright

infringement. It is pertinent that the said doctrine should only be

applied in cases where there are no meaningful alternative ways to

express an idea. If alternative expression exists, the doctrine of merger

should not apply.

17.20 On the issue of independent creation, it is important to note that

Crocodile International was aware of Lacoste’s use of the mark as

early as 16.07.1980, when they issued a cease-and-desist notice (Ex.

DW 1/19) to Lacoste. This suggests that the defendants had reasonable

RFA(OS)(COMM) 18/2024 and other connected matter Page 51 of 97

access to and knowledge of Lacoste’s mark. While the doctrine of

merger does not dependent on intent, in situations where access and

near identity are present, courts should be hesitant to apply the

doctrine of merger, especially where the work is used in trade and

strongly associated with a particular brand.

17.21 The following is a comparison of the rival marks:

LACOSTE

CROCODILE INTERNATIONAL

17.22 This Court is in agreement with the view taken by the learned

Single Judge on the issue of similarity between the rival marks. The

findings on similarity between the two marks by the learned Single

Judge is as follows:

“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

RFA(OS)(COMM) 18/2024 and other connected matter Page 52 of 97

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 and

shape 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

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 mark as to be likely to deceive or cause confusion.” This

principle of ‘likelihood of confusion,’ as elucidated by judicial

precedents, warrants an examination of the contesting marks with

a focus on their similarities, rather than their differences. In Cadila

Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. ((2001) 5 SCC

73) reinforcing the holding in Amritdhara Pharmacy v. Satya Deo

Gupta (1962 SCC OnLine SC 13), the Supreme 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. (1951 SCC OnLine Bom 33), 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 on some 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 of

Bombay held that in ascertaining the possibility of confusion,

courts must evaluate the resemblances in the distinguishing

features of the trademark, rather than undertaking a meticulous

examination to discover their points of differences. In these

circumstances, irrespective of the differences in the posture, poise

and positioning of the birds and their wings, the Court ruled in

RFA(OS)(COMM) 18/2024 and other connected matter Page 53 of 97

favour of the Appellant therein, finding that a person of ordinary

intelligence would mistake the impugned mark to be of the

Appellant therein.

46. Having carefully compared the distinctive elements of both the

Plaintiffs’ and Defendants’ crocodile logos, it becomes clear that

the similarities are not only numerous, but also substantial.

Bearing the aforementioned principles of evaluation in mind, the

noticeable difference in the orientation of the crocodiles – with

Lacoste’s crocodile facing right, and Crocodile International’s

facing left – carries minimal weight and is likely to be 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 the reversed

version of the Annexure-A device, oriented to face right, with

Lacoste’s crocodile device is drawn below:

Lacoste’s

crocodile device

Crocodile

International’s

device

47. Controverting the allegations of consumer misperception,

Crocodile International stated in their defence that it is standard

industry practice to emboss only the logo on the front pockets of t-

shirts, while the tags and labels clearly identify Crocodile

International as the manufacturer. Despite the apparent 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 that the goods are from

Lacoste based on the prominent and recognizable features of the

impugned mark, even though this confusion may not persist

throughout the transaction.

19

Thus, this substantial resemblance

strongly supports a finding of deceptive similarity.”

(emphasis supplied)

19

Vol. 4, J. THOMASMCCARTHY,MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION,

⸹23:6 (5th edn., 2023).

RFA(OS)(COMM) 18/2024 and other connected matter Page 54 of 97

17.23 Upon reviewing the rival marks, we conclude that the

impugned mark reflects a specific choice of expression rather than an

inevitable or dictated one. The defendants had alternative options for

depicting a crocodile, as evidenced by the use of different crocodile

depictions in other marks since 1952. The existence of other effective

ways of expression of a crocodile is substantiated by the various marks

already in use by Crocodile International, as follows:

17.24 We find that the expression used in the impugned mark was a

choice, not a necessity. The mark’s specific posture and visual

characteristics are peculiar and not generic. The other marks in use by

Crocodile International demonstrate that the defendants could have

chosen a different representation of a crocodile.

RFA(OS)(COMM) 18/2024 and other connected matter Page 55 of 97

17.25 Given the substantial similarity between the marks, the

existence of other ways to depict a fierce crocodile, and the reasonable

likelihood that the defendants had access to Lacoste’s mark, we

conclude that independent creation cannot be established. The marks

are conceptually identical, and hence, the issue of copyright

infringement is decided in favour of Lacoste (plaintiffs) and against

Crocodile International (defendants).

17.26 Section 55(1) of the Copyright Act, 1957 provides for civil

remedies for copyright infringement, which Lacoste may be entitled

to.

17.27 Mr. Khan, the learned Counsel for the defendants argued that

the plaint did not provide particulars of original creation, authorship,

or date of creation. They also pointed out that the artwork had been

recognised as Crocodile International’s mark under 1983 Agreement.

17.28 However, upon reviewing the record, we note that PW1

provided a detailed deposition affirming the creation and publication

history of the artwork. This position is further corroborated by the

copyright registration bearing No. A-62692/2002 (Ex. PW-1/10) dated

16.01.2002, which records the initial publication date as 1927 in

France. The said testimony of PW-1 and the claim of copyright were

uncontested during the trial.

17.29 Therefore, we find that the submission of the learned Counsel

for the appellant cannot be accepted, and the issue of copyright

infringement is decided in favour of the plaintiffs.

RFA(OS)(COMM) 18/2024 and other connected matter Page 56 of 97

Issue No. 2: Whether the Agreements dated 17.06.1983 and

22.08.1985 between Lacoste and Crocodile International extend to

India? Whether the aforesaid Agreements entitle Crocodile

International to use the impugned mark in India?

17.30 At the core of this dispute are two agreements under which

Crocodile International, as the unregistered party, was purportedly

authorised by Lacoste to commercially use the impugned mark in

India. Although the present cross appeals arise out of allegations of

copyright and trademark infringement, the dispute fundamentally

revolves around questions of contract law. The determination of the

extent of applicability of the aforementioned Agreements, particularly

whether they extend to India, is critical to resolving this dispute.

17.31 In order to effectively address the issue of whether the co-

existence agreement applies to India, it is first necessary to examine

the relevant statutory provisions and guiding principles of contract law

which are germane to the adjudication of the present controversy.

17.32 Section 2 of the Indian Contract Act, 1872, provides that a

proposal must be accepted in order to constitute a promise. Upon the

performance of the promise with the requisite consideration, it forms

an enforceable agreement, thus creating a contract.

17.33 Section 7 of the Act provides that the acceptance of a proposal

must be absolute and unqualified for it to become a binding promise.

Section 8 further provides that acceptance may be communicated

through actions. Section 10 of the Act establishes that an agreement

RFA(OS)(COMM) 18/2024 and other connected matter Page 57 of 97

becomes a contract if the contracting parties enter it with free consent,

lawful consideration, and a lawful object. As per Section 29,

agreements whose terms are uncertain or incapable of being made

certain are void.

17.34 A contract is based on the mutual understanding between

parties, and it must be interpreted by giving the actual meaning to the

words used in the agreement. It is impermissible for a court to rewrite

or essentially create a new contract.

20

The terms of the contract must

govern the dispute, and it is not within the jurisdiction of the court to

amend or reinterpret these terms unless they are vague or ambiguous.

Explicit terms of a contract always act as the final word with regard to

intention of parties

21

.

17.35 In Nabha Power Limited (NPL) v. Punjab State Power

Corporation Limited (PSPCL) & Anr.

22

, the Supreme Court clarified

the principles of interpreting commercial contracts. The Court referred

to Trollope and Colls Ltd. v. North West Metropolitan Regl. Hospital

Board

23

, underlining the importance of strict adherence to the terms of

the contract, the relevant excerpt merits reproduction:

“… the court does not make a contract for the parties. The court

will not even improve the contract which the parties have made for

themselves, however desirable the improvement might be. The

court's function is to interpret and apply the contract which the

parties have made for themselves. If the express terms are perfectly

clear and free from ambiguity, there is no choice to be made

between different possible meanings: the clear terms must be

20

Rajasthan State Industrial Development & Investment Corpn. v. Diamond & Gem Development

Corporation Ltd., (2013) 5 SCC 470 : (2013) 3 SCC (Civ) 153; Shree Ambica Medical Stores v. Surat

People's Coop. Bank Ltd., (2020) 13 SCC 564

21

GMR Warora Energy Ltd. v. CERC, (2023) 10 SCC 401

22

(2018) 11 SCC 508.

