LACOSTE & ANR. vs CROCODILE INTERNATIONAL PTE LTD. & ANR.

2024-08-14 Information

* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 31st July, 2024
Pronounced on: 14th August, 2024
+ CS(COMM) 1550/2016
LACOSTE & ANR. ….. Plaintiffs
Through: Mr. Chander M. Lall, Senior Advocate with Ms. Nancy Roy, Ms. Prakriti Varshney, Mr. Prashant, Mr. Raghav Malik and Mr. Abhinav Bhalla, Advocates.
versus

CROCODILE INTERNATIONAL PTE LTD & ANR. …. Defendants
Through: Mr. Pravin Anand, Mr. Saif Khan, Mr. Shobhit Agrawal and Mr. Prajjwal Kushwaha, Advocates.

CORAM:
HONBLE MR. JUSTICE SANJEEV NARULA

J U D G M E N T

CONTENTS

THE CONTROVERSY 4
LACOSTES CASE IN BRIEF 5
OVERVIEW OF CROCODILE INTERNATIONALS DEFENCE 9
PROCEDURAL ORDERS AND FACTS OF SIGNIFICANCE 15
I. CASE MANAGEMENT PROCEEDINGS.15 II. ISSUES ………………….. 16
III. THE CONDUCT OF TRIAL….. 16

ISSUE-WISE ANALYSIS AND FINDINGS 19
ISSUE NO. 5 – WHETHER THIS COURT DOES NOT HAVE TERRITORIAL JURISDICTION TO ENTERTAIN AND TRY THE PRESENT SUIT? 19

ISSUE NO. 1 – WHETHER THE PLAINTIFF IS THE OWNER OF THE COPYRIGHT IN THE CROCODILE DEVICE? 22

ISSUE NO. 2 – WHETHER THE PLAINTIFF IS THE PROPRIETOR OF THE CROCODILE DEVICE IN INDIA BY VIRTUE OF REGISTRATIONS AND USE? 24

ISSUE NO. 10- WHETHER THE FIRST DEFENDANT IS THE PRIOR ADOPTER AND USER OF THE SAURIAN DEVICE AND THE OWNER OF TRADE MARK RIGHTS IN THE SAME 26

ISSUE NO. 4 – WHETHER THE DEFENDANT IS ENTITLED TO USE THE CROCODILE DEVICE ATTACHED AS ANNEXURE A TO THE PLAINT IN INDIA BY VIRTUE OF AN AGREEMENT DATED JUNE 17, 1983 BETWEEN THE PARTIES 31

ISSUE NO. 11 (REWORDED) – WHETHER THE FIRST PLAINTIFF AND THE FIRST DEFENDANT SIGNED AND ENTERED INTO CO-EXISTENCE AGREEMENTS DATED 17TH JUNE, 1983 AND 22ND AUGUST, 1985 FOR RESPECTIVE TERRITORIES? IF SO, WHETHER SUCH CO-EXISTENCE EXTENDS TO ANNEXURE-A DEVICE IN INDIA? 32
ISSUE NO. 8- WHETHER THE USE OF CROCODILE DEVICE ATTACHED AS ANNEXURE A TO THE PLAINT BY THE DEFENDANT VIOLATES THE PLAINTIFFS COPYRIGHT AND TRADE MARK RIGHTS IN INDIA? 32
I. SIMILARITY BETWEEN THE TWO TRADEMARKS…33
I.I. JUDICIAL PRECEDENTS CITED BY CROCODILE INTERNATIONAL...39

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

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

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

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

V. CONCLUSION ON VIOLATION OF TRADEMARK RIGHTS.87
V.I. INFRINGEMENT...87
V.II. ASSESSING THE ALLEGATIONS OF PASSING OFF.….88
V.II.I. GOODWILL AND REPUTATION OF LACOSTE…………….91

VI. COPYRIGHT VIOLATION...104

FINDINGS ON ISSUES NO. 4,11 AND 8107

ISSUE NO. 6- WHETHER THE PLAINTIFFS ARE NOT ENTITLED TO ANY RELIEF AS THEY ARE GUILTY OF CONCEALING (SIC) VITAL FACTS AND DOCUMENTS? 108
ISSUE NO. 3- WHETHER THE SUIT SUFFERS FROM GROSS AND UNEXPLAINED DELAY AND IS HIT BY LACHES AND ACQUIESCENCE? 109
ISSUE NO. 7- WHETHER THE PLAINT IS LIABLE TO BE DISMISSED ON ACCOUNT OF IT BEING FICTITIOUS WITH AN INTENTION OF THWARTING THE LEGITIMATE BUSINESS OF THE DEFENDANT? 111
ISSUE NO. 9-WHETHER THE DEFENDANT IS LIABLE TO BE PROSECUTED AND NON-SUITED ON ACCOUNT OF USE OF THE SYMBOL ® WITH A VIEW TO MISREPRESENT THE MEMBERS OF THE TRADE AND PUBLIC THAT THE CROCODILE DEVICE IS A REGISTERED TRADE MARK IN INDIA? 112
RELIEF 113

SANJEEV NARULA, J.
1. In the competitive world of fashion, where symbols adorning our garments carry a unique allure, often conveying affluence, this Court is faced with a battle over iconic emblems that have transcended mere branding to become symbols of style and social standing. In this milieu, the critical question is whether there is space for two crocodiles, or does the presence of one spell trouble for the other?
THE CONTROVERSY
2. Lacoste, Plaintiff No. 1, and their licensee in India, Sports and Leisure Apparel Ltd. [Plaintiff No. 2],1 have initiated this lawsuit to protect their copyright and trademark rights in the device of a crocodile or a saurian ,2 affixed on the clothing articles sold by them around the world, including in India. The parties have historically been engaged in legal tussles over their emblems in many jurisdictions. In the Indian territory, Lacoste seeks to restrain the Defendants Crocodile International Pte Ltd., and their Indian counterpart, Crocodile Products Pvt. Ltd.,3 from utilizing a similar saurian device , appended as Annexure-A to the plaint,4 on the apparels produced by them, alleging it to be a mirror image of Lacostes registered trademark. In contrast, Crocodile International maintains that Lacoste is breaching a previously agreed upon understanding regarding peaceful co-existence in the Asian countries, arguing for its extension to the Indian territory. Navigating through the complexities of trademark law in the backdrop of parties prior agreements, this judgment aims to discern whether these reptilian depictions on apparel are coincidental or a deliberate imitation by Crocodile International.
3. To contextualize the forthcoming narration of the dispute and subsequent findings, a comparison of the two conflicting saurian devices is illustrated below:

