Delhi High Court Dismisses Relaxo's Plea Against HRX's Use Of 'X' Mark In Trademark For Footwear

The Delhi High Court has dismissed a plea by leading footwear manufacturer Relaxo, which sought to prevent HRX from using the 'X' mark in its trademark for selling footwear.

Justice Anish Dayal, presiding over the case, denied the interim injunction application filed by Relaxo. He rejected Relaxo's claim that the 'X' used by HRX appeared deceptively similar to the 'X' used by Relaxo's Sparx brand of footwear.

Justice Dayal held that, given the substantial investment in developing their brand to be distinctive, it cannot be concluded that the defendants dishonestly adopted the plaintiff's 'X' device mark, as it would not serve any substantial purpose.

Justice Dayal observed, “stated 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 now since 2013 i.e. more than a decade, the balance of convenience also leans in their favour.”

“In view of the above discussion, this application under Order XXXIX Rules 1 & 2 of the CPC is dismissed. It is made clear that these observations are prima facie at this stage since the trial is yet to commence,” Justice Dayal added.

The case involved a dispute over trademark infringement and passing off, centered on two distinctive marks: the plaintiff's 'X' mark and the defendants' 'X' mark, both related to footwear products.

The plaintiff's counsel alleged that the defendants' adoption of a mark similar to theirs has caused confusion, passing off, and dilution of their trademark. They argued that the defendants' use of the 'X' mark on footwear products is deceptively similar to their own, leading to consumer confusion. The plaintiff presented evidence of their extensive use of the mark, significant investment in marketing and promotion, and the substantial market presence and goodwill associated with their mark.

In response, the defendants' counsel contested the plaintiff's claims, asserting their own rights to the 'X' mark. They argued that the market is saturated with similar marks and that the plaintiff's agreement with Soccer International Pvt. Ltd. to co-exist in the market weakens their claim to exclusivity. The defendants maintained that their 'X' mark, used in conjunction with their 'HRX' brand since 2010, is distinct from the plaintiff's mark and was established before the plaintiff registered their mark.

The Court evaluated the similarities and differences between the marks, the extent of consumer confusion, the existence of prior agreements, and the parties' conduct.

The Court noted that although there are similarities between the marks, the use of the 'X' mark by both parties alongside their principal brand names reduces the likelihood of consumer confusion. Additionally, it acknowledged prior agreements and the competitive nature of the marketplace for similar marks.

The Court remarked, "Having spent substantially on developing their brand to be distinctive, it cannot be said that the defendants have dishonestly adopted the plaintiff's 'X' device mark, since it would not be of any substantial purpose. 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 now since 2013 i.e. more than a decade, the balance of convenience also leans in their favour."

"The plaintiff had clearly stated that it was not claiming monopoly over the use of the letter 'X' but only in its stylization. However, difference in stylization of 'X' could be various and numerous, and considering that neither of these companies including the plaintiff and the defendants were using the 'X' device mark as an isolated identification for their products, but instead selling goods under the principal brand names, the confusion would not arise," the Court underscored.

Consequently, the Court dismissed the plaintiff's application for a permanent injunction, concluding that the plaintiff had not sufficiently demonstrated a likelihood of confusion or that the defendants had dishonestly adopted the mark.

Case Title: Relaxo Footwears Limited v XS Brands Consultancy Private Limited & Ors

Citation: 2024 LiveLaw (Del) 603

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