RELAXO FOOTWEARS LIMITED vs XS BRANDS CONSULTANCY PRIVATE LIMITED & ORS.

* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on: 15th April, 2024
Pronounced on: 03rd May, 2024
+ CS(COMM) 917/2018 & I.A. 14711/2019
RELAXO FOOTWEARS LIMITED ….. Plaintiff
Through: Mr. Saif Khan, Mr. Shobhit Agarwal and Mr. Prajjwal Kushwaha, Advs.
versus
XS BRANDS CONSULTANCY PRIVATE LIMITED & ORS.
….. Defendants
Through: Mr. Chander M. Lall, Sr. Adv. with Mr. Ankur Sangal, Ms. Pragya Mishra, Mr. Shaurya Pandey and Mr. Abhinav, Advs.
CORAM:
HON’BLE MR. JUSTICE ANISH DAYAL

JUDGMENT
ANISH DAYAL, J.
I.A. 14711/2019 (Application under Order XXXIX Rules 1 & 2, CPC)
1. This application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 [‘CPC’] has been filed as part of the suit filed by plaintiff seeking permanent injunction restraining the 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’] and other attendant relief.
Factual Background
2. Plaintiff’s X mark is derived from their ‘SPARX’ logo and has been used in a standalone form in relation to its footwear products sold under the ‘SPARX’ brand. Plaintiff’s grievance is against the defendants who started using defendants’ X mark, which was deceptively similar, for footwear as well, being identical goods. Defendants’ brand and trademark is ‘HRX’/‘HRX BY HRITHIK ROSHAN’ and the defendants’ X mark has been used as a standalone mark on their products causing confusion, passing off, and dilution of the plaintiff’s mark. Representations of the rival marks, the placement, and actual use on the products have been tabulated by the plaintiff as under:

Submissions on behalf of the Plaintiff
3. Mr. Saif Khan, counsel for plaintiff claimed that plaintiff has the following registration:
TRADEMARK

APPLICATION NO.
2271841
CLASS
25
USER CLAIMED SINCE
01st April, 2002
APPLIED ON
25th January, 2012
REGISTERED ON
28th June, 2019

4. Plaintiff claims prior user of the mark, being engaged in manufacture and sale of footwear since 1976 and, as of today, claims to be one of the largest producers of footwear in India, manufacturing over 4 lakh pairs every day and over 12 crores pairs in a calendar year. To substantiate and prove user by the plaintiff, advertisements appended in the suit documents for the year 2006 onwards have been relied upon. One such advertisement is extracted herein for ease of reference:

5. Invoices showing sales since August 2005 have also been relied upon which are the advertisement bookings in various newspapers for the product ‘SPARX’. As opposed to this, it was submitted that the defendants launched their products in November 2013 under the ‘HRX’ brand and the use of the defendants’ X mark came up much later. Some other invoices were also relied upon from the year 2005 which showed sales of products under the brand ‘SPARX’.
6. In addition, plaintiff also has the following copyright registration:
LABEL
‘SPARX’
REGISTRATION NO.
A-100638/2013
APPLIED ON
07th December, 2011
GRANTED ON
27th May, 2013

