Battle of the Crocs: A TM Battle in the Philippines
In a long-running legal battle that concluded with a 2023 decision, French fashion giant Lacoste lost a trademark dispute against Singapore-based competitor Crocodile International Pte. Ltd. over the use of their crocodile logos. This case, Lacoste S.A. vs. Crocodile International Pte. Ltd., G.R. No. 223270, November 6, 2023, highlights a key principle in trademark law: not all similar trademarks are prohibited, provided they are not confusingly similar.
The Trademark Dispute: Lacoste vs. Crocodile International
Lacoste, known worldwide for its signature crocodile emblem, has held a trademark for its “Crocodile Device” in the Philippines since 1963. The French brand opposed Crocodile International’s attempt to register a similar logo, fearing consumer confusion due to the similarities between the two logos.
Crocodile International, founded in Singapore in 1949, began exporting its products to the Philippines in 2002 and applied for trademark registration for its “Crocodile and Device” logo. Lacoste filed an opposition in 2004, arguing that the Singaporean company’s logo would dilute the distinctiveness of its own iconic mark.
However, the Intellectual Property Office of the Philippines (IPOPHL) ruled in favour of Crocodile International in 2009, applying both the Dominancy and Holistic Tests. These tests aim to determine whether the differences in design are enough to avoid confusing similarity. The IPO found the distinctions between the two logos—such as the direction each crocodile faces, their detailed features, and the addition of text in Crocodile International’s design—were sufficient to prevent consumer confusion.
Lacoste appealed the decision multiple times, but the Court of Appeals (CA) and ultimately the Supreme Court (SC) of the Philippines sided with Crocodile International. In its 2023 decision, the Supreme Court emphasised that trademark laws exist to prevent consumer deception, not to create monopolies. The court stated that “Courts should take care not to interfere in a free and fair market, or to foster monopolistic practices. Instead, they should confine themselves to prevent fraud and misrepresentation on the public.” The ruling confirmed that Crocodile International’s logo could peacefully coexist with Lacoste’s without causing confusion among consumers.
You can read the full case here: Lacoste vs. Crocodile International Decision.
Not All Similarities Are Prohibited
This case is an important lesson for small and medium-sized enterprises (SMEs). While the logos in question were similar, the courts determined they were not confusingly similar, allowing both companies to operate with their respective marks in the same market. It highlights that trademarks can be similar but not necessarily confusing, as long as the overall impression and specific design elements are distinct enough.
However, it is important to recognise that determining confusing similarity can be highly subjective. Trademark examiners may have differing opinions, and each jurisdiction has its own standards. For instance, the Philippine Intellectual Property Office may approve a trademark that might be rejected in the US, Australia, or other countries. This means that securing trademark rights in one country does not guarantee protection in others.
Why You Should Aim for Uniqueness in Your Trademark
Although you can technically have a trademark similar to a competitor’s, especially if there are clear differences, we recommend aiming for uniqueness from the start. Competing with well-established brands like Lacoste can increase the risk of legal challenges and disputes. Moreover, having a distinctive trademark helps your business stand out, protects your brand identity, and reduces the likelihood of consumer confusion.
At Markport™, we specialise in helping businesses register trademarks that are not only legally sound but also creatively distinctive. We believe that choosing a unique and memorable mark is key to building a strong brand that resonates with your customers. Our trademark protection and design services ensure that your brand is positioned for long-term success in an increasingly competitive market.
Secure Your Brand with Markport™
The Lacoste S.A. vs. Crocodile International Pte. Ltd. case demonstrates that while similar trademarks can coexist, it is always better to avoid walking too close to the line. A unique and distinctive trademark not only protects your brand but also strengthens your market position.
At Markport™, we offer comprehensive trademark services tailored for SMEs and growing businesses. From trademark design to registration, we guide you through the process of securing your brand both locally and internationally. Don’t leave your brand’s future to chance—let us help you create a mark that stands out.