The High Court of Delhi has recently, in a suit for injunction filed by Relaxo Footwears Limited (“Plaintiff”), refused to restrain XS Brands Consultancy Private Limited & Ors (“Defendants”) from using the device mark X on footwear.
The suit was based on the Plaintiff’s earlier rights in its registered device mark “X” used under its SPARX brand. It was the Plaintiff’s case that the Defendants adopted the mark with sole purpose of identifying source or origin of the Defendants’ footwear under the mark X with the Plaintiff and the Defendants use of the mark X on footwear in a similar stylization infringed on the Plaintiff’s rights in its X mark, erodes the distinctiveness of its X mark, leads to confusion, misrepresentation, and tarnishes their goodwill.
The Defendants argued that the Plaintiff does not have exclusive rights over the letter and the stylization claimed, and that the rival marks are different. The Defendants also argued that the Plaintiff had at the prosecution stage of the application to register the mark X argued dissimilarity of its mark from other third-party X marks and the Plaintiff cannot now claim that the rival marks are similar. The Plaintiff rebutted the Defendants claims and clarified that they do not claim exclusive rights on the letter 'X' per se but on the stylization and representation in their footwear.
The court agreed with Defendants and rules that since the Plaintiff has acknowledged the presence on of other “X” device marks in the market, it is now estopped from taking a contradictory stand. The court also ruled that Defendants' substantial investment in brand development makes it unlikely that they have dishonestly adopted “X” device mark. The court established the principle of “added matter”, under which, when two marks share a common element found in multiple other marks in the same market, consumers tend to focus more on the unique features of their respective brands. The court, applying this principle to the case, ruled that, since the rival marks are not being used in isolation but in conjunction their respective brands “SPARX” and “HRX”, a case for likelihood of confusion is not made out.
Relaxo Footwears Limited vs. XS Brands Consultancy Private Limited & Ors, CS (COMM) 917/2018, Judgement dt. on May 03, 2024. Click here to access the judgement copy.
Comments