Lacoste loses trademark fight vs Crocodile in the Philippines
MANILA, Philippines – After 20 years of legal disputes that made it all the way to the Supreme Court, Lacoste has lost its trademark case against Crocodile over the use of what it claimed to be a “confusingly similar” logo.
Since 2004, the fight between the two fashion brands has centered around the registration of Crocodile’s trademark in the Philippines, which Lacoste claimed was “confusingly similar or identical” to its own iconic crocodile logo. However, the Supreme Court (SC) has ended that debate, ruling in favor of Crocodile and allowing it to register and use its logo in the Philippines.
“The Court holds that there are pronounced differences between Lacoste’s and Crocodile’s marks, which resultantly, make them distinguishable from one another,” the SC said in a decision dated November 6, 2023, but made public on September 10, 2024.
Lacoste, which has used its right-facing crocodile logo in the Philippines since 1963, argued that Crocodile’s left-facing logo with the word “Crocodile” would cause confusion among consumers and “greatly damage” the upscale French fashion brand. In 2004, Lacoste filed a Notice of Opposition with the Intellectual Property Office (IPO), seeking to block Crocodile’s trademark application.
Crocodile, which began exporting to the Philippines in 2002, countered that its logo had significant differences from Lacoste’s. It pointed out that while Lacoste’s mark features only a right-facing crocodile, Crocodile’s logo includes the word “Crocodile” in a stylized font above a left-facing crocodile.
The Singapore-based company also said that the two brands had been coexisting in several other markets, including Japan, China, South Korea, and Malaysia. Later on, the SC said that this “co-existence” in other countries shows that Crocodile has no intent to “ride on the goodwill of Lacoste.”
Based on its own analysis, the High Court also concluded that there were “distinct visual differences both in appearance and overall commercial impression between Lacoste’s and Crocodile’s marks which makes likelihood of confusion between them nil.”
The SC also said that Lacoste’s allegation of trademark dilution was “merely speculative,” arguing that “there is no showing that Crocodile in any way — at least on the basis of the evidence presented by Lacoste — defamed or disparaged Lacoste’s mark.”
“Absent showing of 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,” the SC said.
The SC decision, penned by Associate Justice Antonio Kho, upholds past rulings of the Intellectual Property Office-Bureau of Legal Affairs, Intellectual Property Office-Director General, and the Court of Appeals on the case. – Rappler.com