Plaintiffs mark
Defendants mark

LACOSTES CASE IN BRIEF

4. The facts of the case, as presented by Lacoste, are as follows:
4.1. Plaintiff No. 1-company is internationally acclaimed for their clothing articles adorned with the mark/ logo LACOSTE and a crocodile device. The company was founded by the renowned tennis player, Mr. Jean René Lacoste, famously regarded as Le Crocodile for his victories at various national and international tennis championships between 1925 to 1928. In this time, Mr. Lacoste ventured into manufacturing of knitted shirts tailored for tennis and other sports players by partnering with Louis Emile André Gillier in 1931. The shirts manufactured by René Lacoste & André Gillier were called Chemise Lacoste, and featured an embodied crocodile symbol on the front, which was crafted by Mr. Robert George and was first introduced in France in 1927. The first trademark filing in Troyes, France for this crocodile device dates back to 27th April, 1933 (under registration No. 207916). Similarly, the marks LACOSTE and CHEMISE LACOSTE were registered on 22nd June, 1933 and 19th July, 1935 under registrations No. 287668 and 302681, respectively.
4.2. In India, the copyright in the artwork of crocodile device remains with Plaintiff No. 1. During the continuance of the instant proceedings, the artistic work was registered in favour of Plaintiff No. 1 under No. 62692/2002, bolstering their rights in India under the provisions of the Copyright Act, 1957 and the Copyright (Amendment) Act, 1994. This ownership grants Plaintiff No. 1 the exclusive authority to reproduce the crocodile device in any material form and seek redressal against infringement of their copyright.
4.3. Plaintiff No. 1 is also the registered proprietor of the crocodile device and its formative variant in class 25, as detailed below:
Trademark and No.
Application Date
Goods
User claimed

Under No.: 400265
19.01.1983
Clothing, including boots, shoes, and slippers
Proposed to be used

Under No.: 400267
19.01.1983
Clothing, including boots, shoes, and slippers
Proposed to be used

4.4. By virtue of the above registrations, Plaintiff No. 1 possesses the exclusive statutory rights to use afore-noted trademarks in connection with the goods for which they are registered. These trademarks have been in extensive and open use in India since October 1993 through Plaintiff No. 2, and are now exclusively linked with the Plaintiffs. To substantiate this assertion, the plaint sets out the annual sales figures and promotional expenditures for the products bearing the LACOSTE mark and crocodile device, since 1993.
4.5. Defendant No. 1, operating under the name Crocodile International Pte Ltd., is a company based in Singapore. Defendant No. 2 is a joint venture associated with Defendant No. 1. Defendant No. 1 holds registrations for marks entailing the word Crocodile along with a corresponding device. The Defendants commenced use of the said device in India sometime during the two years preceding the initiation of this suit (in 2001). More recently, they have introduced the Annexure-A device , which bears a deceptive and confusing similarity to Lacostes previously registered and utilized . This recent adoption of a similar crocodile device by Crocodile International forms the crux of the present lawsuit. The impugned mark, which is affixed on pockets of shirts and t-shirts without the brand name Crocodile, mirrors the manner in which Lacoste uses their registered device, thus heightening the risk of consumer confusion.
4.6. Crocodile International has further complicated the matter by using the symbol ® alongside the Annexure-A device, despite lack of its independent registration, which constitutes misrepresentation. On 13th December, 1999, Plaintiff No. 1 formally requested Crocodile International to cease using the Annexure-A device in India in order to mitigate market confusion, which yielded no response. As the infringing activities continued, Plaintiff No. 1 addressed communications on 23rd January, 2001 and 06th March, 2001 to Defendant No. 1. However, Defendant No. 1 refused Plaintiff No. 1s request, citing a Co-Existence Agreement dated 17th June, 1983.5 According to Lacoste, this Agreement, whereunder Plaintiff No. 1 and Defendant No. 1 agreed to concurrent usage of certain trademarks in various territories, does not extend to India. Moreover, the 1983 Agreement does not authorize Defendant No. 1 to use the device without the word/ mark CROCODILE. In contrast, the Agreement permits the use of crocodile device by Plaintiff No. 1. Significantly, on 22nd August, 1985, Defendant No. 1 themselves furnished a letter consenting to the registration and use of crocodile device/ by Plaintiff No. 1 in India.6 This underscores Crocodile Internationals apparent disregard for Lacostes intellectual property rights, thereby compelling the initiation of this legal action seeking a permanent injunction, restraining Crocodile International from further use of device. This device is alleged to be deceptively and confusingly similar to Lacostes registered device, thus constituting an infringement and passing off of the Plaintiffs registered trademarks. In addition to the injunctive relief, Lacoste also requests for ancillary reliefs, including an order for Crocodile International to provide access to their financial accounts for assessment of damages.

