Whose mark got the ‘X’ Factor? Relaxo Footwear vs XS Brands

The present suit was filed by the Plaintiff, Relaxo Footwears Limited, seeking a permanent injunction against the Defendants including XS Brands Consultancy Private Limited, to restrain them from using the device mark Pictureunder the trademark “HRX/ HRX BY HRITHIK ROSHAN” or any other mark identical or deceptively similar to Relaxo’s device mark Picture.

Relaxo’s Submissions:

Relaxo claimed prior use of the mark since 1976 in the sale and manufacture of footwear. To substantiate this claim, they submitted newspaper advertisements and invoices dating back to 2006 under the ‘SPARX’ brand. Relaxo asserted rights in the stylistic representation of the letter ‘X’. They argued that XS Brands’ mark was similar based on several factors, including XS Brands’ allegedly dishonest adoption of the mark and the erosion of distinctiveness and source identification associated with Relaxo’s mark.

XS Brands’s Submissions:

XS Brands asserted that their trademarks ‘HRX’ and the ‘X’ device mark were adopted in 2010 as a sportswear brand, supported by evidence of use since 2013. They highlighted their substantial investment in brand development and emphasized that there had been no instances of consumer confusion over the past decade.

XS Brands countered that the stylization of the letter ‘X’ was a minor variation that did not involve significant creativity. They argued against Relaxo’s purported monopoly over the letter ‘X’, pointing out the crowded marketplace of similar marks. XS Brands also noted that Relaxo’s ‘X’ device mark lacked standalone recognition beyond the ‘SPARX’ brand. They referenced Relaxo’s settlement with Soccer International Pvt Ltd, where both parties using similar ‘X’ device marks had agreed to co-exist in the market, suggesting that Relaxo should be estopped from claiming exclusive rights. XS Brands highlighted discrepancies in Relaxo’s stance regarding the similarity of various ‘X’ device marks, as evidenced in Relaxo’s examination report, alleging inconsistent assertions by Relaxo.

Court’s Analysis:

The Hon’ble Court dismissed the case, stating that Relaxo was not entitled to injunction for the following reasons:

  • Both parties use their respective ‘X’ device marks in conjunction with their trademarks (‘SPARX’ and ‘HRX’), applying them only to specific parts of footwear. This limited application meant that consumers were unlikely to mistake the source of its products.
  • The Trademarks Register includes numerous ‘X’ device marks, and Relaxo’s settlement with Soccer International Pvt Ltd regarding co-existence further undermined their claim of exclusive rights to the ‘X’ device mark.
  • The Court found that XS Brands’ ‘X’ mark was dissimilar to Relaxo’s, and Relaxo failed to demonstrate third-party attempts to counterfeit their products. Both parties were using their respective stylizations with added matter.
  • XS Brands’ extensive investment in developing their brand over more than a decade supported the conclusion that their adoption of the ‘X’ mark was not deceptive or dishonest.

Citation: Relaxo Footwears Limited vs XS Brands Consultancy Private Limited & Ors. High Court of Delhi, 03rd May 2024, [CS(COMM) 917/2018 & I.A. 14711/2019]

Drafted by Ms. Bhavishya Bheemineni, IP Renewals and Maintenance Team, BananaIP Counsels

Reviewed and confirmed by Ms. Benita Alphonsa Basil, Trademarks Team, BananaIP Counsels

 

Disclaimer

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