23

(1973) 1 WLR 601 : (1973) 2 All ER 260 (HL)]

RFA(OS)(COMM) 18/2024 and other connected matter Page 58 of 97

applied even if the court thinks some other terms would have been

more suitable. An unexpressed term can be implied if and only if

the court finds that the parties must have intended that term to form

part of their contract: it is not enough for the court to find that such

a term would have been adopted by the parties as reasonable men

if it had been suggested to them: it must have been a term that went

without saying, a term necessary to give business efficacy to the

contract, a term which, though tacit, formed part of the contract

which the parties made for themselves.”

17.36 It is also crucial to examine the principle of territoriality

under trademark law.

17.37 Intellectual property rights, including trademarks, are territorial

in nature. Trademark rights are enforceable only within the

jurisdiction of the territory where they are registered and is not

automatically extended globally. A mark may have goodwill in one

country/jurisdiction/territory but be completely unknown in another.

Granting worldwide exclusivity for such mark, without market

presence or recognition, would be unjustified and may operate in an

anti-competitive manner. Such territorial confines often lead to

international disputes, as seen in the present case. The Supreme Court,

in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.

24

reiterated that trademark rights are inherently territorial and cannot be

extended beyond the territory of registration.

17.38 Having established the principles of contract and trademark

law, we now proceed to analyse the 1983 and 1985

Agreements/Letters in light of the above discussed principles.

24

(2018) 2 SCC 1

RFA(OS)(COMM) 18/2024 and other connected matter Page 59 of 97

1983 Agreement

17.39 The nature of the 1983 Agreement is undisputed, i.e., it is a co-

existence agreement aimed at ensuring mutual co-operation between

Lacoste and Crocodile International. However, the applicability of this

agreement to India and the use of the impugned mark in India remains

contentious in this lis.

17.40 The following sequence of communications precedes the 1983

Agreement:

(i) 16.07.1980 (Ex. DW 1/19) – A cease-and-desist notice

was issued to Lacoste’s licensee in Singapore.

(ii) 30.07.1980 (Ex. DW 1/20) – The licensee responded by

asserting that their logo featured an alligator, not a crocodile,

and that the marks were distinguishable, with consumers

associating the brand with the name “LACOSTE”.

(iii) 09.12.1980 (Ex. DW 1/21) – Lacoste proposed a

settlement, including compensation to resolve the legal

disputes.

(iv) 21.01.1983 (Ex. DW 1/18) – Lacoste offered a draft

settlement proposal, including compensation of USD 1 million

to cover expenses arising from the disputes.

(v) 10.02.1983 (Ex. DW 1/22) – Crocodile International’s

licensee in Singapore submitted three marks being, “

”, “ ” and “ ” for

clarification regarding the scope of their registrations.

RFA(OS)(COMM) 18/2024 and other connected matter Page 60 of 97

(vi) 17.06.1983 (Ex. PW 1/8) – Following further

negotiations, the 1983 Agreement was finalized, establishing

co-existence in 5 countries, Taiwan, Singapore, Indonesia,

Malaysia (Malaya, Sabah, Sarawak) and Brunei.

17.41 The 1983 Agreement refers to Plaintiff No. 1 as “LCL” and

Defendant No. 1 as “LSM”. For the sake of convenience, the excerpt

of this Agreement is as follows:

“…WHEREAS LSM and LCL wish to cooperate in the countries

listed in Article -1 of this Agreement.

***

WHEREAS LSM and LCL agree that their respective emblem

marks as shown 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

other parts of the world wherever possible.

***

ARTICLE I – TERRITORY

This Agreement shall cover the following countries:

- TAIWAN

- SINGAPORE

- INDONESIA

- MALAYSIA (Malaya, Sabah, Sarawak)

- BRUNEI

Herein referred to as the Territory.

ARTICLE II – TRADEMARK REGSITRATIONS

…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

obtain such registrations in the various classes of products and

services under which 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 take all

necessary steps to cancel and/or withdraw registrations and/or

applications, if any, for any Saurian-like trademark other than

those shown in that Schedule B.

***

4. Likewise, LCL shall give all possible assistance to LSM to apply

for the registration within the Territory of its own emblem

RFA(OS)(COMM) 18/2024 and other connected matter Page 61 of 97

trademarks as shown 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.

***

ARTICLE III – COMPENSATION

In order to compensate LSM for the expenses incurred in the past

for protection 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.

***

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

from proceeding alone at its own expense.

ARTICLE V – TERMINATION OF EXISTING LEGAL

PROCEEDINGS AND RELEASES

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

the use 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, with prejudice, all pending proceedings.”

(emphasis added)

17.42 Lacoste argues that the 1983 Agreement does not apply to

India, while Crocodile International asserts that it grants them

permissive use of the impugned mark in India.

RFA(OS)(COMM) 18/2024 and other connected matter Page 62 of 97

17.43 Upon examining the explicit terms of the 1983 Agreement,

Article I clearly lists five countries within its scope, without any

reference to India. The Agreement’s application is limited to these five

countries, and there is no mention of India. Therefore, the Agreement

cannot be construed as extending its applicability to India.

17.44 Although Article I also indicates that the parties may co-operate

in other regions if possible, this clause is merely indicative of goodwill

and does not provide for enforceable legal obligations. It fails to meet

the threshold of precision and certainty required under Indian contract

law to be enforceable.

17.45 Further, while two communications, i.e., Letter dated

02.08.1995 (Ex. DW 1/40) and Letter dated 28.07.1995 (Ex. DW 1/39)

are not admissible under Section 65 of IEA, they nonetheless support

Lacoste’s position. In these communications, Lacoste raised concerns

regarding the use of the marks outside the agreed territories, such as

in China, which was not a covered territory under the 1985 Agreement.

This supports the view that the parties intended to limit their

agreements to the explicitly stated territories.

17.46 After a thorough review of the case materials, this Court is

convinced that the parties intended the 1983 Agreement to apply only

to the five countries explicitly mentioned. This interpretation is

reinforced by legal disputes in other territories outside the scope of the

Agreement, such as China, Sri Lanka, and Myanmar. Notably, DW1

admitted during cross-examination conducted on 22.02.2018 that the

1983 Agreement did not extend to India. There is no evidence of an

amendment to include India or any other supporting documentation to

RFA(OS)(COMM) 18/2024 and other connected matter Page 63 of 97

suggest that the parties ever agreed to extend the Agreement’s scope

to India. Accordingly, the 1983 Agreement does not apply to India.

17.47 An ancillary question arises from the above discussion, whether

the 1983 Agreement, although not applicable to India per se, could

nevertheless be extended to India through a subsequent instrument.

17.48 Before addressing this issue, it is imperative to first determine

whether the 1983 Agreement included the use of the impugned mark

within its Schedule A. This is a foundational question that must be

resolved before considering any subsequent extension.

Whether the 1983 Agreement included the impugned mark in its

Schedule A?

17.49 The Schedules A and B, as appended to the 1983 Agreement

are critical to understanding its scope and intent, are as follows:

RFA(OS)(COMM) 18/2024 and other connected matter Page 64 of 97

17.50 Crocodile International contended that vide their letter dated

10.02.1983 (Ex. DW 1/22), they enclosed the impugned mark to be

included in the 1983 Agreement. They assert that Schedule A lists five

of their marks, not three, as argued by Lacoste. In the copy of the

Agreement on record, there are demarcations indicating marks as A1,

A2, etc., which is claimed to have been added by Crocodile

International. Although Ex. DW 1/22 was deemed inadmissible due to

lack of proper foundational evidence, the central issue remains what

the parties intended the Agreement to protect.

