Relaxo Footwears Limited (Relaxo) brought an action against XS Brands Consultancy Private Limited & Ors (XS Brands). Relaxo relying on its rights in the device/mark seeks to restrain XS Brands from using the mark in relation to footwear. Relaxo does not claim any rights per se over the letter ‘X’ but only in the stylised representation of the X mark.

Relaxo seeks injunction on the following grounds:

1. The mark is derived from the SPARX logo and is used in a standalone manner in relation to footwear.
2. XS Brands use of a deceptively similar mark in relation to identical goods under the HRX brand would result in confusion, passing off and dilution of Relaxo’s rights.
3. Thay are the prior user of the mark having been engaged in the manufacture of footwear since 1976. Documents evidencing long use of the mark have been filed in support.
4. They have acquired goodwill and reputation in the device on account of extensive sales and substantial promotions across all media.
5. The mark is inherently distinctive and adoption of a deceptively similar mark by XS Brands in relation to identical goods is not honest.
6. XS Brands have applied for registration of the mark in other classes though not in class 25.
7. Confusion is imminent considering the appearance, manner of use, placement on identical products, phonetic and conceptual similarity, identical consumers, trade channels, etc.
8. The claim that the brand HRX was created on the attributes of the Bollywood actor Hrithik Roshan is not correct as the actor has confirmed that he does not own but is only endorsing the brand.

VS Brands counters the injunction on the following:

1. The issue revolves around the stylization of ‘X’ which is a minor variation, and in any case, stylization of the letter ‘X’ would not allow too much ingenuity.
2. Relaxo has not disclosed to the Court that there are several users of similar marks in the marketplace.
3. Relaxo ought to have disclosed the agreement they have entered with an entity, Soccer International Pvt. Ltd, whereby both parties agree not to oppose each other’s trademark applications for ‘X’ device marks. Having agreed to co-exist with another similar device in the same class Relaxo is precluded from claiming exclusivity in the said device.
4. They adopted the HRX and the X mark in the year 2010 for a lifestyle brand based on fitness and the mark has been in extensive use since 2013 as evidenced by the documents. The X mark is derived from the ‘HRX’ mark, representing ‘extreme,’ which is commonly used in the context of sportswear.
5. is used along with the main brand SPARX and there is no standalone reputation for the X device.
6. Relaxo is guilty of approbation and reprobation as they had at the time of registration of the mark stated that it was different from other X devices and could co-exist in the market.
7. There are several entities using the ‘X’ device and parties who are even prior users which precludes Relaxo from claiming any exclusivity in the ‘X’ device.
8. There will be no confusion as both the parties use their primary trademarks ‘SPARX’ and ‘HRX’ on their products and the respective ‘X’ marks are used along with the primary trademarks.

After considering the pleadings, arguments, and case laws the Court held:

1. In the instant case admittedly Relaxo and XS Brands use their respective trademarks SPARX and HRX along with the ‘X’ device. The ‘X’ device marks are only placed on certain parts of the shoe/footwear and not used as standalone identifiers. Thus, there is no chance of confusion for a consumer in the first place.
2. Documents on record evidence that there are several ‘X’ marks, including device marks on the Register. In this regard, Relaxo has also entered into an agreement with Soccer International Pvt. Ltd to co-exist in relation to X device marks. This further weakens their position in claiming exclusive right to use the X device mark in the specific stylization they adopted.
3. Relaxo contends that it is not claiming exclusive rights over the use of the letter ‘X’, but only in its stylization. However, as there are several possible stylizations of ‘X’, and neither Relaxo nor VS Brands uses the ‘X’ device mark alone to identify their products, but rather in conjunction with their main brand names, confusion is unlikely to occur.
4. VS Brands launch of the product in the year 2013 does not, by itself, indicate dishonest adoption. They developed the distinctive mark and brand ‘HRX’ and ‘HRX BY Hritik Roshan’ with a unique identity and celebrity endorsement from actor Hrithik Roshan. According to the written statement, the mark ‘HRX’ was created from the first letters of ‘Hrithik’ and ‘Roshan’ combined with the word ‘Extreme’.
5. Given their significant investment in developing a distinctive brand, it cannot be said that VS Brands dishonestly adopted the ‘X’ device mark. In the instant case both parties use their primary brands with the ‘X’ device. Moreover, as VS Brands has been in the market for over a decade, balance of convenience is also in their favour.

Considering the above findings the Court dismissed the injunction application filed by Relaxo.

Comment

The Court’s ruling and facts of the case brings out challenges in protecting alphabet as identifying feature and source indicator of a product.