7. Plaintiff, thus, claims valuable goodwill and reputation in plaintiff’s X mark stating that they have extensively advertised the same in all forms of media, including celebrity endorsements. Plaintiff claims to have spent large amounts of money towards marketing and promotion, stating that the sales of the products marked with plaintiff’s X mark run into massive annual sales, upwards of Rs.500 Crores in the Financial Year 2015-2016. Plaintiff’s X mark is claimed to be inherently distinctive and entitled to highest level of protection. Defendants, on the other hand, had dishonestly adopted the plaintiff’s X mark by using a similar device mark.
8. It was clarified that the plaintiff was not claiming any rights per se over the letter ‘X’ but only in the stylistic representation thereof, and use in relation to footwear and related goods. It was further clarified that plaintiff was only concerned about footwear products and did not have any issue relating to other products. Counsel for plaintiff submitted that a unique mark is usually adopted for shoes like the device mark adopted by Nike , Adidas , and New Balance . While defendants had applied for their X mark in other classes, it had no registration in Class 25, and their earliest invoice as per their own documents was of January 2014. It was, therefore, submitted that the similarity of marks was evident from – first, a perusal of the said marks; secondly, the manner of use; thirdly, placement on identical products; fourthly, the average consumer would not be able to notice any marginal differences; fifthly, there was phonetic and conceptual similarity in the said marks; sixthly, the class of consumers would be identical i.e. for footwear; seventhly, defendants’ adoption is evidently dishonest having used of the plaintiff’s ‘X’ mark; eighthly, there is no other footwear brand of repute using such a stylized mark; ninthly, defendants’ X mark would cause confusion and association with the plaintiff’s products; tenthly, an initial interest confusion would be caused to a potential consumer in view of both the products; and lastly, defendants’ X mark erodes distinctiveness and source of identification of the plaintiff’s X mark.
9. It was pointed out that despite the defendants’ claim that their brand ‘HRX’ had been created from the attributes of the Bollywood Actor Hritik Roshan (originally defendant no.4 in the suit and deleted later from the array of parties), the actor himself filed an affidavit dated 5th November, 2019 stating that the brand ‘HRX’ was not his and he was only endorsing the same.
Submissions on behalf of the defendants
10. Mr. Chander M. Lall, Senior Counsel, on behalf of the defendants, refuting submissions made by the plaintiff’s counsel, stated that the issue was only relating to stylization of ‘X’ which was an extremely small variation and, in any event, stylization of the letter ‘X’ would not allow too much ingenuity. He contended that plaintiff could not have a monopoly over the letter ‘X’ which, in any case, they do not seek. There are numerous uses of the mark ‘X’ on products and plaintiff had not disclosed to the Court that the marketplace was crowded with such marks.
11. Attention was particularly drawn to a settlement that the plaintiff had arrived at with one ‘Soccer International Pvt. Ltd’ [‘Soccer International’]. where both parties had agreed to mutually co-exist in the market and not oppose each other’s trademark applications for ‘X’ device marks. The marks of plaintiff previously opposed by Soccer International, and that of Soccer International previously opposed by plaintiff were annexed by the defendants; extracted as follows:

12. Senior Counsel strongly asserted that plaintiff should have disclosed this agreement to the Court which estopped them from claiming that the ‘X’ device mark was their own and no one else could have a right over it. Having agreed to co-exist with another similar device mark in the same Class 25, it would not lie in the mouth of the plaintiff to assert exclusivity. Reliance in this regard was placed on the decision in Corn Products Refining Company v. Shangrila Food Products Ltd., AIR 1960 SC 142.
13. The defendants adopted the trademark ‘HRX’ and defendants’ X mark in the year 2010 for the lifestyle brand dedicated towards fitness. The products were launched in the year 2013 for which reliance was placed on news articles annexed in the defendants’ documents. The device mark had been carved out from defendants’ ‘HRX’ mark, standing for “extreme”, which is commonly used in the context of sportswear.
14. Defendants applied for the registration of their device mark ‘X’ as follows:
TRADEMARK

APPLICATION NO.
2092193
CLASS
25
USER CLAIMED SINCE
01st May, 2010
APPLIED ON
31st January, 2011

15. The defendants have been selling their products since 2013 for which various news articles, promotional materials were appended as part of the defendants’ documents. It was submitted that there was no document filed by the plaintiff to show that any consumer had been confused between the products of the respective parties in the last 10 years. It was reiterated that the ‘X’ device marks are used in relation with the plaintiff’s main trademark and brand ‘SPARX’ and there is no standalone reputation of the device mark of the plaintiff’s ‘X’ mark. All invoices, sales figures, and advertisements are in relation to the trademark ‘SPARX’ and no invoice mentions the plaintiff’s ‘X’ mark. The use by the plaintiff of its mark on few shoes:

16. Plaintiff, while registering its ‘X’, mark admitted that the mark was different from various third party’s ‘X’ trademarks and could co-exist in the market. The marks cited during the registration of the plaintiff’s mark were tabulated by the defendants as under:

17. The defendants placed on record the search report for the ‘X’ label mark by the Registry as part of the examination report to the plaintiff’s mark. The extract is reproduced as under:

18. In the reply to the examination report, the plaintiff had commented that various cited ‘X’ marks were dissimilar to the applicants’ mark. The said reply is extracted as under:

19. The plaintiff, therefore, cannot approbate and reprobate, having stated that various ‘X’ devices were dissimilar to their mark. In any event, this minor variation in ‘X’ should be permissible.
20. Therefore, it was claimed by Senior Counsel for defendants that this was a crowded marketplace and the plaintiff would have to discharge the burden of proof to show that these ‘X’ marks are not being utilized by the parties.
21. The dissimilarities between the two marks were also brought out by Senior Counsel for defendants. There were stark differences in the two visuals, as per them. The defendants had provided the following table to articulate their points of differences, extracted hereunder for ease of reference:
Plaintiff
Defendants

* Straight First line of X
* Tilted Second Line of X
* Flat ending on the top right
* No taper from left to right
* Single block left to right
* No tilt
* First line tilted in the manner in which the alphabet X is commonly written
* Second line titled in the manner in which the alphabet X is commonly written
* Sharp ending on top right
* A marked taper from left to right
* Multicolour two lines from bottom to top

22. Senior Counsel for the defendants also pointed out that third parties were in fact using the said mark as is evident from the listings on Amazon and other sites. As an illustration, for the brand ‘X-STEP’ and ‘PAYNTR-X’ and ‘VECTOR-X’, the following Amazon listings were shown as under:

23. It was also pointed out in relation to ‘VECTOR-X’ that they had stated that they entered India in 1999 under the said brand and ‘X-STEP’ in 1987. It was, therefore, submitted that these ‘X’ device marks had prior user and, therefore, the plaintiff could not claim any exclusivity in that regard. Moreover, the registration application by the defendants was made in 2011 while the registration application of the plaintiff was made in 2012. Besides, it was argued that there was no balance of convenience in favour of the plaintiff since the defendants had been using the trademark for over 10 years and had built goodwill and reputation in the said mark. Furthermore, there was no scope of confusion between the products as they both use their primary trademarks ‘SPARX’ and ‘HRX’ on their products and the respective ‘X’ marks were only used along with the same.
24. Senior Counsel for defendants relied upon the following decisions in support of their arguments:
24.1 Corn Products Refining Company v. Shangrila Food Products Ltd., AIR 1960 SC 142 on the issue of two marks containing a common element which is also contained in a number of other marks and, therefore, causes purchasers to pay attention to other features of the respective marks. This reliance was placed on the “other features” test.
24.2 J.R. Kapoor v. Micronix India, 1994 Supp (3) SCC 215 which was an issue between ‘MICRONIX’ and ‘MICROTEL’ where the word ‘M’ was used as part of the logo where the Hon’ble Supreme Court stated that the visual effect of both the logos cannot be the same on the minds of the users;
24.3 Renaissance Hotel Holdings Inc. v. B. Vijaya Sai &Ors., (2022) 5 SCC 1, where reliance was placed on para 48 of the said decision.
24.4 Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, 1964 SCC OnLine 14 where reliance was on para 29 of the decision.
24.5 Intex Technologies v. AZ Tech, 2017 SCC OnLine Del 7392 where reliance was placed on para 31 and 32.
24.6 On the aspect of use by third parties, reliance was placed on Premiere SPG and WVG Mills Pvt. Ltd. v. Football Association Premiere League Ltd. & Anr., 2024:DHC:427 where it was stated that the appellant therein could not have a monopoly over the word ‘PREMIERE’ considering it is a word of general use;
24.7 Vasundhara Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadwani, 2022 SCC OnLine Del 3370 in particular para 38 to 41.
24.8 On concealment by the plaintiff of fact, reliance was placed on S.K. Sachdeva &Anr. v. Shree Educare Ltd. &Anr., 2016 SCC OnLine Del 6708 where reliance on para 17 and 18.
24.9 On balance of convenience, reliance was placed on Colgate Palmolive India Ltd. v. Hindustan Lever Ltd., (1999) 7 SCC 1 wherein guidelines for grant of interlocutory injunction had been culled out in para 24.