17.51 Lacoste, through various communications dated 29.03.1995

(Ex. DW 1/36), 13.11.1997 (Ex. DW 1/42) and 02.02.1998 (Ex. DW

1/43), raised objections to Crocodile International’s use of the

standalone impugned mark in Korea, Taiwan, and Myanmar

respectively. These objections indicate that Lacoste did not consent to

the use of the impugned mark even in the territories covered by the

1983 Agreement. Further, vide letter dated 28.05.1998 (Ex. DW 1/44),

Lacoste expressed concerns regarding Crocodile International’s use of

the right-facing saurian device mark, “ ”, reiterating that

they had only consented to the Crocodile International’s use of “

” mark within specific bounds. By way of letter dated

18.12.1998 (Ex, DW 1/45), Lacoste alleged infringement in China and

India, due to the use of the left-facing saurian device. From these

communications, it can be inferred that Lacoste did not consent to the

standalone impugned mark’s use without the distinguishing word

“CROCODILE”. Thus, it is apparent that Lacoste did not permit the

RFA(OS)(COMM) 18/2024 and other connected matter Page 65 of 97

use of the impugned mark by Crocodile International, either in the

territories covered by the Agreement or beyond.

The 1985 Agreement/Letter

17.52 There exists a divergence of opinion regarding the nature and

intent of the Agreement/Letter dated 22.08.1985 (Ex. DW 1/80). Its

contents are as follows:

“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 body controlling, 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

CHEMISE LACOSTE for the hereunder LA CHEMISE

LACOSTE’s emblem marks or marks containing said emblems in

Korea.

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

CHEMISE LACOSTE’s applications as defined in paragraph 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 CHEMISE LACOSTE’s emblem marks or marks

containing said emblem in BANGLADESH, INDIA and

PAKISTAN.

RFA(OS)(COMM) 18/2024 and other connected matter Page 66 of 97

Yours faithfully

For and on behalf of

CROCODILE INTERNATIONAL PTE LTD

TAN HIAN TSIN”

(emphasis supplied)

17.53 Crocodile International’s case largely hinges on this alleged

instrument, asserting that it extended the 1983 Agreement to India. On

the other hand, Lacoste disputes its applicability, maintaining its

unilateral nature since it was neither addressed to nor signed by them.

17.54 Crocodile International submitted that the 1985 letter was a

response to an offer made by Lacoste for market access in Korea in

exchange for market presence in India. Furthermore, it was contended

that Dr. Tan, acting out of goodwill, included Pakistan and Bangladesh

in this arrangement. Crocodile International relies on multiple

correspondences, being Ex. DW-1/24 to DW-1/79, to demonstrate

Lacoste’s acknowledgment of the 1985 Agreement. They also claim

that Lacoste’s failure to object to Crocodile International’s trademark

application in India, filed in 1983, allowed the latter to secure its

registration in 1990. They assert that the learned Single Judge erred in

stating that Lacoste had obtained a registered trademark prior to the

1985 Agreement/Letter.

17.55 Crocodile International also contended that the plaintiff’s letter

dated 10.02.1989 (Ex. DW-1/24) was erroneously rejected by the

learned Single Judge. They argued that this letter was crucial evidence

RFA(OS)(COMM) 18/2024 and other connected matter Page 67 of 97

to demonstrate that the co-existence agreement was extended to India

and Pakistan. It was further contended that the learned Single Judge

wrongly concluded that Ex. DW-1/24 and Ex. DW-1/25 were not

legally sound evidence of an agreement. It was argued that such a

conclusion was contrary to Section 4 of the Indian Contract Act, 1872,

which provides that a proposal becomes binding upon acceptance.

17.56 Crocodile International contended that the offer of mutual co-

existence was accepted through letter dated 13.02.1989 (Ex. DW-

1/25), and that there was no revocation of this acceptance.

17.57 However, upon reviewing the record, we find that the learned

Single Judge meticulously examined both Ex. DW-1/24 and Ex. DW-

1/25 and duly held as follows:

“93. Ex. DW1/24 is the letter dated 10th February, 1989

addressed by Defendant No. 1 to Plaintiff No. 1, which Crocodile

International cites as evidence 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 the arrangement arrived at in

1985. The Defendants asserted that Ex. DW 1/25 contains an

express acknowledgment of the ‘1985 agreement,’ suggesting a

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 fromthese 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 mark the 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

RFA(OS)(COMM) 18/2024 and other connected matter Page 68 of 97

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 this

letter fails to achieve, rendering it ineffective as a basis for use of

Annexure- A 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-à-vis Annexure-A device,

and is thus, irrelevant to the instant lawsuit.”

(emphasis supplied)

17.58 A plain reading of the impugned judgment indicates that the

learned Single Judge did not blindly reject the letters dated 10.02.1989

(Ex. DW-1/24) and 13.02.1989 (Ex. DW 1/25). Instead, the learned

Single Judge carefully considered the submissions of both sides before

reaching a conclusion.

17.59 The learned Senior Counsel for the defendants relies on Section

4 of the Indian Contract Act, 1872, to argue that the letter dated

13.02.1989 (Ex. DW 1/25) constituted an acceptance of a unilateral

offer. According to the learned Senior Counsel, this acceptance made

the proposal binding, as per Section 4.

17.60 However, we find that Section 4 must be read in conjunction

with Section 7 of the Indian Contract Act, 1872 which stipulates that

an acceptance must be absolute and unqualified.

17.61 Upon perusal of the letter dated 13.02.1989 (Ex. DW 1/25), we

do not find any unequivocal or unqualified acceptance of any offer.

RFA(OS)(COMM) 18/2024 and other connected matter Page 69 of 97

The letter merely reflects the defendants’ intention not to oppose the

plaintiffs’ trademark application, but it lacks the clarity required for it

to constitute a binding acceptance.

17.62 The Supreme Court, in Padia Timber Co. (P) Ltd. v.

Visakhapatnam Port Trust

25

, underscored the principle that offer and

acceptance must rest on certainty, commitment, and communication.

The relevant excerpt is as follows:

“54. It is a cardinal principle of the law of contract that the offer

and acceptance of an offer must be absolute. It can give no room

for doubt. The offer and acceptance must be based or founded on

three components, that is, certainty, commitment and

communication. However, when the acceptor puts in a new

condition while accepting the contract already signed by the

proposer, the contract is not complete until the proposer accepts

that condition, as held by this Court in Haridwar Singh v. Bagun

Sumbrui [Haridwar Singh v. Bagun Sumbrui, (1973) 3 SCC 889].

An acceptance with a variation is no acceptance. It is, in effect and

substance, simply a counter-proposal which must be accepted fully

by the original proposer, before a contract is made.

55. In Union of India v. Bhim Sen Walaiti Ram [Union of

India v. Bhim Sen Walaiti Ram, (1969) 3 SCC 146], a three-Judge

Bench of this Court held that acceptance of an offer may be either

absolute or conditional. If the acceptance is conditional, offer can

be withdrawn at any moment until absolute acceptance has taken

place.”

(emphasis supplied)

17.63 Therefore, an acceptance of an offer under Section 7 of the

Contract Act must be absolute, unconditional and unqualified.

17.64 In view of the above, this Court notes that the letter dated

10.02.1989 (Ex. DW-1/24) only expressed Defendant No.1’s intention

25

(2021) 3 SCC 24

RFA(OS)(COMM) 18/2024 and other connected matter Page 70 of 97

not to oppose the plaintiffs’ trademark application, which cannot be

regarded as an absolute and unqualified acceptance of any offer.

17.65 Both Ex. DW-1/24 and Ex. DW-1/25 fail to exhibit the

necessary commitment or certainty that would signify a binding

acceptance. Mere reference of non-opposition does not establish an

unequivocal agreement enforceable by law.

17.66 Therefore, the submissions advanced by the learned Senior

Counsel regarding the acceptance of the proposal cannot be sustained.

17.67 In addition, we turn our attention to the documents heavily

relied upon by Crocodile International to prove Lacoste’s

acknowledgement of the 1985 Agreement.

17.68 Out of the documents listed, Ex. DW 1/13 to Ex. DW 1/35, Ex.

1/37 to Ex. DW 1/40 and Ex. DW 1/45 to Ex. DW 1/79, Lacoste

admitted only Ex. DW 1/36 and Ex. DW 1/44. The rest were objected

to for the want of original documents or secondary evidence or

certificate under Section 65B of IEA. The learned Single Judge rightly

observed that no explanation was offered in the Written Statement to

account for the absence of original documents. In the absence of such

explanation, and in accordance with Sections 65 of IEA, the

documents were deemed inadmissible.

