[SPARX v HRX] Delhi High Court refuses injunction against Hrithik Roshan’s XS Brands Consultancy for using mark ‘X’

Delhi High Court

Delhi High Court: A suit was filed by Relaxo Footwears Limited (plaintiff), seeking permanent injunction restraining the ‘HRX’/‘HRX BY HRITHIK ROSHAN’ (defendants) and all those acting for/on their behalf from manufacturing, selling, advertising, dealing with, in any manner footwear, apparel, accessories, and other products using the mark (‘impugned mark’ or ‘defendants’ X mark’) or any other mark identical or deceptively similar to the plaintiff’s trademark (‘plaintiff’s X mark’). Anish Dayal, J., held that 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.

The Court 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.”

The case revolves around a dispute over trademark infringement and passing off concerning two distinctive marks, referred to as the plaintiff’s ‘X’ mark and the defendants’ ‘X’ mark, within the context of footwear products. The plaintiff, a significant player in the Indian footwear industry, asserts its rights over the ‘X’ mark, derived from its ‘SPARX’ logo, which has been extensively used in relation to its footwear products under the ‘SPARX’ brand since 1976. On the other hand, the defendants, associated with the ‘HRX’ brand, have adopted a similar ‘X’ mark for their footwear line.

Counsel for the plaintiff alleged that the defendants’ adoption of a mark similar to theirs has led to confusion, passing off, and dilution of their trademark. They argued that the defendants’ ‘X’ mark, used as a standalone mark on footwear products, is deceptively similar to their own and causes consumer confusion. The plaintiff presented evidence of their extensive use of the mark, along with substantial investment in marketing and promotion, highlighting their significant market presence and goodwill associated with the mark.

Counsel for the defendants contested the plaintiff’s claims, asserting their own rights over the ‘X’ mark. They argued that the marketplace is crowded with similar marks and that the plaintiff’s agreement with another party, Soccer International Pvt. Ltd., to co-exist in the market, undermines their claim to exclusivity. The defendants contended that their ‘X’ mark is distinct from the plaintiff’s and has been used in conjunction with their ‘HRX’ brand since 2010, well before the plaintiff’s registration of the mark.

The Court examined the similarities and differences between the marks, the extent of consumer confusion, the existence of prior agreements, and the conduct of the parties. The Court observed that while there are similarities between the marks, the use of the ‘X’ mark by both parties in conjunction with their principal brand names mitigates the likelihood of confusion among consumers. It also noted the existence of prior agreements and the crowded marketplace for similar marks. In its analysis, the Court applied relevant legal principles and precedents to determine the merits of the case. It considered factors such as consumer perception, market practices, and the conduct of the parties in arriving at its decision.

Thus, the Court dismissed the plaintiff’s application for a permanent injunction concluding that the plaintiff has not sufficiently demonstrated the likelihood of confusion or the defendants’ dishonest adoption of the mark.

[Relaxo Footwers Limited v. XS Brands Consultancy Private Limited, 2024 SCC OnLine Del 3434, decided on 03-05-2024]

Advocates who appeared in this case :

Mr. Saif Khan, Mr. Shobhit Agarwal and Mr. Prajjwal Kushwaha, Advocates for plaintiff

Mr. Chander M. Lall, Sr. Adv. with Mr. Ankur Sangal, Ms. Pragya Mishra, Mr. Shaurya Pandey and Mr. Abhinav, Advocates before defendants

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