OVERVIEW OF CROCODILE INTERNATIONALS DEFENCE

5. The version of facts elucidated by Crocodile International is as follows:
5.1. The CROCODILE trademark was originally devised, created, and adopted by Dato Dr. Tan Hian Tsin,7 the founder of Defendant No. 1, in 1947 in Singapore. Since their inception in the same year, Defendant No. 1 has continuously and extensively used both the CROCODILE word and device marks, and is now an internationally renowned company, recognized for their superior quality products under the mark/ name CROCODILE. Defendant No. 1 has utilized the CROCODILE trademark and crocodile device, sometimes accompanied by other words or devices, across a diverse range of products, including articles of clothing, accessories, sports equipment, eyewear, travel ware, and timepieces.
5.2. The CROCODILE trademark was first registered in Singapore in 1949, followed by registrations in several other countries, such as Malaysia, Indonesia, Japan, Korea, and India. In India, the trademark was registered by Dr. Tan on 12th June, 1952 under No. 154397 in class 25 for shirts and singlets. This registration was subsequently assigned by Dr. Tan to Defendant No. 1 on 15th September, 1983. On 21st November, 1990, Defendant No. 1 applied for registration of the device in class 25 under No. 540315 in respect of articles of clothing.
5.3. Defendant No. 1 executed a Technical Collaboration Agreement with one K.L. Narayansa and Associates (predecessors of Defendant No. 2) for commercial launch of products bearing the mark CROCODILE and the associated device. Consequently, Defendant No. 2 was incorporated on 21st April, 1994. Crocodile Internationals products were introduced in Southern India in August 1998 by inaugurating showrooms styled as Crocodile Galleries, following extensive advertisements through different media channels. These advertisements commenced in April, 1997, when Crocodile International issued a caution notice in newspapers that depicted the CROCODILE mark and device. Gradually, Defendant No. 2 expanded their business presence to other regions in the country. By virtue of their registration, extensive, long-standing, and uninterrupted use, coupled with significant investments in advertising and promotions, Crocodile International has acquired absolute and exclusive rights to the CROCODILE mark and device, particularly the Annexure-A device.
5.4. Historically, Lacoste and Crocodile International have operated within their respective territories. However, when Plaintiff No. 1 attempted to expand their market presence into Asian countries, they encountered the established domain of Defendant No. 1. In 1971, upon initiating business operations in Japan, Plaintiff No. 1 faced legal action from Defendant No. 1, who challenged their use of the mark before the District Court of Osaka, Japan. In the said proceedings, Plaintiff No. 1 argued that their mark, which includes both a crocodile device and the word LACOSTE, was distinct and easily distinguishable, emphasizing that LACOSTE had no conceptual link to a crocodile. The Court ruled in favour of Plaintiff No. 1 and concluded that there was no possibility of confusion or deception between the marks. Consequently, Defendant No. 1s claim was dismissed.
5.5. On 16th July, 1980, Defendant No. 1, through their attorneys, issued a cease-and-desist notice to Plaintiff No. 1s licensee, Royal Sporting House, demanding that they must discontinue the use of their crocodile device in Singapore. In response, the licensee, acting for Plaintiff No. 1, engaged in negotiations with Defendant No. 1 and proposed a financial settlement to resolve the legal disputes over the use of the crocodile device mark by them. This initial engagement led to further correspondence, where on 21st January, 1983, Plaintiff No. 1 sent a letter to Dr. Tan, enclosing a draft financial settlement proposal for commercial co-existence of both parties trademarks. This was met with a response from Defendant No. 1s licensee, who included representations of their existing CROCODILE trademarks, which includes the Annexure-A device. These exchanges facilitated extensive negotiations, ultimately culminating in the 1983 Agreement signed by both parties on 17th June, 1983.
5.6. The 1983 Agreement was intended to avoid further legal disputes and foster an amicable resolution regarding future registrations and use of the respective crocodile trademarks by both Defendant No. 1 and Plaintiff No. 1 in various countries. The Agreement enumerates five separate and distinct marks belonging to Defendant No. 1 in Schedule B, with the fourth mark being central to the current suit. As per the stipulations contained in the 1983 Agreement, Plaintiff No. 1 would even facilitate the registration of Schedule B trademarks in favour of Defendant No. 1. Since the Agreements inception in 1983, Defendant No. 1 has actively used these five marks, particularly , in Singapore, Indonesia, and other countries. Reliance was placed on Ex. DW 1/81 to DW 1/90, which are the certificates of registration of Annexure-A device in Defendant No. 1s name. As such, Lacoste is precluded from pursuing an action of passing off against Crocodile International, as the use of the impugned mark by Crocodile International was explicitly delineated and authorized within the terms of the Agreement. This clear contractual provision negates any claims of deceptive similarity or confusion that could be construed as passing off under the current legal framework.
5.7. In alignment with the spirit of mutual co-existence established by the 1983 Agreement, through the 1985 Letter (dated 22nd August, 1985), the parties understanding was expanded to include Korea, India, Bangladesh, and Pakistan. This extension was crucial for Plaintiff No. 1s ability to register their trademarks in these territories, where Defendant No. 1 already held prior trademark rights. Without an Agreement between the parties in 1985, Defendant No. 1, who held prior registration rights in their crocodile trademarks, would not have consented to Plaintiff No. 1s registration in these countries, making it impossible for them to register or market products under the trademarks LACOSTE and the saurian device in the above-stated jurisdictions.
5.8. Plaintiff No. 1 was the first to propose executing an agreement for co-existence in the Indian market in exchange for Korea. As a gesture of goodwill, Dr. Tan included Pakistan and Bangladesh as additional countries where Crocodile International would not object to Lacostes registration, as outlined in the Agreement executed in 1985. This mutual understanding of the parties is evident from subsequent communications dated 15th June, 1990 and 16th September, 1993. Pursuant to the Agreement of 1985, Plaintiff No. 1 also issued consent letters for registration of Defendant No. 1s trademarks in Pakistan. Thus, the parties intended for the 1985 Letter to be treated as a legally enforceable contract, with defined rights and liabilities.
5.9. Crocodile International is till date, completely committed to honour their intention and understanding of the Agreements executed in 1983 and 1985. In this spirit, they did not oppose the registration of Plaintiff No. 1s trademarks in inter alia, India, Bangladesh, and Pakistan, despite Defendant No. 1s previous registrations. Defendants have spared no effort to maintain congenial and harmonious atmosphere wherever possible. They have also tried to differentiate between Plaintiff No. 1s and Defendant No. 1s trademarks and towards this end, spent millions of dollars in advertising the CROCODILE marks in English, Chinese, Indonesian and Thai languages. The market is clearly able to discern the differences between Defendants products with that of Plaintiffs, which includes several factors, such as differences in pricing policy and the steps undertaken by the parties in creating their awareness and recognition. Plaintiffs action is therefore not maintainable.
5.10. Plaintiff No. 1 and Defendant No. 1 have co-existed in close proximity at several locations. The co-existence has been pleasant and mutually beneficial, and the same spirit should be applied to India, keeping in view Defendant No. 1s rights with prior registration of the word and crocodile device mark and a joint reading of 1983 and 1985 Agreements.
5.11. Plaintiff No. 1 has been impinging on Defendant No. 1s trademark rights in various territories, including Jordan and China, and despite an undertaking in the 1985 Agreement, they have refused to tender a no-objection to registration of the mark CROCO KIDS in Defendant No. 1s favour in Korea. Lacoste must not be permitted to reverse course and deviate from their contractual obligations.
5.12. Lacostes claims in the instant suit are impacted by significant delay and laches as Crocodile International has been openly using the Annexure-A device in India since 1997. Given that Lacoste operates in the same trade, they must have been aware of such use. Moreover, Lacoste first objected to the use of the impugned mark through their letter dated 18th December, 1998 resulting in an unexplained delay of three years in initiation of these proceedings.
5.13. Without prejudice to the afore-noted, Crocodile International objected to the maintainability of the present suit, contending that this Court lacks the territorial jurisdiction to entertain the same. This suit, filed under Section 62(2) of the Copyright Act, alleges infringement of copyright of the Plaintiffs by Crocodile International. While Plaintiff No. 2 is conducting their business operations in Delhi, they have not established their ownership to the copyright as they are only a permitted user of Plaintiff No. 1s trademarks. Therefore, they lack the competency to maintain the instant proceedings. Further, the Defendants are also not residing or carrying out their business operations in Delhi, further impacting this Courts jurisdiction to decide the instant suit.
5.14. The mention of the ® symbol on Defendants products featuring the Annexure-A device is a result of inadvertent oversight in a few batches as the said device is registered in Defendant No. 1s name in Singapore and various other countries, where these articles are exported. Since the institution of the suit, Crocodile International has taken prompt steps to remove the said symbol from their goods.