17.69 Nevertheless, the learned Single Judge reviewed these

documents to assess the merit of Crocodile International’s claim. It

was correctly concluded that even if these documents were taken at

face value, they did not sufficiently establish Lacoste’s

RFA(OS)(COMM) 18/2024 and other connected matter Page 71 of 97

acknowledgment of the 1985 Agreement in relation to the use of the

standalone impugned mark in India. Ultimately, the admissible

exhibits namely, Ex. DW 1/1 to 1/12, Ex. DW 1/36, Ex. DW 41 to Ex.

DW 46, were considered, and the Court found them insufficient to

support Crocodile International’s position.

17.70 Revisiting the 1985 Agreement/letter, it is evident that this

document does not refer to or incorporate the 1983 Agreement or the

impugned mark in question. As rightly observed by the learned Single

Judge, there must be explicit and unambiguous terms that define the

obligations, rights and liabilities of the parties, especially in “complex

legal landscape like trademark registration in foreign jurisdictions”.

For a contract to be legally binding, an offer must be unequivocally

accepted and supported by valid consideration. Upon scrutiny of the

1985 letter, it is clear that:

(i) The letter is not addressed to Plaintiff No. 1, nor it is

attested by them;

(ii) The letter is unilateral in nature;

(iii) There is no evidence of an unqualified acceptance of the

offer contained in the letter;

(iv) It is not apparent whether the letter pertains to the

impugned mark;

(v) Paragraph 4 of the letter merely provides that Crocodile

International may consent upon request, but there is no evidence

to suggest that such consent was either sought or granted.

RFA(OS)(COMM) 18/2024 and other connected matter Page 72 of 97

Therefore, this 1985 letter cannot be construed as a bilateral

agreement, nor can it create binding rights and obligations for the

parties involved. This is further substantiated by Lacoste’s repeated

objections to Crocodile International’s use of the standalone saurian

device mark.

17.71 With respect to Crocodile International’s contention that it

refrained from objecting to Lacoste’s trademark application in India

based on the 1985 letter, and the learned Single Judge’s observation

that consent from Crocodile International was not required since

Lacoste was already a registered user in 1985, this Court finds that

such a position is not fatal to Lacoste’s case.

17.72 Assuming, for the sake of argument, that Lacoste was not a

registered user in India in 1985, and that Crocodile International did

not formally oppose Lacoste’s application, such non-opposition or

forbearance does not, by itself, translate into a legally enforceable

agreement. The 1985 letter, for reasons outlined above, lacks the

essential characteristics of a binding contract. Moreover, as the 1985

letter does not pertain to the impugned mark, any possible extension

of the 1983 Agreement to India would be irrelevant to the current

dispute. Thus, the learned Single Judge’s observation regarding the

lack of a requirement for Crocodile International’s consent is not fatal

to Lacoste’s claim, as Lacoste’s trademark application was not

contingent on such consent.

RFA(OS)(COMM) 18/2024 and other connected matter Page 73 of 97

Permissive Use Under Indian Trademark Law

17.73 Under Indian trademark law, permissive use refers to the legal

use of a registered trademark by a party other than the registered

proprietor, provided such use does not amount to trademark

infringement. The consent of the registered proprietor may be express

or implied, as outlined under the Trade Mark Act of 1999

26

.

17.74 Section 2(r) of the TM Act defines “permitted use”, which is

critical in determining whether the use of a trademark is authorized.

The provision is as follows:

“(r) “permitted use”, in relation to a registered trade mark,

means the use of trade mark—

(i) by a registered user of the trade mark in relation to goods or

services—

(a) with which he is connected in the course of trade; and

(b) in respect of which the trade mark remains registered for the

time being; and

(c) for which he is registered as registered user; and

(d) which complies with any conditions or limitations to which the

registration of registered user is subject; or

(ii) by a person other than the registered proprietor and registered

user in relation to goods or services—

(a) with which he is connected in the course of trade; and

(b) in respect of which the trade mark remains registered for the

time being; and

(c) by consent of such registered proprietor in a written

agreement; and

(d) which complies with any conditions or limitations to which such

user is subject and to which the registration of the trade”

(emphasis supplied)

26

“TM Act”/ “the Act” hereinafter

RFA(OS)(COMM) 18/2024 and other connected matter Page 74 of 97

17.75 Additionally, Section 30(c)(i) of the Act outlines the limits on

the effect of a registered trademark, providing important boundaries

within which a trademark may be used by a third party without

constituting infringement. The provision is as follows:

“30. Limits on effect of registered trade mark.— (1) Nothing in

section 29 shall be construed as preventing the use of a registered

trade mark by any person for the purposes of identifying goods or

services as those of the proprietor provided the use—

***

(c) the use by a person of a trade mark—

(i) in relation to goods connected in the course of trade with the

proprietor or a registered user of the trade mark if, as to those

goods or a bulk of which they form part, the registered proprietor

or the registered user conforming to the permitted use has applied

the trade mark and has not subsequently removed or obliterated it,

or has at any time expressly or impliedly consented to the use of

the trade mark; or…”

(emphasis supplied)

17.76 Crocodile International’s reliance on Ex. DW-1/25 is

unavailing. This letter, upon review, shows that Crocodile

International itself conditioned its consent to two specific device

marks of Lacoste, which were listed in Schedule B of the 1983

Agreement. As such, the 1985 letter cannot be construed as extending

any rights related to the impugned mark.

17.77 Crocodile International also placed reliance on several

correspondences to establish that Lacoste acknowledged the 1985

letter as an extension of the 1983 Agreement. However, these

documents were rightly deemed to be inadmissible due to the absence

of originals and secondary evidence, and upon closer scrutiny, they

fail to demonstrate that the 1983 Agreement was extended to India via

RFA(OS)(COMM) 18/2024 and other connected matter Page 75 of 97

the 1985 communication. Moreover, the correspondence did not

substantiate that the 1985 communication concerned the impugned

device mark. Even the alleged acknowledgment by Lacoste remains

ambiguous and unsubstantiated.

17.78 In light of the foregoing discussion, neither the 1983

Agreement, the 1985 letter, nor the documentary evidence on record

establishes that Lacoste granted either explicit or implicit permission

to Crocodile International for the use the impugned mark in India.

17.79 In conclusion, while the 1983 Agreement is binding between

the parties, its scope is limited to the five countries explicitly

mentioned in Article I and does not extend to India. The 1985 letter

fails to demonstrate an extension of the 1983 Agreement to India, and

it does not pertain to the impugned mark. Accordingly, the 1983

Agreement and the 1985 letter do not entitle Crocodile International

to use the impugned mark in India. Lacoste is not bound by the 1985

letter and retains the right to object to Crocodile International’s use of

the impugned mark in India. The evidence on record supports

Lacoste’s claim that they only consented to the use of the saurian

device by Crocodile International when accompanied by the word

mark “CROCODILE”. As such, Crocodile International is not entitled

to use the impugned mark in India. This issue is decided in favour of

the plaintiffs and against the defendants.

Issue No. 3: Whether the use of the impugned mark by Crocodile

International in India amounts to infringement of trademark rights

of Lacoste?

RFA(OS)(COMM) 18/2024 and other connected matter Page 76 of 97

17.80 Section 2(h) of the TM Act defines a “deceptively similar” mark

as one which “so nearly resembles that other mark as to be likely to

deceive or cause confusion”. Such marks are not entitled to protection

under the Act, as specified in Section 9(2)(a)

27

. Section 28 of the Act

vests exclusive rights in the proprietor of a registered trademark,

including the right to seek relief in cases of infringement.

17.81 Under Section 29 of the Act, only registered trademarks are

protected against infringement. It is pertinent to note that innocence is

not a valid defence under this provision. Section 30 of the Act lays

down certain exceptions to the provisions of Section 29, as follows:

“29. Infringement of registered trade marks.—

***

(2) A registered trade mark is infringed by a person who, not being

a registered proprietor or a person using by way of permitted use,

uses in the course of trade, a mark which because of—

(a) its identity with the registered trade mark and the similarity of

the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or

similarity of the goods or services covered by such registered

trade mark; or

(c) its identity with the registered trade mark and the identity of the

goods or services covered by such registered trade mark,

is likely to cause confusion on the part of the public, or which is

likely to have an association with the registered trade mark….