Submissions in Rejoinder on behalf of the Plaintiff
25. Counsel for plaintiff dealt with the issue of their settlement with Soccer International for the ‘X’ device mark stating that it was a different device and the said entity was not a big player. Even otherwise, agreement to co-exist with a third party does not take away the right in itself of the plaintiff. Further, there were no third parties who had a prior user than that of the plaintiff. Reliance was placed on Pankaj Goyal v. Dabur India Ltd., 2008 SCC OnLine Del 1744 to substantiate that private settlement with the third party cannot offer license to use the same wherein para 24 of the said decision was highlighted which in turn relies upon the decision in Prakash Roadline v. Prakash Parcel Service, 42 (1992) DLT 390.
26. Moreover, the 2011 application that the defendants were referring to as being prior to that of the plaintiff was in Class 18 and not Class 25. Moreover, the Act does not recognize the concept of a crowded marketplace, for this reliance was placed on para 32 of the decision in Under Armour Inc. v. Aditya Birla Fashion & Retail Ltd, (2023) 300 DLT 573.
27. Reliance was also placed on Glaxosmithkline Pharmaceuticals Ltd. v. Horizon Bioceuticals Pvt. Ltd., 2023:DHC:2390 where it was noted by the Court that “common to register” is qualitatively different from “common to trade” and that one may register a mark and leave it unused or at best make sporadic appearances. Such registrations do not divest the mark of distinctiveness to disentitle the plaintiff to an injunction.
28. Reliance was also placed on Automatic Electric Ltd. v. R K Dhawan & Anr., 77 (1999) DLT 292 on the proposition that if defendant itself ascertained rights in the trademark, it cannot contend that the trademark is generic or common. Reliance was further placed on Swiss Bike Vertriebs GMBH Subsidiary of Accell Group v. Reliance Brands Ltd., 2024:DHC:1884 to contend that estoppel can only apply inter se parties and not with regards to third parties.
Sur Rejoinder by the Defendants
29. Senior Counsel for the defendants placed a short sur rejoinder stating that – firstly, the amended plaint was filed in December 2019 and settlement with a third party was still not disclosed; secondly, that the 2011 application was indeed in Class 25; thirdly, that there was a different enforcement criteria for device mark; fourthly, it was agreed that ‘X’ had to be disregarded by the plaintiff since it was common to market place, and, therefore, other features would have to be seen as per Corn Products (supra); fifthly, the decision in Under Armour (supra) was distinguished on crowded market place stating that its concept was not rejected on law but only rejected on facts; sixthly, the decision in Glaxo Smith Kline (supra) was distinguished on the basis of para 7.2.9; and lastly, reliance was made on Pankaj Goyal (supra) in particular para 23 stating that that was not a case of permitted use but a settlement agreeing to co-exist.