PROCEDURAL ORDERS AND FACTS OF SIGNIFICANCE
I. Case management proceedings
6. The suit was instituted on 01st May, 2001, and listed for hearing for the first time on 03rd May, 2001. Summons were however issued only on 23rd May, 2001, whereafter the Defendants filed their written statement, controverting the Plaintiffs case. The Plaintiffs have not filed replication to the written statement despite opportunities, leading to closure of their right through order dated 21st October, 2003.
7. On 07th May, 2004, admission/ denial of documents was conducted. Defendants admitted eight documents of Plaintiffs, which were marked as Ex. PW 1/1 to PW 1/8. Plaintiffs admitted twelve documents of Defendants, which were exhibited as DW 1/1 to DW 1/12.
II. Issues
8. On the basis of the pleadings, the following issues were framed on 14th January, 2005:
1. Whether the plaintiff is the owner of the copyright in the Crocodile Device? OPP
2. Whether the plaintiff is the proprietor of the Crocodile Device In India by virtue of registrations and use? OPP
3. Whether the suit suffers from gross and unexplained delay and is hit by laches and acquiescence? OPD
4. Whether the defendant is entitled to use the Crocodile Device attached as Annexure A to the plaint in India by virtue of an agreement dated June 17, 1983 between the parties? OPD
5. Whether this Court does not have territorial Jurisdiction to entertain and try the present Suit? OPD
6. Whether the plaintiffs are not entitled to any relief as they are guilty of concealing (sic) vital facts and documents? OPD
7. Whether the plaint is liable to be dismissed on account of it being fictitious with an intention of thwarting the legitimate business of the defendant? OPD
8. Whether the use of Crocodile Device attached as Annexure A to the plaint by the defendant violates the plaintiffs copyright and trade mark rights in India? OPP
9. Whether the defendant is liable to be prosecuted and non-suited on account of use of the symbol ® with a view to misrepresent the members of the trade and public that the Crocodile Device is a registered trade mark in India? OPP
10. Whether the first defendant is the prior adopter and user of the saurian device and the owner of trade mark rights in the same? OPD
11. Whether the first plaintiff and the first defendant signed and entered into co-existence agreements dated 17th June 1983 and 22nd August 1985 for respective territories? OPD

III. The conduct of trial
9. Post framing of issues on 14th January, 2005, parties filed their list of witnesses and the trial commenced. The Plaintiffs deposed two witnesses, Mr. Christian London [PW1] and Mr. S.S. Negi [PW2]. The Defendants also examined two witnesses, namely, Mr. Trisno Kemat Leono [DW1] and Mr. Ramesh Babu [DW2].
10. Plaintiffs first witness, Mr. Christian London, a French national, requested for a translator at the time of cross-examination, which was allowed on 08th January, 2007, and one Ms. S. Shobha was appointed as the translator. However, his testimony faced hurdles as prior to commencement of cross-examination, the Defendants raised multiple objections, highlighting several discrepancies in the affidavit by way of evidence filed by Mr. London. They pointed out that Mr. London had filed two affidavits, one dated 03rd December, 2005, and the other dated 02nd February, 2006. Additional objections were also raised concerning the introduction of new documents in the affidavits, documents being in foreign language without accompanying translations, and improper legalization and lack of an apostille. These objections were overruled through a detailed judgment dated 18th January, 2007, where the Court directed the Defendants to proceed with the cross-examination of Plaintiffs witness. Taking note of Defendants conduct and the delay caused, they were burdened with costs of Rs. 50,000/-. Mr. London was subsequently cross-examined on 18th January, 2007 and 19th January, 2007. On 20th January, 2007, after conclusion of the cross-examination, PW1 was also re-examined and further cross-examined.
11. The afore-noted interlocutory order dated 18th January, 2007 was assailed in FAO(OS) 110/2007, which was decided by the Division Bench through detailed judgment dated 20th December, 2007, dismissing the appeal, and imposing further costs of Rs. 15,000/-.
12. In the meantime, Plaintiffs second witness, Mr. Anoop Singh, was not traceable as he was not in contact with Plaintiffs. Through I.A. 3174/2008, the Plaintiffs then applied for the said witness to be substituted by Mr. S. S. Negi. This request was again met with opposition from Defendants, and decided through order dated 07th August, 2008, allowing the substitution of witness.
13. Subsequently, through I.A. 3221/2011, Plaintiffs sought to produce originals of the Power of Attorney in favour of PW2 and certificate of the Chartered Accountant, attesting to the sales turnover of Plaintiff No. 2. This application was allowed in part on 24th February, 2012, permitting the Plaintiffs to place on record the original Power of Attorney. Plaintiffs then assailed the said order of the Joint Registrar in O.A. 58/2012, which was allowed in their favour on 19th July, 2012, subject to payment of costs of Rs. 50,000/-.
14. Later, the Plaintiffs preferred I.A. 10811/2013, seeking permission to produce an Arbitration Award dated 15th August, 2011 passed by the Arbitrator in Singapore in a dispute between the parties concerning the 1983 Agreement. Their request was allowed on 24th February, 2014, subject to imposition of costs.
15. Testimony of Plaintiffs second witness, Mr. S. S. Negi, was finally concluded on 28th January, 2016 and thereafter, on 09th March, 2016, the Award dated 15th August, 2011 was admitted by Defendants, without prejudice to the interpretation of the contents. It was marked as Exhibit P-1.
16. Defendants examined Mr. Trisno Kemat Leono as DW1, whose deposition was concluded on 24th February, 2018. Mr. Ramesh Babu, DW2 was then examined and the trial stood concluded on 30th November, 2018.
17. After the trial concluded, an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 [I.A. 10863/2020] was filed by the Plaintiffs seeking to prevent the Defendants from using their newly devised trademarks on a standalone basis, arguing that use thereof reflects Defendants intention to imitate the Plaintiffs trademarks, causing consumer confusion. However, given the advanced stage of the suit, on 23rd November, 2020, the parties consented to addressing arguments in the suit for final adjudication. Consequently, extensive arguments were advanced, which stood concluded on 15th May, 2024. The Plaintiffs interlocutory application [I.A. 10863/2020] is being decided through a separate order passed today.
18. The Court has considered the submissions advanced and thoroughly examined the evidence presented by the parties. Documentary evidence submitted by the parties, which has been specifically referred to in the judgment, is delineated in the appendices to the judgment.

