SC sides with Crocodile Int’l in Lacoste lawsuit

THE PHILIPPINE Supreme Court (SC) has favored Singapore-based Crocodile International Pte. Ltd. in a trademark lawsuit filed by French fashion giant Lacoste S.A.

The SC’s Second Division upheld decisions of the Court of Appeals (CA), Intellectual Property Office-Director General (IPO-DG) and Intellectual Property Office-Bureau of Legal Affairs (IPO-BLA), which all found no similarity between the two crocodile logos.

“The court finds no cogent reason to reverse the uniform rulings of the IPO-BLA, the IPO-DG and the CA in denying Lacoste’s opposition to Crocodile’s trademark application No. 4-1996-116672 for the mark ‘Crocodile and Device’ for goods covered by Class 25 of the [Nice Classification],” it said in a 15-page decision written by Justice Antonio T. Kho. The ruling was promulgated in November 2023 and released on Sept. 10.

“Absent of showing fraud and misrepresentation to the public, the court should allow enterprises, such as Crocodile in this case, to enter the Philippine market through, among others, the registration of their trademarks,” it added, citing the need to balance the protection of intellectual property rights and fair competition.

Lacoste filed the lawsuit in 1996 against Crocodile International’s trademark application for its “Crocodile and Device” mark, saying it resembled Lacoste’s emblem.

Crocodile International filed a trademark application for its logo with the Bureau of Patents, Trademarks, and Technology Transfer, the IPO’s predecessor, in 1996, which Lacoste opposed in 2004, citing possible confusion for consumers.

The French fashion brand, a company that has been in the Philippine market since 1963, argued that Crocodile International’s logo would confuse consumers.

The Singaporean brand, established in 1949, started exporting its products to the Philippines in 2002.

Crocodile International said its mark is a left-facing crocodile with the word “Crocodile” stylized above the image, while Lacoste has a right-facing crocodile emblem and the word “Lacoste” below the figure.

It argued that both logos have coexisted peacefully in other countries, such as Japan and Myanmar, where courts also ruled the logos were not confusingly similar.

It cited a Mutual Co-Existence Agreement signed between Lacoste and Crocodile International in 1983, when both parties agreed to coexist in specific markets, but Lacoste said this does not apply in the Philippines.

In 2009, the IPO-BLA rejected Lacoste’s opposition, applying the dominancy test and holistic test to determine whether the differences between the two logos were clear enough to avoid confusion.

The appellate court affirmed its ruling in 2015, saying the logos were visually distinct. — Chloe Mari A. Hufana