Battle of two crocodiles

Battle of two crocodiles | Daily Tribune

French fashion giant Lacoste S.A. loses a protracted trademark dispute against Singapore’s Crocodile International Pte. Ltd. over the use of a crocodile logo in the Philippines.

On 10 September 2024, the Supreme Court published its Decision (Lacoste S.A. v. Crocodile International Pte Ltd; G.R. 223270, 6 November 2023), which ruled in favor of Crocodile International, and ended a 20-year legal battle between the two fashion brands.

In its decision, the Supreme Court’s Second Division upheld prior rulings by the Court of Appeals (CA), the Intellectual Property Office Director General (IPO-DG) and the Intellectual Property ffice Bureau of Legal Affairs (IPO-BLA), all of which determined that the two logos were sufficiently distinct to avoid consumer confusion.

Lacoste, which holds Trademark Registration 64239 for its “Crocodile Device” logo in the Philippines since 1964, argued that it possesses exclusive rights to the logo within the country. Crocodile International, established in Singapore in 1949, applied to register its own “Crocodile and Device” logo in 1996 and began exporting to the Philippines in 2002. Lacoste filed its opposition to Crocodile International’s registration in 2004, claiming that the logos were confusingly similar and could mislead consumers. Lacoste’s logo features a right-facing crocodile, while Crocodile International’s design includes a left-facing crocodile with the stylized word “Crocodile” above it.

Lacoste contended that this similarity could dilute its trademark and impact its market presence in the Philippines. In defense, Crocodile International highlighted significant differences in the logos’ appearance and overall impression. The Singaporean company pointed out key differences such as the direction of the crocodiles, the inclusion of text in its logo, and the overall design. These distinctions, Crocodile International argued, made its logo clearly distinguishable from Lacoste’s.

Crocodile International also noted that its logo coexisted with Lacoste’s trademark in other markets, including Japan and Myanmar, where courts ruled the logos were not confusingly similar. Additionally, the Singaporean brand referred to a 1983 Mutual Coexistence Agreement between the two companies, which allowed both brands to operate in separate markets.

When the case reached the Supreme Court, it conducted a side-by-side comparison of the logos. The Court noted significant differences: Lacoste’s crocodile logo faces to the right, with its head positioned on the right side and its tail extending to the left, forming a clean horizontal alignment. In contrast, Crocodile International’s logo depicts a crocodile facing the opposite direction, with its head on the left and tail on the right. The Singaporean brand’s crocodile logo is also accompanied by the stylized word “Crocodile” placed above the animal, and the entire design is slightly tilted, with the right side positioned higher than the left, giving the logo a unique orientation.

The Supreme Court ruled that these differences in design, orientation, and presentation were sufficient to prevent consumer confusion. The Court also rejected Lacoste’s claims of trademark dilution and bad faith, concluding that Crocodile International’s use of its logo did not harm Lacoste’s brand or dilute its distinctiveness.

The High Tribunal reviewed the 1983 Mutual Coexistence Agreement, which Lacoste initially contested. It found that the agreement had facilitated the coexistence of both brands globally without conflict and demonstrated that Crocodile International had allowed Lacoste’s registration in other markets by signing the Agreement. According to the Court, this negated any claim that Crocodile International had the intention to exploit Lacoste’s goodwill or tarnish its brand.

The High Court emphasized the importance of preserving market fairness and competition, noting, “Courts should take care not to interfere in a free and fair market or foster monopolistic practices. Instead, they should focus on preventing fraud and misrepresentation to the public.”

The Supreme Court’s ruling underscores the importance of trademark differentiation and fair competition, ensuring that both companies can coexist with their distinctive logos in the market.

For more of Dean Nilo Divina’s legal tidbits, please visit www.divinalaw.com. For comments and questions, please send an email to cad@divinalaw.com.