The ‘X’ factor in Sparx vs. HRX

By Rima Majumdar and Aishwarya Hariharan

Introduction

A suit was filed by Relaxo Footwears Limited (hereinafter Plaintiff), seeking interim injunction against XS Brands Consultancy Private Limited & Ors (hereinafter Defendants), for using the impugned mark ‘X’ of the Plaintiff. A single judge of the Hon’ble High Court of Delhi, observed that having spent substantially on developing the brand of the Defendants 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.

Brief facts of the case

• Plaintiff filed a lawsuit against the Defendants for trademark infringement, inter alia, from using the mark (Defendants mark/impugned mark) or any other mark identical or deceptively similar to the Plaintiff’s trademark (Plaintiff’s mark). The suit aimed to prevent Defendants from using the ‘X’ marks on its merchandise.

  

• Both the Plaintiff and the Defendants are the registered proprietors of similar trademark ‘X’ (device mark) in identical class of goods, obtaining registration from the Trademarks Registry respectively.
• Both parties are using the mark ‘X’ as a standalone mark on their products in relation to merchandise goods. The Plaintiff’s ‘X’ mark is derived from their ‘SPARX’ Defendant’s brand and trademark is ‘HRX’/ ‘HRX BY HRITHIK ROSHAN’.
• Plaintiff contended that the Defendant’s ‘X’ mark was deceptively similar to its registered trademark of which it claimed ownership, for identical goods.

Submissions of the Plaintiff

• The Plaintiff claims exclusive rights to the ‘X’ mark, which is derived from its well-established ‘SPARX’
• Plaintiff claims to be the prior user of the mark ‘X’ since 1976 in association with its footwear products under the ‘SPARX’
• They applied for a trademark ‘X’ in Class 25 on January 25, 2012.
• Further, the Plaintiff has been granted copyright registration for ‘SPARX’ label on May 27, 2013.
• In order to claim its valuable goodwill and reputation, the Plaintiff has extensively advertised their mark ‘X’ across all forms of media and endorsements.
• Plaintiff contended that the Defendant’s ‘X’ mark was deceptively similar to Plaintiff’s registered trademark of which it claimed ownership, for identical goods.
• Assertions made by the Plaintiff with regard to the similarity of the mark ‘X’ were on manner of use, placement of identical products, average consumer test, phonetic and conceptual similarity in the said marks, identical class of consumers, Defendants ‘X’ mark would cause confusion and association with the Plaintiff’s products, Defendant’s ‘X’ mark erodes distinctiveness and source or identification of the Plaintiff’s ‘X’
• Similarity quotient contended by the Plaintiff is represented as under:

  

• However, the Plaintiff do not assert rights in the letter ‘X’ itself but in its stylistic representation, specifically for footwear and related goods.

Submissions of the Defendant

• The dispute solely concerns the stylization of the letter ‘X’, and the Plaintiff do not hold exclusive rights over the letter itself and at best, might only assert rights to a particular creative work, which differed from Defendant’s ‘X’.
• ‘X’ in the Defendant’s mark stood for “Xtreme” and was derived from Hrithik Roshan’s initials.
• They adopted the mark ‘X’ in 2010 for a fitness-focused lifestyle brand and subsequently applied for a trademark in Class 25 on January 31, 2011.
• The Defendant provided evidence of their consistent sales since 2013 through various news articles and promotional materials by investing significant amounts in advertising and promoting their brand.
• During registration process of the Plaintiff’s mark, the Plaintiff acknowledged that their mark ‘X’ differed from various third-party trademarks featuring the letter ‘X’ and agreed that coexistence in the market was feasible. Various cited ‘X’ marks were dissimilar to its mark as there are stark difference in two visuals of ‘X’
• Third parties have also been using ‘X’ mark for a very long time much prior to the Plaintiff’s adoption of the mark.
• The purchasers pay attention to other features of the respective marks when there are two marks containing a common element, which is also contained in a number of other marks.

Judgement

The Hon’ble High Court of Delhi, while dismissing the application seeking interim injunction restraining the Defendants from using the mark ‘X’ or any other mark identical or deceptively similar to the Plaintiff’s trademark ‘X’, made the following observations:

• The respective ‘X’ device marks of the Plaintiff and the Defendants are not being used in isolation but in conjunction with their respective trademarks ‘SPARX’ and ‘HRX’.
• The consumer is not purchasing product under the mark ‘X’ but for the brand ‘SPARX’ and ‘HRX’ respectively.
• There are numerous possible variations in the stylization of the ‘X’ mark, and given that neither party, relied solely on the ‘X’ device mark as an isolated identifier for their products, but instead sold goods under their primary brand names, confusion among consumers is unlikely to occur. Therefore, there exist no consumer confusion.
• There were a number of ‘X’ marks which were available on the Trade Marks Register including device marks and the Plaintiff had accepted the presence of other ‘X’ device marks in the market. This position further dilutes the Plaintiff’s stand that they were entitled to monopolies on the device mark ‘X’ with the stylization that it had adopted.
• The Defendant’s trademark application in Class 25 was filed in 2011, while the Plaintiff’s application in Class 25 was filed in 2012. The Defendant’s launched their products in 2013. This timeline does not inherently prove that the Defendant acted dishonestly in adopting the mark.
• Given the substantial investment made by the Defendants in developing its brand, it cannot be argued that the Defendant dishonestly adopted the Plaintiff’s ‘X’ device mark solely on their shoes and packaging without their primary brand names or by listing them without the primary brand name on online sites, which is not the case here.
• Principle of added matter – When two marks share a common element that is also present in several other marks used in the same market, consumers tend to pay closer attention to the distinct features of each mark to differentiate between them.
• There is no doubt that the added matter is so prominent as to completely distinguish one product from the other. In such case, there will be no case for confusion whether it be confusion proper, or initial confusion or reverse confusion. In this case, the prominent added matter is considered the main brands, namely ‘SPARX’ and ‘HRX’ respectively, under which the respective products are sold.

Conclusion

The Hon’ble High Court denied Plaintiff’s plea for an interim injunction, thus allowing the Defendants to continue using the ‘X’ mark in its trademark for footwear sales. In doing so, the Hon’ble Court yet again laid down the law pertaining to principle of added matter.

This decision affirms the principle that the presence of common elements in multiple trademarks in the same market can cause purchasers to pay more attention to the distinct features of each trademarks. It is no doubt that the same position is well-recognized by the Hon’ble High Court of Delhi. Particularly in cases where there is a significant number of trademarks in the relevant market that share common element, the principle of added matter can be applied when assessing the likelihood of confusion between two trademarks with a common element. It is pertinent to point out that, in the present case, the situation may have turned out differently if both parties had only used the ‘X’ device marks on their shoes and packaging, or if they had been presented solely with those marks on websites without the presence of their primary brand names.