***

30. Limits on effect of registered trade mark.—

(1) Nothing in section 29 shall be construed as preventing the use

of a registered trade mark by any person for the purposes of

27

“9. Absolute grounds for refusal of registration.— (1) The trade marks—

***

(2) A mark shall not be registered as a trade mark if— (a) it is of such nature as to deceive the public or

cause confusion;…”

RFA(OS)(COMM) 18/2024 and other connected matter Page 77 of 97

identifying goods or services as those of the proprietor provided

the use—

(a) is in accordance with honest practices in industrial or

commercial matters, and

(b) is not such as to take unfair advantage of or be detrimental to

the distinctive character or repute of the trade mark.

***

(c) the use by a person of a trade mark—

(i) in relation to goods connected in the course of trade with the

proprietor or a registered user of the trade mark if, as to those

goods or a bulk of which they form part, the registered proprietor

or the registered user conforming to the permitted use has applied

the trade mark and has not subsequently removed or obliterated it,

or has at any time expressly or impliedly consented to the use of

the trade mark; or…”

(emphasis supplied)

17.82 Section 135(1) of the Act provides for relief in cases of

infringement, including injunctive relief, damages, an account of

profits and/or the delivery of the infringing goods for destruction.

Section 135(3) outlines certain exceptions to these remedies, as

follows:

“…(3) Notwithstanding anything contained in sub-section (1), the

court shall not grant relief by way of damages (other than nominal

damages) or on account of profits in any case—

(a) where in a suit for infringement of a trade mark, the

infringement complained of is in relation to a certification trade

mark or collective mark;

(b) where in a suit for infringement the defendant satisfies the

court—

(i) that at the time he commenced to use the trade mark complained

of in the suit, he was unaware and had no reasonable ground for

believing that the trade mark of the plaintiff was on the register or

that the plaintiff was a registered user using by way of permitted

use; and

(ii) that when he became aware of the existence and nature of the

plaintiff’s right in the trade mark, he forthwith ceased to use the

trade mark in relation to goods or services in respect of which it

was registered; or

(c) where in a suit for passing off, the defendant satisfies the

court—

RFA(OS)(COMM) 18/2024 and other connected matter Page 78 of 97

(i) that at the time he commenced to use the trade mark complained

of in the suit, he was unaware and had no reasonable ground for

believing that the trade mark for the plaintiff was in use; and

(ii) that when he became aware of the existence and nature of the

plaintiff’s trade mark he forthwith ceased to use the trade mark

complained of.”

17.83 The Supreme Court in Amritdhara Pharmacy v. Satya Deo

Gupta

28

set out the test of “overall similarity” to determine whether

there is a likelihood of confusion amongst consumers. The inquiry

must be conducted from the perspective of an ordinary consumer of

average intelligence and imperfect recollection. It was emphasised

that while undertaking the enquiry to ascertain similarity and

confusion thereof, marks should be assessed in their entirety rather

than just focusing on their differences. This principle was reiterated in

Corn Products Refining Co. v. Shangrila Food Products Ltd

29

.

17.84 Further, the Supreme Court, in the celebrated decision of Parle

Products (P) Ltd. v. J.P. and Co.

30

, had outlined the factors to be

considered when determining infringement in cases of deceptively

similar marks. It emphasized that the broad and essential features of

the rival marks should be evaluated, and the overall similarity between

the marks should be judged to determine whether one could be

mistaken for the other. The relevant excerpt is as follows:

“9. It is, therefore, clear that in order to come to the conclusion

whether one mark is deceptively similar to another, the broad and

essential features of the two are to be considered. They should not

be placed side by side to find out if there are any differences in the

design and if so, whether they are of such character as to prevent

one design from being mistaken for the other. It would be enough

28

1962 SCC OnLine SC 13

29

1959 SCC OnLine SC 11

30

(1972) 1 SCC 618

RFA(OS)(COMM) 18/2024 and other connected matter Page 79 of 97

if the impugned mark bears such an overall similarity to the

registered mark as would be likely to mislead a person usually

dealing with one to accept the other if offered to him. In this case

we find that the packets are practically of the same size, the colour

scheme of the two wrappers is almost the same; the design on both

though not identical bears such a close resemblance that one can

essily be mistaken for the other. The essential features of both are

that there is a girl with one arm raised and carrying something in

the other with a cow or cows near her and hens or chickens in the

foreground. In the background there is a farm house with a fence.

The word “Gluco Biscuits” in one and “Glucose Biscuits” on the

other occupy a prominent place at the top with a good deal of

similarity between the two writings. Anyone in our opinion who

has a look at one of the packets today may easily mistake the

other if shown on another day as being the same article which he

had seen before. If one was not careful enough to note the

peculiar features of the wrapper on the plaintiffs' goods, he might

easily mistake the defendants' wrapper for the plaintiffs' if shown

to him some time after he had seen the plaintiffs'. After all, an

ordinary purchaser is not gifted with the powers of observation of

a Sherlock Homes. We have therefore no doubt that the defendants'

wrapper is deceptively similar to the plaintiffs' which was

registered. We do not think it necessary to refer to the decisions

referred to at the bar as in our view each case will have to be

judged on its own features and it would be of no use to note on how

many points there was similarity and in how many others there was

absence of it.”

(emphasis supplied)

17.85 Similarly, in Cadila Health Care Ltd. v. Cadila

Pharmaceuticals Ltd.

31

, the factors for determining deceptive

similarity were laid down. These include considering the similarity in

the nature of the goods, the class of consumers, and the marks’ visual

and phonetic resemblance. These factors were delineated in paragraph

35 of the said decision, as follows:

“…(a) The nature of the marks i.e. whether the marks are word

marks or label marks or composite marks i.e. both words and label

works.

31

(2001) 5 SCC 73

RFA(OS)(COMM) 18/2024 and other connected matter Page 80 of 97

(b) The degree of resembleness between the marks, phonetically

similar and hence similar in idea.

(c) The nature of the goods in respect of which they are used as

trade marks.

(d) The similarity in the nature, character and performance of the

goods of the rival traders.

(e) The class of purchasers who are likely to buy the goods bearing

the marks they require, on their education and intelligence and a

degree of care they are likely to exercise in purchasing and/or

using the goods.

(f) The mode of purchasing the goods or placing orders for the

goods.

(g) Any other surrounding circumstances which may be relevant in

the extent of dissimilarity between the competing marks.”

(emphasis supplied)

17.86 The Supreme Court in Renaissance Hotel Holdings Inc. v. B.

Vijaya Sai

32

, held that where the marks and the goods/services are

identical, the plaintiff is not required to provide actual proof of the

likelihood of confusion. The legislative scheme under the TM Act

operates on the premise that the mere existence of similarity between

the marks and the goods/services may lead to confusion, thereby

justifying a claim for infringement. The relevant excerpt is as follows:

“48. The legislative scheme is clear that when the mark of the

defendant is identical with the registered trade mark of the plaintiff

and the goods or services covered are similar to the ones covered

by such registered trade mark, it may be necessary to prove that it

is likely to cause confusion on the part of the public, or which is

likely to have an association with the registered trade mark.

Similarly, when the trade mark of the plaintiff is similar to the

registered trade mark of the defendant and the goods or services

covered by such registered trade mark are identical or similar to

the goods or services covered by such registered trade mark, it may

again be necessary to establish that it is likely to cause confusion

on the part of the public. However, when the trade mark of the

defendant is identical with the registered trade mark of the plaintiff

and that the goods or services of the defendant are identical with

the goods or services covered by registered trade mark, the Court

32

(2022) 5 SCC 1

RFA(OS)(COMM) 18/2024 and other connected matter Page 81 of 97

shall presume that it is likely to cause confusion on the part of the

public.

***

52. It could thus be seen that this Court again reiterated that the

question to be asked in an infringement action is as to whether the

defendant is using a mark which is same as, or which is a

colourable imitation of the plaintiff's registered trade mark. It has

further been held that though the get-up of the defendant's goods

may be so different from the plaintiff's goods and the prices may

also be so different that there would be no probability of

deception of the public, nevertheless even in such cases i.e. in an

infringement action, an injunction would be issued as soon as it

is proved that the defendant is improperly using the plaintiff's

mark. It has been reiterated that no case of actual deception nor

any actual damage needs to be proved in such cases. This Court

has further held that though two actions are closely similar in some

respects, in an action for infringement, where the defendant's trade

mark is identical with the plaintiff's trade mark, the Court will not

enquire whether the infringement is such as is likely to deceive or

cause confusion.”

