The wrestling between two companies for ownership of a crocodile logo on the Chinese mainland seems far from over as a recent verdict made by a Shanghai court failed to quiet down the dispute.

In March 2002, Singapore-based Crocodile International sued French retail giant La Chemise Lacoste for copyright infringement at the Shanghai No 2 Intermediate People's Court.

The case was lodged after Lacoste applied in 1995 to register a left-facing crocodile with the trademark office of China's State Administration for Industry and Commerce.

It is not the first time the two companies have met in court as their trademarks, all featuring a green reptile, one facing left and the other right, have resulted in non-stop legal rows.

In 2000, 2003 and 2004, the French company filed four lawsuits against the Singapore company in Beijing and Shanghai for infringement of its registered trademark.

But none of the lawsuits has been resolved to date.

Sources with the Beijing No 2 Intermediate People's Court said the court accepted Lacoste's lawsuit against Crocodile International on trademark infringement last October but no hearing has been held yet.

Lacoste registered its right-facing crocodile in 1933 in France and then in China in 1980.

Malaysian Tan Hian Tsin created a logo of a left-facing crocodile in 1947 and the logo was registered as a trademark in 1951 in Singapore.

In 1986, Tan transferred his crocodile trademark to Crocodile International. In 2000 he applied to the National Copyright Administration of China and was granted a copyright certificate for the logo.

The Shanghai No 2 Intermediate People's Court ruled on March 25 that the Lacoste's left-facing crocodile, which is identical to the Singapore company's trademark, is an infringement of Tan's copyright.

According to the verdict, Lacoste is required to stop the infringement, apologize, and pay Crocodile International US$1 as compensation, as demanded by the Singapore company.

On April 21, Lacoste appealed to the court asking the lawsuit filed by Crocodile International be dismissed and the verdict withdrawn.

At the same time, the French company argued that the Singapore crocodile design plagiarizes that of its own right-facing reptilian logo.

Huang Hui, one of Lacoste's attorneys, said the judgment deserves a review.

Huang argued that Lacoste's move to apply for left-facing crocodile design in 1995 cannot give rise to a civil claim, because the company has never used the controversial design.

After Lacoste's application, the logo was publicized in the gazette of the trademark office for the attention of any prior rights owner, who can then oppose the application.

Huang said since the Singapore company did oppose the application after the publication and a decision is still pending.

If the Singapore company's opposition turns out to be valid, the trademark will not be registered for Lacoste, Huang said. In that case, the plaintiffs will have absolutely no legal basis for a separate civil action against Lacoste, he added.

Huang said that the Singapore company's copyright case was just a tactic aimed at diverting public attention from the fact that it is involved in trademark infringement cases pending in China.

Meanwhile, Lacoste will lodge additional lawsuits against Crocodile International and those involved in making or selling goods with a crocodile image similar to the Lacoste registered trademark, according to a statement of the company.

As long as Crocodile International continues using a crocodile image similar to Lacoste registered trademark, Crocodile International is not a competitor, but an infringer, the statement says.

However, Crocodile International says that it does not want a copyright war between the two companies.

The logos used by the two companies, both of which have long histories and great reputation, will not cause confusion among consumers, said Crocodile International's attorney Tao Xinliang.

"But since Lacoste continues to file the lawsuits, we will have no choice but respond," he said, adding that the copyright lawsuit against Lacoste in Shanghai was an example to show the commitment of the Singapore company to protect its rights.

Tao said what lies behind the lawsuits is the market.

Lacoste didn't make the first lawsuit against the Singapore company until 2000, when Crocodile International had been present on the Chinese mainland for years.

"It is just not fair that Lacoste wants to take away the market on the Chinese mainland after Crocodile International has taken the pains and efforts to expand the crocodile logo here," Tao said.

The Singapore company now has some 1,000 speciality shops and sales outlets on the Chinese mainland. Its global sales last year amounted to US$313 million with China occupying 35 per cent of that amount, higher than its shares in Singapore.

In comparison, Lacoste, which started selling its products on the Chinese mainland in 1984, has opened 24 speciality shops and 102 sales countrywide so far.

Before they fought for the ownership of crocodile logo on the Chinese mainland, the two companies had already wrestled in Japan and some Southeast Asian countries and regions.

In 1971, the Singapore company, owner of the crocodile trademark rights in Japan, sued Lacoste, which also tried to register its logo there. The result was that Lacoste agreed to modify its logo.

In 1983, Crocodile International registered the crocodile logo as trademark in Singapore, Malaysia, Indonesia, Brunei and China's Taiwan ahead of Lacoste.

An agreement was reached later. Lacoste, acknowledging Crocodile International's ownership of the crocodile trademark in these countries and regions, agreed to pay US$1 million to the Singapore company for selling goods with a crocodile logo in these countries and regions.

But the agreement does not include the Chinese mainland.

Lacoste had also had a dispute with a Hong Kong company that uses a similar crocodile.

The Beijing Higher People's Court last October approved a conciliation reached by Lacoste and Hong Kong-based Crocodile Garments Ltd.

According to the agreement, the Hong Kong company should stop using the current trademark after March 31, 2006, while Lacoste agreed that the Hong Kong company could have the monopoly over a new symbol from that date.

But the symbol cannot be in the same green colour used in the Lacoste image.

The two companies also vowed to launch joint efforts to fight against pirated products and seek full support from the Chinese Government and judicial organizations.

(China Daily 05/17/2004 page5)
 
              

2013-07-17