Relaxo Footwears Limited (plaintiff) filed a suit seeking a permanent injunction to restrain ‘HRX’/’HRX BY HRITHIK ROSHAN’ (the defendants) and their associates from manufacturing, selling, advertising, or dealing in footwear, apparel, accessories, and other products using the impugned mark or any mark identical or deceptively similar to the plaintiff’s trademark (the ‘plaintiff’s X mark’). Hon’ble High Court Justice Anish Dayal observed that, given the substantial investment by the defendants in developing their brand to be distinctive, it could not be concluded that the defendants dishonestly adopted the plaintiff’s ‘X’ device mark, as it would not serve any substantial purpose.
The court articulated that “It would have been a different situation if both the plaintiff and the defendants were using the ‘X’ device marks purely and simply on their shoes and the packaging without their principal brand names or otherwise listing them as such on online sites without the principal brand names, which is not the case herein. Besides the defendants having been in the market since 2013, i.e., more than a decade, the balance of convenience also leans in their favour.”
Factual Matrix
The plaintiff, a prominent entity in the Indian footwear industry, claims exclusive rights to the ‘X’ mark, derived from its well-established ‘SPARX’ logo. They asserted that the ‘X’ mark had been associated with their footwear products under the ‘SPARX’ brand since 1976. This case focused on a dispute concerning trademark infringement and passing off, specifically relating to the plaintiff’s ‘X’ mark and the defendant’s ‘X’ mark within the context of footwear products.
The defendants, associated with the ‘HRX’ brand, adopted a similar ‘X’ mark for their footwear line. They contend that their ‘X’ mark has been used since 2010 and has always been paired with their principal brand name, ‘HRX’. The plaintiff disputed this, emphasising their prior and extensive use of the ‘X’ mark in connection with their ‘SPARX’ footwear products.
Submissions of the Plaintiff
Plaintiff applied for a trademark for ‘X’ in Class 25 on January 25, 2012, and was granted copyright registration for the ‘SPARX’ label on May 27, 2013. The plaintiff extensively advertised its ‘X’ mark across all media and endorsements to claim its valuable goodwill and reputation. The plaintiff contended that the defendant’s ‘X’ mark was deceptively similar to the plaintiff’s registered trademark for identical goods. The plaintiff’s assertions regarding the similarity of the ‘X’ mark were based on the manner of use, placement of identical products, average consumer test, phonetic and conceptual similarity, and identical class of consumers. The plaintiff argued that the defendant’s ‘X’ mark would cause confusion and association with the plaintiff’s products, eroding the distinctiveness and source identification of the plaintiff’s ‘X’ mark. However, the plaintiff did not assert rights in the letter ‘X’ itself but in its stylistic representation, specifically for footwear and related goods.
Submissions of the Defendant
The defendants’ counsel challenged the plaintiff’s claims, asserting their rights to the ‘X’ mark. Plaintiff does not hold exclusive rights over the letter itself and can, at best, assert rights to a specific creative work, which differs from Defendant’s ‘X’. The defendant argued that the marketplace was saturated with similar marks, and the plaintiff’s agreement with another party, Soccer International Pvt. Ltd., to co-exist in the market weakened their claim to exclusivity. The defendants maintained that their ‘X’ mark was distinct from the plaintiff’s and had been associated with their ‘HRX’ brand since 2010, predating the plaintiff’s registration of the mark.
The defendant adopted the mark in 2010 for a fitness-focused lifestyle brand and subsequently applied for a trademark in Class 25 on January 31, 2011. The defendants provided evidence of consistent sales since 2013 through various news articles and promotional materials, demonstrating significant investment in advertising and promoting their brand.
Delhi High Court Judgement
The Hon’ble High Court of Delhi dismissed the application for an interim injunction to restrain the Defendants from using the ‘X’ mark, noting that both parties used the ‘X’ device alongside their primary trademarks, ‘SPARX’ and ‘HRX’, which prevented consumer confusion. The court emphasised that the plaintiff’s claim to monopolise a stylised ‘X’ device mark was weakened by numerous similar ‘X’ marks on the Trade Marks Register, including those used by Soccer International Pvt. Ltd., with whom the plaintiff had settled. The court noted minor variations in stylisation are inevitable given the simplicity of the ‘X’ design. It highlighted that both the plaintiff and the defendants were not using the ‘X’ mark in isolation but alongside their principal brand names, minimising potential confusion.
The defendants’ earlier trademark application and significant brand investment indicated no dishonest intent. Moreover, the principle of added matter was underscored, highlighting that the primary brand names ‘SPARX’ and ‘HRX’ sufficiently distinguished the products to prevent confusion among consumers. Therefore, the Hon’ble High Court’s decision denied the interim injunction, allowing the defendants to continue using the ‘X’ mark in their footwear sales, reaffirming the importance of distinct branding in mitigating trademark confusion.
Authors: Manisha Singh and Lisha Chauhan
First Published by: Lexology here