Analysis
30. Having considered the submissions by the counsel and perused the documents on record, this Court is of the opinion that the plaintiff is not entitled to the injunction for inter alia the following reasons:
30.1 The respective ‘X’ device marks of the plaintiff and the defendants are being used not in isolation but in conjunction with their respective trademarks ‘SPARX’ and ‘HRX’. It is evident that the consumer is not purchasing a product under the mark ‘X’ but for the brand ‘SPARX’ and ‘HRX’, respectively. The confusion, therefore, does not arise in the first place for a consumer. The ‘X’ device marks are only placed on certain parts of the shoe/footwear by the respective companies. The question of it being mistaken for an isolated device mark to identify the source of goods does not arise.
30.2 A perusal of the mark cited in examination of the plaintiff’s registration show that there were a number of ‘X’ marks which were available on the Trade Marks Register including device marks. With regard to one of these device marks being used by Soccer International Pvt. Ltd., the plaintiff did enter into a settlement and agreed to co-exist. Even though the plaintiff’s assertion is that they were not big players, it goes to show that the plaintiff had accepted the presence of other ‘X’ device marks in the market. This would dilute the plaintiff’s unqualified stand that they were entitled to monopolise on the device mark ‘X’ with the stylization that it had adopted. There was no palpable difference between the plaintiff’s ‘X’ mark and that used by Soccer International. A comparison of the two marks is shown as under:
Plaintiff’s X mark
X mark of Soccer International

30.3 One of the arms of ‘X’ in the Soccer International’s mark/device had a slightly different take than that of the plaintiff’s mark. This comparison also shows that it would be impossible to even document the various minor variations which could occur in the stylization of the letter ‘X’ considering it consists of two simple lines intersecting each other.
30.4 To substantiate the above, a comparative table is provided under to show the plaintiff’s and the defendants’ ‘X’ marks, the one used by Soccer International and the ones which are available on Amazon listings as shown by the defendants for ‘X-STEP’ and ‘PAYNTR-X’.
Entity
Mark
Plaintiff

Defendants

Soccer International Private Ltd.

X-STEP

PAYNTR-X

30.5 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.
30.6 The plaintiff would have a case in the event somebody had exactly copied its ‘X’ mark in order that it is identical and there was evidence on the record to show that it sought to counterfeit the plaintiff’s products, or otherwise were using a principal trademark which was similar to that of the plaintiff’s principal trademark being ‘RELAXO’ or ‘SPARX’.
30.7 It is an admitted position that the defendants’ application in Class 25 was filed a year earlier in 2011 and that of the plaintiff in 2012. The launch by the defendants of their products in 2013 does not per se offer evidence of the fact that there was dishonest adoption by them. ‘HRX’ and ‘HRX BY HRITIK ROSHAN’ was a distinctive mark and brand developed by the defendants with a unique identity, unique celebrity endorsement, and a full-storyboard based upon their inspiration from the Actor Hritik Roshan. It is stated in their written statement that the respondent’s mark has been created from the first letters of the name ‘HRITHIK’ ‘ROSHAN’ along with the word ‘EXTREME’.
30.8 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.
30.9 Though it may strictly not apply on the facts of this case, but the principle of “added matter” as relied on in Corn Products (supra) by the Supreme Court, and Intex Technologies (supra) by this Court may be instructive.
30.10 Relevant portions of Corn Products (supra) are extracted as under:
15. Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trademarks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the market in which the marks under consideration are being or will be used.
(emphasis supplied)
30.11 Relevant portions of Intex Technologies (supra) are extracted as under:
31. Insofar as the issue of added matter is concerned, there is no doubt that if the added matter is so prominent as to completely distinguish one product from the other, then there would be no case for confusion whether it be confusion proper or, initial confusion or reverse confusion. In the present case, we find that the mark “Intex” is as prominent, if not more, than the mark “AQUA” in the appellant’s product packaging. This is also evident from the images of the packaging employed by the parties as given below:

(emphasis supplied)

30.12 Considering that the issue relates to the ‘X’ device marks used respectively by the parties with their respective stylisations, the “added matter”, if at all, could be taken to be the main brands viz. ‘SPARX’ and ‘HRX’ respectively under which they sell their products. 
31. 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.
32. Application stands disposed of accordingly.
CS(COMM) 917/2018
1. List before the Joint Registrar on 16th July, 2024 for further proceedings.
2. Judgment be uploaded on the website of this Court.

ANISH DAYAL
JUDGE
MAY 03, 2024/MK/sc

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