Lacoste and Crocodile International have been disputing their respective rights in the crocodile logo for almost 40 years, ever since Lacoste moved into the Asian markets. Lacoste has now been ordered to apologise and pay its rival the nominal sum of $1 in compensation.
Both logos use a similar looking crocodile, except that they face in opposite directions. The question for the court was to decide which one was registered in China first.
Lacoste first registered the logo in France, in 1933, when founder and tennis star Rene Lacoste incorporated the emblem onto his range of clothes.
Since then, Lacoste clothing has become fashionable worldwide, and the company identified the Chinese market as one of great potential. It says that it registered the logo in China in 1980, although this was disputed by Crocodile International, which claims that Lacoste did not register its mark until 1995.
Crocodile International argued that Tan Hian Tsin, founder of its company, designed its logo in 1947, and registered the crocodile as a trade mark in Singapore in 1951. Tan Hian Tsin, although originally Chinese, is now a Malaysian citizen, and as such the company argues that it has protection in the Chinese market because both China and Malaysia are signatories to the Berne Convention.
This Convention is an international copyright treaty that confers protection to trade marks granted in one signatory country to all other signatory countries. China became a member in 1992, Singapore in 1998 and Malaysia in 1990.
The Shanghai No 2 Intermediate People's Court ruled last Thursday that Tan had obtained Malaysian nationality in 1972, according to a Legal Media Group report. Accordingly, said the Court, Crocodile International had rights to the crocodile logo in China that predated those of Lacoste.
Lacoste and Crocodile International have fought over the logos in other parts of Asia over the past 40 years. The two companies have signed agreements allowing each of them to use their respective logos in five other countries in the region, says Legal Media Group, but this does not apply to the lucrative Chinese market.
The French company is considering whether to appeal or even to withdraw from the Chinese market entirely.