(emphasis supplied)

17.87 Having understood the test for infringement and the principles

laid down in the aforementioned decisions, we now apply these to the

present case.

17.88 The present dispute pertains to the following rival marks:

LACOSTE

CROCODILE

INTERNATIONAL

17.89 In applying the principles laid down in Cadila Health Care Ltd.

(supra), we observe that the nature of the rival marks is fundamentally

RFA(OS)(COMM) 18/2024 and other connected matter Page 82 of 97

the same, i.e., both are device marks. The marks are affixed to identical

or similar classes of goods and target a similar class of consumers.

Furthermore, both crocodiles are depicted in a similar posture,

featuring a curved tail, scales and a wide-open jaw facing towards the

side, with only two limbs visible. As a result, the marks are visually

deceptively similar, particularly from the perspective of the average

consumer, who, due to imperfect recollection, would not discern a

significant difference between the leftward or rightward facing

crocodiles. This substantial level of similarity is likely to cause initial

interest confusion among consumers, which is, in itself, sufficient to

constitute an infringement under Section 29 of the Act. At the cost of

repetition, evidence of actual confusion is not required, and the mere

likelihood of confusion is sufficient to establish infringement.

17.90 We reiterate that innocence is not a valid defence to trademark

infringement under Section 29 of the Act. The key consideration is

whether the plaintiff is a registered proprietor of the mark and whether

the defendant is authorized to use the said mark. In the present case,

Lacoste is the registered proprietor of the standalone saurian device

mark. Crocodile International is neither a registered proprietor of the

impugned mark nor is a permitted user, thereby attracts liability under

Section 29. Further, Crocodile International also does not qualify for

protection under Section 30(2)(c)(i) on account of lack of express or

implied consent to use the impugned mark.

17.91 The fact that the 1983 instrument of co-existence in five other

countries was premised on the understanding that no likelihood of

confusion existed between the rival marks in those countries holds

RFA(OS)(COMM) 18/2024 and other connected matter Page 83 of 97

minimal weight for Crocodile International in the Indian context.

There is no communication or document placed on record that

demonstrates Lacoste’s acknowledgement that there is no likelihood

of confusion between the marks in India.

17.92 In conclusion, given that both marks share stark visual and

conceptual similarities, they are likely to cause confusion among

consumers. Thus, the use of the unregistered impugned mark amounts

to infringement under Section 29 of the Act. As there is no permissive

use under Section 30(2)(c)(i) of the Act, Lacoste is entitled to remedies

under Section 135 of the Act. This issue is therefore decided against

the defendants and in favour of the plaintiffs.

Issue No. 4: Whether the use of the impugned mark by Crocodile

International in India amounts to passing off?

17.93 Passing off is a wider remedy than infringement.

33

An action for

passing off arises when a person misrepresents their goods or services

as those of another. Unlike a statutory infringement action, which

applies to registered marks, passing off is a common law remedy

available for unregistered trademarks, and it allows brands of

international repute to seek relief in jurisdictions where they may not

be registered. A defendant in a passing off claim, may escape liability

if they can demonstrate that they have added certain differentiating

elements which are sufficient to distinguish their goods from that of

33

S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683; Renaissance Hotel Holdings Inc. (supra)

RFA(OS)(COMM) 18/2024 and other connected matter Page 84 of 97

the plaintiff’s.

34

Intent or state of mind of the defendant is irrelevant

to a cause of action for passing off.

35

17.94 Under Section 135(3)(c) of the TM Act, the defendant may

evade liability for passing off if they can prove that: (i) they were

unaware of the plaintiff’s mark at the time of commencing use, and

had no reasonable grounds to believe that the plaintiff’s mark was in

use, and (ii) upon becoming aware of the plaintiff’s mark, they took

adequate steps to distinguish their goods from the plaintiff’s goods.

17.95 In Reckitt & Colman Products Ltd. v. Borden Inc. & Others

36

,

the classic trinity test for passing off was established, which includes:

(i) the existence of goodwill or reputation, (ii) a misrepresentation to

the public that defendants’ goods are associated with the plaintiff’s

goods, and (iii) the plaintiff suffering or being likely to suffer actual

damage due to such misrepresentation. Passing off was thus explained

as a tortious act, aimed at protecting the goodwill associated with a

mark, as follows:

“…The basic underlying principle of such an action was stated in

1842 by Lord Langdale M.R. in Perry v. Truefitt (1842) 6 Beav.

66, 73 to be: “A man is not to sell his own goods under the

pretence that they are the goods of another man ….” Accordingly,

a misrepresentation achieving such a result is actionable because

it constitutes an invasion of proprietary rights vested in the

plaintiff. However, it is a prerequisite of any successful passing

off action that the plaintiff's goods have acquired a reputation in

the market and are known by some distinguishing feature. It is also

a prerequisite that the misrepresentation has deceived or is likely

to deceive and that the plaintiff is likely to suffer damage by such

deception. Mere confusion which does not lead to a sale is not

34

Renaissance Hotel Holdings Inc. (supra)

35

Wockhardt Ltd. v. Torrent Pharmaceuticals Ltd., (2018) 18 SCC 346

36

[1990] 1 WLR 491

RFA(OS)(COMM) 18/2024 and other connected matter Page 85 of 97

sufficient. Thus, if a customer asks for a tin of black shoe polish

without specifying any brand and is offered the product of A which

he mistakenly believes to be that of B, he may be confused as to

what he has got but he has not been deceived into getting it.

Misrepresentation has played no part in his purchase.”

17.96 In Laxmikant V. Patel v. Chetanbhai Shah

37

, the Supreme

court further elaborated on the concept of passing off. It was held that

the essential elements of a passing off action are the establishment of

goodwill, misrepresentation, and damage or likelihood of damage to

the plaintiff’s goodwill, as follows:

“7. Though there is overwhelming documentary evidence filed by

the plaintiff in support of his plea that he has been carrying on his

business in the name and style of Muktajivan Colour Lab since

long we would, for the purpose of this appeal, proceed on the

finding of fact arrived at by the trial court and not dislodged by the

High Court, also not seriously disputed before this Court that the

plaintiff has been doing so at least since 1995. Without entering

into controversy whether the defendants had already started using

the word “Muktajivan” as a part of their trade name on the date

of the institution of the suit we would assume that such business of

the defendants had come into existence on or a little before the

institution of the suit as contended by the defendants. The principal

issue determinative of the grant of temporary injunction would

be whether the business of the plaintiff run in a trade name of

which “Muktajivan” is a part had come into existence prior to

commencement of its user by the defendants and whether it had

acquired a goodwill creating a property in the plaintiff so as to

restrain the use of the word Muktajivan in the business name of a

similar trade by a competitor i.e. the defendants.

***

13. In an action for passing-off it is usual, rather essential, to seek

an injunction, temporary or ad interim. The principles for the grant

of such injunction are the same as in the case of any other action

against injury complained of. The plaintiff must prove a prima

facie case, availability of balance of convenience in his favour

and his suffering an irreparable injury in the absence of grant of

injunction. According to Kerly (ibid, para 16.16) passing-off cases

are often cases of deliberate and intentional misrepresentation, but

37

(2002) 3 SCC 65

RFA(OS)(COMM) 18/2024 and other connected matter Page 86 of 97

it is well settled that fraud is not a necessary element of the right

of action, and the absence of an intention to deceive is not a

defence, though proof of fraudulent intention may materially assist

a plaintiff in establishing probability of deception. Christopher

Wadlow in Law of Passing-Off (1995 Edn., at p. 3.06) states that

the plaintiff does not have to prove actual damage in order to

succeed in an action for passing-off. Likelihood of damage is

sufficient....”

(emphasis added)

17.97 Similarly, in Toyota Jidosha Kabushiki Kaisha (supra), the

Court emphasized that the likelihood of confusion is a key factor in

determining whether an action for passing off can be made out. The

plaintiff must demonstrate substantial goodwill in the territory where

the action is sought. If such goodwill is not established, further

examination is unnecessary.