ISSUE-WISE ANALYSIS AND FINDINGS
ISSUE NO. 5 – WHETHER THIS COURT DOES NOT HAVE TERRITORIAL JURISDICTION TO ENTERTAIN AND TRY THE PRESENT SUIT? OPD

19. The onus to prove the afore-noted issue is on the Defendants. No submissions were advanced on this issue during the course of final arguments by either party, nor were the witnesses examined on this aspect. The issue stems from Crocodile Internationals objection to the territorial jurisdiction of this Court in their written statement. They contend that under Section 62(2) of the Copyright Act, a suit can be instituted within territorial jurisdiction of the courts where the Plaintiff is residing or carrying on business; however, in this case, Plaintiffs have not established their right, title or interest to the copyright comprised in the artistic work of the crocodile logo. Crocodile International further questioned the competence of Plaintiff No. 2, who is carrying on commercial operations in Delhi, to initiate this lawsuit. According to the Defendants, the Registered User Agreement [Ex. PW 2/4] executed between the two Plaintiffs, only pertained to a license for using Plaintiff No. 1s trademarks, and not the copyright in artistic work of the crocodile logo. Therefore, the benefit of Section 62(2) is not available to Lacoste as Plaintiff No. 2 has not acquired right in Plaintiff No. 1s copyright. It is also emphasized that Defendants were not manufacturing or trading under the Annexure-A device within territorial jurisdiction of this Court.
20. The Plaintiffs have filed this composite suit for trademark and copyright infringement before this Court on the basis of Section 62 of the Copyright Act and availability of the offending goods within the territorial jurisdiction of this Court. Section 62 of the Copyright Act reads as follows:
Section 62- Jurisdiction of court over matters arising under this Chapter-
(1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.
(2) For the purpose of sub-section (1), a district court having jurisdiction shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.

21. Section 62(2) of the Copyright Act authorizes initiation of legal proceedings before the court within whose territorial limits the Plaintiff resides or carries on business or personally works for gain. The provision, as worded, endows jurisdiction to a forum to adjudicate the cases of copyright infringement based on the convenience of the Plaintiff in addition to the provisions of the CPC. This avenue does not override the jurisdiction of courts envisaged in Section 20 of the CPC, rather it supplements the grounds for invoking a courts jurisdiction. This is evident from the inclusive nature of the definition of a district court having jurisdiction in Section 62(2), suggesting a wider import than Section 20 of the CPC. This legal principle has been recognized in the decisions of the Supreme Court in Exphar SA and Anr. v. Eupharma Laboratories Ltd. and Anr.,8 and Dhodha House v. S.K. Maingi.9
22. It is undisputed that Plaintiff No. 2 in the instant case, being a person instituting the suit conducts their business operations in Delhi. The uncontroverted promotional materials submitted by Crocodile International, such as Ex. DW 1/17, unequivocally establish that the Defendants offer the impugned apparels displaying the Annexure-A device through their retail outlets across the country, including New Delhi. Therefore, the cause of action for violation of copyright has partly emerged in Delhi, thus prompting this Courts jurisdiction in terms of Section 20(c) of the CPC.
23. In addition to the allegations of copyright infringement, Lacoste is also seeking injunctive reliefs against Crocodile International to prevent infringement and passing off of their trademarks. As per Section 105 of the Trade and Merchandise Marks Act, 1958,10 a suit for infringement and passing off may be initiated before a court of appropriate jurisdiction, not inferior to a District Court.11 The goods bearing impugned mark are available in Delhi, and the pleadings and evidence presented indicate a valid cause of action for trademark infringement and passing off within this Courts territorial jurisdiction. Consequently, the Defendants objection to the maintainability of the suit does not find favour with the Court.

Finding
24. In view of the lack of evidence and the admitted sale of impugned products within Delhi, the Defendants have not been able to sustain their objection to this Courts territorial competence to decide the present suit. Accordingly, this issue is answered in favour of the Plaintiffs.

ISSUE NO. 1 – WHETHER THE PLAINTIFF IS THE OWNER OF THE COPYRIGHT IN THE CROCODILE DEVICE? OPP

25. Copyright is a form of protection given to the authors of original creations, including artistic works. The key factor in assessing copyright eligibility is the originality of the creation, and its expression in a tangible form that allows for its reproduction. Lacostes claim to copyright hinges not just on creation, but also on the original expression and subsequent registration of the crocodile device as an artistic work. Thus, in ascertaining copyright ownership of Lacoste, their crocodile device must be examined for its originality and expression.
26. Lacoste submitted that the crocodile device was created by Mr. Robert George in France, where it was first published in 1927. PW1 provided a detailed deposition affirming the creation and publication history of the device, tracing the conveyance of rights from Mr. Robert George to Plaintiff No. 1. Mr. London has highlighted the continuous use of this crocodile device by Lacoste to demonstrate a longstanding recognition and fixation of the artwork on their products. PW1 has further presented Copyright Registration Certificate bearing No. A-62692/2002 dated 16th January 2002 [Ex. PW-1/10], which confirms the copyright registration of in the name of Plaintiff No. 1. The application for registration filed on 09th June, 1999 by Plaintiff No. 1 and the certificate, explicitly record the initial publication date of 1927 in France, and a subsequent publication in India in 1992, reinforcing the works continuous recognition and protection under copyright laws.
27. It is crucial to note that Mr. Londons testimony regarding the creation, registration, and ongoing validity of the copyright for the crocodile device went unchallenged by the Defendants during cross-examination. This uncontroverted testimony is a strong indicator of the reliability and acceptance of the facts, as presented by Lacoste. Furthermore, during the arguments, Crocodile International did not contest the claim to copyright, implicitly acknowledging Lacostes asserted rights.

