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December 24, 2024

Court Case Bulletin (CCB): Significant Likelihood Of Initial Interest Confusion Amounts To Deceptive Similarity

Author: Adyanshi Kashyap

In the matter of Lacoste S.A. v. Crocodile International Pte Ltd. [CS (COMM) 1550/2016], a Single Judge [Sanjeev Narula, J.] of the High Court of Delhi, vide judgement dated August 14, 2024, permanently injuncted the Defendants from infringing the Plaintiff’s “Crocodile” device and held that initial interest confusion as a result of substantial similarities between the marks constitutes trademark infringement.

Section 2(1)(h) of the Trade Marks Act, 1999 defines the term “deceptively similar” — “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.” The key question of law in this case was whether initial interest confusion—a momentary consumer misidentification at first glance—suffices to meet the threshold for deceptive similarity.

The longstanding dispute between Lacoste and Crocodile International in India, spanning over two decades, is part of a broader global conflict between the two companies over their competing crocodile logos. The Plaintiff, filed the present suit in 2016, seeking a permanent injunction to restrain the Defendant from using a left-facing crocodile logo on apparel and accessories, arguing that it infringed on Lacoste’s distinctive trademark.

The Plaintiff claimed that the similarities between the two-crocodile logos, despite facing different directions, created confusion among consumers, especially as both companies operated in the apparel market. Whereas the Defendant contended that the opposite orientation of its crocodile logo sufficiently distinguished it from the Plaintiff’s  logo and was unlikely to cause confusion.

The Court acknowledged the principle of “initial interest confusion” as grounds for trademark infringement under Section 29(1) of the Trade Marks Act, 1999 in this case, and held that, “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. Thus, this substantial resemblance strongly supports a finding of deceptive similarity.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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