17.98 Adverting to the facts of the present case, Lacoste provided both

documentary and oral evidence to establish its goodwill and reputation

in India. The following evidence was presented:

(i) Ex. PW 1/15 – Electronic evidence of advertisements and

articles in magazines and newspapers was rightly deemed

inadmissible due to the lack of a certificate under Section

65B of IEA, as per the principles laid down in Arjun

Panditrao Khotkar v. Kailash Kushanrao Gorantyal

38

.

Additionally, there were no witnesses to provide the

necessary foundational evidence for such records and

maintenance of the device concerned

39

.

38

(2020) 7 SCC 1

39

65B. Admissibility of electronic records. –– (1) Notwithstanding anything contained in this Act, any

information contained in an electronic record which is printed on a paper, stored, recorded or copied in optical

or magnetic media produced by a computer (hereinafter referred to as the computer output) shall be deemed

to be also a document, if the conditions mentioned in this section are satisfied in relation to the information

RFA(OS)(COMM) 18/2024 and other connected matter Page 87 of 97

(ii) Ex. PW 1/16 – The Survey Report was rejected for two

reasons: (a) it pertained to 2004, whereas reputation

needed to be shown as of 1998, and (b) it lacked

information regarding the methodology, sample size, and

other relevant details.

(iii) Ex. PW 2/5 – The CA certificate was held to be

inadmissible because it lacked the accompanying invoices,

documents, ledgers etc., hence, the same were not verified

or cross-examined and because the concerned CA was also

not summoned. Instead, the plaintiffs attempted to prove

the authenticity through PW2, who is admittedly not a CA.

17.99 Hence, following the principles laid down in Laxmikat V

(supra), to sustain a passing off claim, Lacoste was required to

establish goodwill or reputation in India prior to and at the time of

commencement Crocodile International’s use of the impugned mark

in 1998.

17.100 The learned Single Judge rejected Lacoste’s claim for

passing off, primarily due to the failure to prove, with admissible and

and computer in question and shall be admissible in any proceedings, without further proof or production of

the original, as evidence or any contents of the original or of any fact stated therein of which direct evidence

would be admissible.

(2) The conditions referred to in sub-section (1) in respect of a computer output shall be the following,

namely: –– (a) the computer output containing the information was produced by the computer during the

period over which the computer was used regularly to store or process information for the purposes of any

activities regularly carried on over that period by the person having lawful control over the use of the

computer;

(b) during the said period, information of the kind contained in the electronic record or of the kind from which

the information so contained is derived was regularly fed into the computer in the ordinary course of the said

activities;

(c) throughout the material part of the said period, the computer was operating properly or, if not, then in

respect of any period in which it was not operating properly or was out of operation during that part of the

period, was not such as to affect the electronic record or the accuracy of its contents; and

(d) the information contained in the electronic record reproduces or is derived from such information fed into

the computer in the ordinary course of the said activities.

RFA(OS)(COMM) 18/2024 and other connected matter Page 88 of 97

reliable evidence, that Lacoste had substantial reputation or goodwill

in India as of 1998.

17.101 The learned Single Judge held that press articles,

advertisements, photos, and the survey report were produced as

electronic records without the mandatory certificate required under

Section 65B of IEA, therefore, rendering them inadmissible and

ineffective.

17.102 Regarding the survey report (Ex. PW1/16), it was held

that it reflected public perception in 2004, whereas Lacoste was

required to establish its reputation as of 1998. Additionally, the CA

certificate pertaining to turnover and advertising was treated as

insufficient because it lacked the necessary supporting documents, and

the CA was not made available for examination or cross-examination.

17.103 Lacoste contended that requiring the CA certificate to be

supported by all the underlying documents would defeat its purpose.

However, the learned Single Judge rightfully held that the Supreme

Court, in CBI v. V.C. Shukla

40

, had affirmed that such documents

must be corroborated to be considered credible evidence. It was held

that “even correct and authentic entries in books of account cannot

without independent evidence of their trustworthiness, fix a liability

upon a person”.

17.104 Furthermore, the learned Single Judge rightly observed

that, at the final stage of trial, the evidence must be scrutinized more

40

(1998) 3 SCC 410

RFA(OS)(COMM) 18/2024 and other connected matter Page 89 of 97

rigorously, as it directly impacts the final determination of the rights

and liabilities of the parties. The court cannot rely solely on prima

facie evidence at the final stage but must ensure that evidence

complies with relevant procedural laws.

17.105 This Court concurs with the learned Single Judge’s

finding regarding the issue of passing off. Since the evidence

presented by Lacoste relating to goodwill and reputation was found

inadmissible, the Court does not need to examine the other elements

of passing off, as per the decision in S. Syed Mohideen (supra).

17.106 Therefore, it is held that Lacoste has failed to establish a

case for passing off.

17.107 This issue is decided in favour of the defendants and

against the plaintiffs.

Issue No. 5: Whether the suit suffers from acquiescence on behalf

of Lacoste?

17.108 Acquiescence is a form of estoppel, rooted in equity and

law of evidence. It involves a positive act or deliberate inaction, where

a party, with knowledge of infringement, fails to take action within a

reasonable period. Acquiescence requires that the party actively sits

on their rights, rather than simply remaining silent or passive. Section

33 of the TM Act delineates the effect of acquiescence in the context

of trademark law as follows:

RFA(OS)(COMM) 18/2024 and other connected matter Page 90 of 97

“33. Effect of acquiescence.—

(1) Where the proprietor of an earlier trade mark has acquiesced

for a continuous period of five years in the use of a registered trade

mark, being aware of that use, he shall no longer be entitled on the

basis of that earlier trade mark—

(a) to apply for a declaration that the registration of the later trade

mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods

or services in relation to which it has been so used, unless the

registration of the later trade mark was not applied in good faith.

(2) Where sub-section (1) applies, the proprietor of the later trade

mark is not entitled to oppose the use of the earlier trade mark, or

as the case may be, the exploitation of the earlier right,

notwithstanding that the earlier trade mark may no longer be

invoked against his later trade mark.”

17.109 In Amritdhara Pharmacy (supra), the Supreme Court

referred to Halsbury’s Laws (Vol. 32) in its discussion of

acquiescence, highlighting that a person who, with knowledge of

infringement, refrains from acting, may be precluded from asserting

their rights. The Court observed the following:

“13. …The matter has been put thus in Halsbury's Laws of

England, Vol. 32, 2nd Edition) p. 656-57, para 966.

“‘If a trader allows another person who is acting in good faith to

build up a reputation under a trade name or mark to which he

has rights, he may lose his right to complain, and may even be

debarred from himself using such name or mark. But even long

user by another, if fraudulent, does not affect the plaintiff's right to

a final injunction; on the other hand prompt warning or action

before the defendant has built up any goodwill may materially

assist the plaintiff's case.”

(emphasis supplied)

17.110 This Court concurs with the learned Single Judge’s

findings on the issue to acquiescence. Crocodile International argued

that they had openly advertised the use of the impugned mark in India

RFA(OS)(COMM) 18/2024 and other connected matter Page 91 of 97

since 1997, while, Lacoste allegedly became aware of the use in 1999,

according to the plaint.

17.111 Although acquiescence can, in certain cases, undermine

the right of a party to seek relief

41

, the defendants have not presented

sufficient evidence to established that Lacoste, with knowledge of the

alleged infringement, remained passive or tacitly consented to the

Crocodile International’s use of the impugned mark. The purported

three-year delay in initiating the suit does not, in this instance,

prejudice the defendants, as no detriment has been proved to have

occurred during this period. As a result, this issue is decided in favour

of the plaintiffs and against the defendants.

Issue No. 6: Whether the learned Single Judge erred in granting

rendition of accounts to Lacoste?

17.112 It is well established under Indian law that a decree for

the rendition of accounts may only be granted where the plaintiff is

legally entitled to seek such relief. This entitlement can arise in the

following contexts: (i) by virtue of statute, (ii) based on fiduciary

relationship between the parties, or (iii) in equity, where the

relationship between the parties necessitates the granting of accounts

to assert the legal right

42

of the plaintiff effectively.

17.113 The right to seek rendition of accounts, therefore, may

either be statutory, arise from the nature of relationship between the

41

Chairman, State Bank of India v. MJ James, 2021 SCC OnLine SC 1061

42

K.C. Skaria v. Govt. of State of Kerala (2006) 2 SCC 285

RFA(OS)(COMM) 18/2024 and other connected matter Page 92 of 97

parties, or be granted in equity where other forms of relief would be

inadequate.