Finding
28. Based on the evidence presented, including the historical documentation concerning registration and the uncontested testimony of Mr. London, the Court finds that Plaintiff No. 1 has satisfactorily established copyright ownership over the crocodile device. The copyright in this artistic work remains valid and subsisting not only in India, but also globally, thereby granting Plaintiff No. 1 the exclusive rights to control its reproduction and use and protect infringement under the current legal framework governing copyright. Issue No. 1 is accordingly decided in favour of the Plaintiffs, and against the Defendants.

ISSUE NO. 2 – WHETHER THE PLAINTIFF IS THE PROPRIETOR OF THE CROCODILE DEVICE IN INDIA BY VIRTUE OF REGISTRATIONS AND USE? OPP

29. Trademark ownership in India is established through registration under the Trade Marks Act, 1958 or Trademarks Act, 1999, or by virtue of extensive and continuous use that leads to brand recognition in the market. In the case at hand, Lacoste asserts ownership over their crocodile device both by trademark registrations and use since October, 1993. In support, they have presented substantial evidence: the legal proceedings certificates in respect of registrations No. 400265 for the mark and 400267 for the mark were provided as part of the evidence [Ex. PW 1/11 and PW 1/12, respectively] and referenced during the testimony of PW1. Plaintiff No. 1 is the only party holding a registration for the standalone version of their crocodile device viz. in India. These registrations, which date back to 19th January, 1983, have not only legally strengthened Lacostes claims, but have also presumably contributed to the establishment of the LACOSTE mark and the crocodile device as a recognized symbol of their goods in the market. Additionally, in his deposition, PW1 has confirmed that the apparels bearing the LACOSTE mark and the crocodile device were first launched in India in October 1993, with the opening of the first Lacoste boutique. Moreover, PW2, Mr. S.S. Negi, has also testified that following the execution of the User Agreement between Plaintiff No. 1 and Plaintiff No. 2 on 23rd July, 1994 [Ex. PW 2/4], Plaintiff No. 2 has been extensively trading in products bearing Plaintiff No. 1s trademarks. Their definite and categorical statements concerning the year of commercial use have not been disproved in trial. Crocodile International did not cross-examine the Plaintiffs witnesses to debilitate their assertions regarding the usage of the Lacostes marks in India.
30. Thus, the documentary evidence, including trademark registration details, and absence of evidence negating their claims, demonstrate Lacostes trademark rights over the crocodile device. This combination of statutory registration and use of the trademark by the Plaintiffs strongly supports the conclusion that Plaintiff No. 1 is indeed the proprietor of the crocodile device in India, thus reinforcing their claim to exclusive rights over the mark. The absence of any cross-examination or contrary arguments from Crocodile International concerning the validity of these trademark registrations or the associated rights further suggest an acceptance, or at least, a failure to dispute, Lacostes claims to these marks.

Finding
31. In light of the above evidences of valid and active trademark registrations, international recognition and specific legal protection, coupled with the lack of opposition from Defendants regarding these marks, the Court concludes that Plaintiff No. 1 is indeed the rightful proprietor of the registered crocodile device . Consequently, issue No. 2 is decided in favour of the Plaintiffs, affirming their exclusive rights to use and enforce the trademark in relation to the specified goods, as per their registration No. 4000267.

ISSUE NO. 10- WHETHER THE FIRST DEFENDANT IS THE PRIOR ADOPTER AND USER OF THE SAURIAN DEVICE AND THE OWNER OF TRADE MARK RIGHTS IN THE SAME? OPD

32. Crocodile International has founded their defence on honest adoption and continuous use of the crocodile family of marks since 1947 worldwide, which is supported with evidence. Specifically in India, their first registration dates 12th June, 1952 for the mark . Over the decades, Crocodile International alleges to have developed and used various saurian/ crocodile devices, which are illustrated in the evidence submitted as Ex DW 1/16 (colly). The visual representations provided are crucial in assessing the scope and distinctiveness of Crocodile Internationals marks in comparison to those claimed by Lacoste. The relevant variants of Defendants crocodile/ saurian device are therefore, reproduced below:

33. The saurian device which is central to the litigation, , is depicted at point B1 of the afore-mentioned chart. Given the historical context of the legal conflict between the parties, in the current proceedings, it is essential to distinguish between the use and adoption of the two saurian devices the one incorporated within the Defendant No. 1 registered trademarks, and the one depicted in Annexure-A. With this distinction in mind, the Court proceeds to examine the pleadings and evidence to assess Defendant No. 1s claim of prior use of the saurian device portrayed in Annexure-A to the plaint.
34. Defendant No. 1s charge of prior use in India pivots on their first trademark registration No. 154397, dated 12th June, 1952, for the mark , in the name of Dr. Tan. This registration was subsequently assigned to Crocodile International Pte Ltd. (formerly, Li Seng Min Company Ltd.). Later, Defendant No. 1 secured another registration operative from 21st November, 1990 for in class 25, under No. 540315. Defendant No. 1 commercially launched their products bearing the composite trademarks illustrated above, through their licensee Defendant No. 2, in August, 1998. The commercial launch was preceded with promotional campaigns documented through caution notices and advertisements in major newspapers from 1995 onwards, with the advertisements particularly intensifying post 1998. This is evident from the caution notices issued in Deccan Herald on 05th December, 1995 [Ex. DW 2/P3] and in The Hindu on 27th April, 1998 [Ex. DW 2/6], as well as Ex. DW 1/17, being the advertisements issued by Defendants in various newspapers, such as, The Hindu on 09th, 12th, 15th, 17th and 28th October, 2001, Assam Tribune on 22nd October, 2001, Chandigarh Times on 13th October, 2001, and Sambad on 18th October, 2001. These documents consistently depict the use of Defendant No. 1s crocodile devices, including Annexure-A device in conjunction with the word/ mark CROCODILE/ CROCODILE INTERNATIONAL, reinforcing the consistent use of a composite mark by Crocodile International from the year 1998 and upwards.
35. In the pleadings and testimony of DW1, it is asserted that Defendants commenced the use of crocodile mark and devices, encompassing Annexure-A device, from the year 1997. Although Defendant No. 1 has actively used the crocodile word and device mark in India since at least 1997, as stated in their written statement, there is a notable absence of specific pleading or assertion that they were the prior adopters and users of the saurian device depicted in Annexure-A to the plaint, before the Plaintiffs. This omission is significant, especially since Defendants do not deny the use of the Annexure-A device. In fact, in their written statement, it is contended that (i)t is therefore submitted that the defendants have been advertising and using the Crocodile word and device mark in India since at least 1997 i.e. for the last 4 years. It is strongly denied that the defendants commenced use of the mark in India since the last 2 years only. Without a clear assertion of prior adoption specific to the device in question, the defence lacks the specificity required to effectively counter Lacostes claims of earlier rights.
36. Lacoste, on the other hand, has proved their trademark rights in the registered devices and since 19th January, 1983. They have also submitted evidence of use of LACOSTE trademark and crocodile device since 1993, beginning with the launch of their products in October, 1993. In this scenario, Defendant No. 1s assertions must be examined in respect of two distinct trademarks the composite crocodile device and the Annexure-A device:
36.1. Defendant No. 1s prior rights in the composite crocodile device: Due to their historical registration dating back to 1952 and documented use since 1997, the Court finds that Defendant No. 1 indeed possesses prior rights in the composite device that entail a crocodile device accompanied with the word CROCODILE as Plaintiff No. 1s registration (1983) and demonstrated use (1993) of their devices are subsequent.
36.2. Prior adoption and use of Annexure-A device: Defendant No. 1 has not specifically pleaded prior adoption and use of the standalone saurian device shown in Annexure-A, which is central to Lacostes claims. Thus, any claim by Defendant No. 1 to prior adoption and ownership of trademark rights is strictly confined to the composite saurian device that forms part of their registered trademarks. This point is critical: while Defendants are the prior registrants and users of a composite saurian device, this does not automatically confer rights over any and all variations of saurian devices, especially those that are not part of their registered trademarks. Contrastingly, Lacoste has proved their rights over the standalone crocodile device , which was registered in their name in 1983. This timeline predates Defendant No. 1s claimed use of the Annexure-A device by several years, establishing a precedent of use and recognition in the Indian market in favour of Lacoste. Thus, Lacostes registration of their standalone crocodile device not only proves their claim to the rights in the trademark, but also enhances their standing to allege infringement based on prior use and registration.
Finding
37. To conclude, there is clear acknowledgment by the Defendants in their written statement that their use of the saurian device commenced in 1997, with documentary proof of continuous use starting from 1998. Lacostes rights in their registered device operate w.e.f. 19th January, 1983. At the time that when Plaintiff No. 1 obtained registrations in India, Defendant No. 1 had not adopted the Annexure-A device. Defendant No. 1 therefore, cannot assert prior adoption of the infringing Annexure-A device as they are the subsequent adopter and user thereof.
38. Nonetheless, Defendant No. 1 has established prior rights to their registered composite mark that includes a saurian device [ and ]. These registrations are clearly delineated to include only the specific composite mark as registered and Crocodile International has failed to show any evidence that would extend these prior rights to the standalone saurian device depicted in Annexure-A, which substantially resembles the device used by the Lacoste.
39. Therefore, issue No. 10 is decided by holding that Defendant No. 1 is not the prior adopter or user of the Annexure-A saurian device. They retain ownership of the trademark rights solely in the context of their registered composite marks, bearing registrations No. 154397 and 540315. Consequently, while they maintain rights to their composite trademark, they do not hold prior rights to the standalone device that closely resembles Plaintiff No. 1s registered mark. Issue No. 10 is thus resolved in the above terms.

ISSUE NO. 4 – WHETHER THE DEFENDANT IS ENTITLED TO USE THE CROCODILE DEVICE ATTACHED AS ANNEXURE A TO THE PLAINT IN INDIA BY VIRTUE OF AN AGREEMENT DATED JUNE 17, 1983 BETWEEN THE PARTIES? OPD

ISSUE NO. 8- WHETHER THE USE OF CROCODILE DEVICE ATTACHED AS ANNEXURE A TO THE PLAINT BY THE DEFENDANT VIOLATES THE PLAINTIFFS COPYRIGHT AND TRADE MARK RIGHTS IN INDIA? OPP

40. For an effective determination, and considering the nature of the controversy and submissions advanced, under Order XIV Rule 5 of CPC, it is deemed appropriate to reframe issue No. 11 to Whether the first plaintiff and the first defendant signed and entered into co-existence agreements dated 17th June, 1983 and 22nd August, 1985 for respective territories? If so, whether such co-existence extends to Annexure-A device in India? OPD.
41. Crocodile International rebuts the allegations of copyright and trademark infringement, claiming honest and concurrent use, supplemented by terms of peaceful co-existence entailed in the 1983 Agreement and 1985 Letter. These agreements are purported to justify Crocodile Internationals continued use of the Annexure-A device within the agreed territories, making their actions compliant with mutually recognized terms, rather than infringing. In this context, issue No. 4 pertains to an agreement dated 17th June, 1983, which is critical in determining whether Defendant No. 1 has the right to use the Annexure-A device within India, thereby directly impacting the legal basis for any trademark use within this territory. In deciding issue No. 11, we would explore the existence and specifics of the co-existence agreements dated 17th June 1983 and 22nd August 1985, which are alleged to be dictating the terms under which each party may operate within their respective territories. The decision on issue No. 8 will ascertain whether such use infringes upon Lacostes copyright and trademark rights a determination that hinges on the conclusions drawn from the scope and applicability of the rights discussed in issues No. 4 and 11. Collectively, the above-captioned issues focus on the rights and agreements pertaining to the use of the Annexure-A device. Given the overlapping nature of these concerns, a joint assessment is both appropriate and necessary.
42. The courts primary task in any case of trademark and copyright infringement is to determine the degree of similarity between the contested marks and works and to assess the ensuing likelihood of confusion and defiance of exclusive rights. This evaluation rests on the anvil of Section 29 of the Trade Marks Act, 1958, which addresses trademark infringement, and Section 51 of the Copyright Act, concerning copyright infringement.