17.114 In the present case, following the finding of trademark

infringement, the learned Single Judge directed Crocodile

International to render an account of the profits derived from the sale

of goods bearing the impugned mark. This direction is consistent with

the provisions of Section 135(1) of the TM Act which allows the

plaintiffs to seek relief, including the accounting of profits, following

an infringement of their trademark rights. For the convenience,

Section 135 is reproduced as follows:

“135. Relief in suits for infringement or for passing off.—

…(3) Notwithstanding anything contained in sub-section (1), the

court shall not grant relief by way of damages (other than nominal

damages) or on account of profits in any case—

(a) where in a suit for infringement of a trade mark, the

infringement complained of is in relation to a certification trade

mark or collective mark; or

(b) where in a suit for infringement the defendant satisfies the

court—

(i) that at the time he commenced to use the trade mark complained

of in the suit, he was unaware and had no reasonable ground for

believing that the trade mark of the plaintiff was on the register or

that the plaintiff was a registered user using by way of permitted

use; and

(ii) that when he became aware of the existence and nature of the

plaintiff’s right in the trade mark, he forthwith ceased to use the

trade mark in relation to goods or services in respect of which it

was registered;…”

17.115 It is important to note that Section 135(3) of the Act

provides certain exceptions to the obligation to account for profits or

damages. However, these exceptions are not applicable in the present

case as Lacoste is the registered proprietor of the trademark, and

Crocodile International is using a deceptively similar and unregistered

RFA(OS)(COMM) 18/2024 and other connected matter Page 93 of 97

mark, hence, a clear case of infringement is made out. Therefore, a

remedy is necessary to provide adequate redress for the infringement

of its rights; as per Section 135, Lacoste is entitled to an account of

profits.

17.116 Crocodile International contended that no fiduciary

relationship existed between the parties, which would warrant the

rendition of accounts. However, Section 135 of the Act does not

require a fiduciary relationship to grant such relief. The only criterion

to be satisfied in order to grant an account of profits is a finding that

the defendant is infringing the plaintiff’s registered trademark. The

plaintiff is then entitled to the proceeds generated from the commercial

use of the infringing mark, regardless of whether a fiduciary

relationship exists between the parties.

17.117 In the light of the above, we find no error in the learned

Single Judge’s decision to grant an account of profits to Lacoste.

Section 135 of the TM Act, when applied to the facts of this case,

justifies the aforesaid relief. Accordingly, this issue is decided in

favour of the plaintiffs and against the defendants.

Issue No. 7: Whether the learned Single Judge erred in awarding

costs to Lacoste?

17.118 In relation to the award of costs, Crocodile International

contended that the eleven-year delay in the proceedings was primarily

due to Lacoste, and therefore, the imposition of costs on them was not

justified. Crocodile International relied on Section 35(3)(a) of CPC, as

amended by the Commercial Courts Act, 2015. In contrast, Lacoste

RFA(OS)(COMM) 18/2024 and other connected matter Page 94 of 97

emphasized Section 35(2) of the CPC, which grants courts discretion

in awarding costs.

17.119 Section 35 of the CPC vests discretionary powers in the

courts with respect to the imposition of costs in commercial disputes.

It grants the court the authority to decide whether costs should be

awarded as well as the quantum of such costs. The general rule,

however, is that the unsuccessful party shall be ordered to pay the costs

of the successful party, unless the court records reasons for deviation.

In exercising this discretion, the court may consider several factors,

including: (i) the conduct of the parties during the proceedings, (ii)

whether a party has made frivolous counterclaims that have delayed

the resolution of the case, (iii) whether vexatious proceedings have

been instituted, or (iv) whether the party’s actions have unnecessarily

consumed the court’s time.

17.120 Additionally, Chapter XXIII of the Delhi High Court

(Original Side) Rules, 2018 provides guidelines for the imposition of

costs, particularly Rules 1 and 2, which lay down the principles that

courts should consider whilst determining costs. The relevant Rules

are reproduced below:

“1. Power of Court/ Registrar General/ Registrar to impose cost.-

(i) If the Court considers any party abusing the process of Court

or in any manner considered dilatory, vexatious, mala fide and

abuse of process by them, the Court shall require the delinquent

party to make deposit / payment upfront, in the manner directed by

Court of such costs as the Court deems appropriate, before

proceeding further in the matter. For the purpose of this Chapter,

the expression ―Court‖ shall mean and include the Court, the

Registrar General and the Registrar, as the case may be. (ii) In

addition to exercise of powers under Rule 1(i) above, the Court

RFA(OS)(COMM) 18/2024 and other connected matter Page 95 of 97

may impose suitable costs upon any party at any stage of the

proceedings, including at the stage of filing any interlocutory

application; framing of issues; determining order and conduct of

recording evidence etc., if it considers imposition of such costs just,

necessary and proper, according to the proceedings in the matter.

(iii) While determining costs, the Court may also take into

consideration factors, such as, inconvenience caused to parties/

witnesses/ other persons connected with the proceedings; previous

conduct of parties; the stage at which the offending conduct is

committed by the delinquent party; the probability and likelihood

of success of vexatious efforts of the delinquent party; the

relevancy of number and nature of witnesses; questions (including

depositions by way of examination-in-chief) put to the witnesses

and such other conduct as the Court considers inappropriate. (iv)

Failure of the said party in making payment/ deposit of costs may

result in all consequences provided in the Code for defaults and

adverse orders being passed against the said party, as the Court

deems appropriate and proper, besides enabling the other party to

file execution proceedings against the delinquent party for

recovery of said costs.

2. Imposition of actual costs.- In addition to imposition of costs,

as provided in Rule 1 of this Chapter, the Court shall award costs

guided by and upto actual costs as borne by the parties, even if the

same has not been quantified by parties, at the time of decreeing

or dismissing the suit. In this behalf the Court will take into

consideration all relevant factors including (but not restricted) the

actual fees paid to the Advocates/ Senior Advocates; actual

expenses for publication, citation etc.; actual costs incurred in

prosecution and conduct of suit including but not limited to costs

and expenses incurred for attending proceedings, procuring

attendance of witnesses, experts etc.; execution of commissions;

and all other legitimate expenses incurred by the party, which the

Court orders to be paid to any party. In addition to imposition of

costs as above, the Court may also pass a decree for costs as

provided in Sections 35-A and 35-B of the Code or under any

applicable law.”

17.121 In view of the aforementioned Rules and the specific

facts of this case, this Court notes that: (i) the suit was partly decreed

in favour of the defendants, and (ii) There was an eleven-year delay in

examining a key witness by Lacoste. Given these circumstances, this

RFA(OS)(COMM) 18/2024 and other connected matter Page 96 of 97

Court is of the opinion that it would not be justifiable for the

defendants to bear the entirety of the costs. Accordingly, the Court

deems it appropriate to set aside the findings of the learned Single

Judge concerning the imposition of costs. Therefore, this issue is

decided in favour of the defendants and against the plaintiffs.

CONCLUSION AND RELIEF

18. In light of the foregoing discussion, this Court is satisfied that

the plaintiffs have established infringement of their trademark “

” and copyright in “ ”. However, the plaintiffs’

claim for passing off is not maintainable due to their failure to

establish goodwill, as discussed earlier.

19. Having regard to the preceding findings, this Court upholds the

decree for a permanent injunction in favour of the plaintiffs and

against the defendants with respect to the trademark infringement.

20. This Court further finds that there is no acquiescence on the part

of the plaintiffs that would disentitle them form seeking relief.

21. Issue No. 1 pertaining to copyright infringement, the Court rules

in favour of the plaintiffs and against the defendants.

22. Since, the plaintiffs only prayed for permanent injunction with

respect to copyright infringement, a decree of permanent injunction is

granted in favour of the plaintiffs and against the defendants.

RFA(OS)(COMM) 18/2024 and other connected matter Page 97 of 97

23. Accordingly, the impugned judgment dated 14.08.2024 passed

in CS (Comm) No. 1550 of 2016 is modified in the terms outlined

hereinabove.

24. The appeals are partly allowed in the above terms.

25. All pending applications, if any, stand disposed of. No order is

made as to costs.

OM PRAKASH SHUKLA, J .

C.HARI SHANKAR, J.

MARCH 09, 2026/gunn/ss/at