I. Similarity between the two trademarks
43. Here, both trademarks feature a crocodile for garments, making them conceptually identical and leaving little room for dispute on the point of similarity. In trademark disputes involving the arbitrary use of designs such as the present, the courts would typically resolve the issue swiftly if the two crocodile logos have apparent resemblances. However, this case presents a unique context: both parties have acknowledged co-existence and hold registrations for a crocodile design within their trademarks. This co-existence necessitates a detailed scrutiny of specific elements of the conflicting saurian emblems.
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 Lacostes 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 Lacostes 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.,12 reinforcing the holding in Amritdhara Pharmacy v. Satya Deo Gupta,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.,14 the conflicting trademarks were a representation of a bird perching on a cylinder of cotton sewing thread with its wings fully spread out alongside the name Eagle brand of the Respondent therein and representation of an eagle with its wings half opened trying to stand erect 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 Respondents 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 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 afore-mentioned principles of evaluation in mind, the noticeable difference in the orientation of the crocodiles with Lacostes crocodile facing right, and Crocodile Internationals 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 Lacostes crocodile device is drawn below:
Lacostes crocodile device
Crocodile Internationals 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 Lacostes 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.15 Thus, this substantial resemblance strongly supports a finding of deceptive similarity.
48. In the course of cross-examination, Lacoste questioned the Defendants witnesses about the likelihood of confusion between the parties marks, particularly referring to a version of the saurian device allegedly used by Defendant No. 1, depicted at point A10 of Ex. DW 1/16 , which represents a crocodile facing right. The relevant responses of DW-1 are reproduced below:
Testimony of DW1 recorded on 24th February, 2018:
Q55. Please see para no. 13 of your affidavit and explain as to what is your understanding of there being no cause for any conflict or confusion in the market. Is it on account of your Saurian device facing left and plaintiffs device facing right or are there other considerations as well?
Ans. The direction of Saurian device is one of the main considerations that is why we have not possibly used trademark A10.

Testimony of DW2 recorded on 30th November, 2018:

Q1. Please see the specific trademark encircled in Red in Ex DW2/6 at Point X and compare the same with the certified copy of plaintiffs registered trademark bearing No. 400267 in Class 25 (Ex PW1/12). Please point out the difference between the two?
A. In the representation of the mark in Ex DW2/6 encircled in red, the Crocodile face is on the left hand side. The tail on this device is turning on the upper side towards the left. The word Crocodile is written below the device. In the registration of the plaintiff on the other hand, the Crocodile face is on the right hand side and the tail is going on the upper side towards the right. There are no other differences.

Q2. Is it correct that a mirror image of the defendant mark would make the crocodile face right and mirror image of plaintiffs mark would make it face left?
A That is correct.

[Emphasis Supplied]

49. The above-noted excerpts demonstrate that DW1 and DW2 acknowledge the similarities between Lacostes crocodile device and Annexure-A device, conceding that the key distinction lies in the orientation of the two crocodiles. However, during the course of arguments, counsel for Crocodile International argued that the images of Lacostes trademarks shown to DW2 viz. / differ significantly from the actual device used / , thereby suggesting that the response of the witness cannot be understood as an admission. However, in the opinion of the Court, the witnesses deposing on behalf of the parties were fully conscious of the dispute and the trademarks involved in the controversy. Therefore, presenting an unclear image to DW 2, the constituted attorney of Defendant No. 2, does not dilute their admission of the overall optical similarities. Consequently, this objection raised is rejected.
50. To conclude, in light of the jurisprudence of trademark law, which is well-established by the court rulings referred above, and based on the detailed visual analysis conducted, the Court observes that the visual and conceptual parallels between Lacostes crocodile device and Annexure-A device have a strong potential to mislead consumers or cause them to confuse one brand with another. The similarities in shape, silhouette, and key design elements, especially when coupled with their application to identical products, create a significant likelihood of consumer confusion. Given these comprehensive observations, it is evident that the Annexure-A device used by Crocodile International so nearly resembles Lacostes mark that it meets the criteria for being deceptively similar under Section 2(1)(d) of the Trade Marks Act, 1958.

I.I. Judicial precedents cited by Crocodile International
51. To refute the allegation of deceptive similarity, Crocodile International relied on judgments rendered by courts of different jurisdictions [Ex. DW 1/92 to DW 1/97]. After a thorough examination of the same, the Court finds that these rulings vary on facts, and do not advance the Defendants case for following reasons:
51.1. Ex. DW 1/92: Lacoste had instituted a suit against Crocodile International before the District Court of Yangon, Myanmar claiming infringement of LACOSTE trademark and crocodile device, which was decreed in their favour. The device impugned in the said suit contained the word crocodile and the figure of a crocodile. An appeal was filed before the Divisional Court of Yangon in Civil Appeal No. 2/2001. The Divisional Court, through judgment dated 07th March, 2001, set aside the District Courts order, finding a lack of territorial jurisdiction to entertain the suit. On merits, the Court opined that the simultaneous presence of the two marks will not result in confusion as the word Lacoste is contained inside the device of crocodile, and is distinguishable from a crocodile figure with the word Crocodile.
51.1.1 . The rival trademarks in the instant proceedings are distinct from the marks forming a subject matter of the afore-noted suit. Here, the Defendant is using the Annexure-A device unaccompanied with the word Crocodile, an attribute that considerably increases the likelihood of confusion. Therefore, the observations of the Divisional Court of Yangon, Myanmar do not hold significance in the present context.
51.2. Ex. DW 1/93 and Ex. DW 1/94: Crocodile International filed an application for registration of a crocodile device containing the word Crocodile in respect of clocks, jewellery, watches, shoe ornaments etc. in Sri Lanka. The application was opposed by Lacoste. The Director General of Intellectual Property dismissed Lacostes objection on 10th September, 2012 [Ex. PW 1/94] in view of the parties continued co-existence across classes and the inclusion of the words Lacoste and Crocodile in their respective trademarks. Lacoste challenged these findings before the High Court of the Western Province Holden in Colombo, Sri Lanka. The High Court delivered the judgment on 03rd December, 2013 [Ex. DW 1/93], upholding the view of Director General of Intellectual Property. It opined that there was longstanding concurrent use of the image/ device of a crocodile with or without the words Lacoste and Crocodile.
51.2.1. The trademarks in contest before this Court are distinguishable from the judgments discussed above. Further, the observations of the High Court of uncontested concurrent use are also not relevant to the present dispute as Lacoste launched a challenge to Crocodile Internationals use of Annexure-A device at the first instance.
51.3 Ex. DW 1/96 and Ex. DW 1/97: Ex. DW 1/96 and DW 1/97 pertain to decisions of the Court of Appeal of Paris and Supreme Court of Paris. In these decisions, the courts categorized Lacostes two trademark applications as fraudulent. This conclusion is premised on Lacostes concealment of the 1983 Agreement while pursuing their trademark applications, and is irrelevant to the dispute at hand. Notably, the Court of Appeal declined to evaluate the effect of the 1983 Agreement, citing its limited territorial applicability.
52. In light of the foregoing findings of deceptive similarity between the two trademarks, we must now address whether the Defendants use of Annexure-A device infringes upon the Plaintiffs trademark rights. This inquiry necessitates an examination of the Defendants defence based on co-existence, anchored in the 1983 Agreement and 1985 Letter. The