Relaxo Footwears Limited Vs XS Brands Consultancy Private Limited and another

Third-Party Trademark Agreements and Their Impact on Interim Injunctions

Introduction:

In this case before the Hon'ble High Court of Delhi, the refusal to grant an interim injunction shed light on the significance of third-party trademark existence agreements. This article provides an in-depth analysis of the legal implications stemming from such agreements in trademark disputes, drawing insights from the aforementioned case.

Background:

The plaintiff, a prominent player in the footwear industry, initiated legal proceedings seeking a permanent injunction against the defendants, alleging trademark infringement. The crux of the plaintiff's argument rested on the deceptive similarity between their 'X' mark, derived from the 'SPARX' logo, and the defendants' 'X' mark used for footwear products. Despite the apparent similarity and identical goods, the court declined to grant the interim injunction, citing various grounds, including the existence of third-party trademark agreements.

Court's Analysis:

The court's decision to deny the interim injunction was multifaceted, with a significant emphasis on the presence of third-party trademark existence agreements. Firstly, the court observed that both the plaintiff's and defendants' 'X' marks were used in conjunction with their respective trademarks, namely 'SPARX' and 'HRX.' This usage indicated that consumers primarily associated the products with the overarching brand rather than the isolated 'X' mark, mitigating the likelihood of confusion.

Furthermore, the court scrutinized the plaintiff's trademark registration and noted the presence of multiple 'X' marks on the Trademarks Register, including device marks. Of particular relevance was a previous settlement entered into by the plaintiff with Soccer International Pvt. Ltd., involving co-existence agreements for a similar device mark. The court reasoned that the plaintiff's acceptance of co-existence with other 'X' marks in the market undermined their claim of exclusive rights over the 'X' mark.

Legal Implications:

The case underscores the significance of third-party trademark existence agreements in trademark disputes, particularly concerning interim injunctions. Trademark law aims to strike a delicate balance between protecting intellectual property rights and fostering fair competition. In this context, prior agreements between parties and the acknowledgment of co-existing trademarks play a pivotal role in assessing the strength of a claimant's case for injunctive relief.

Moreover, the court's analysis highlights the evolving nature of trademark rights and the need for a nuanced understanding of co-existence arrangements. Trademark holders must recognize the limitations of their exclusivity claims in the presence of third-party agreements and the co-existence of similar marks in the market. Failure to acknowledge such agreements may weaken a claimant's position and undermine the prospects of obtaining interim relief.

Conclusion:

The denial of the interim injunction in the trademark dispute underscores the importance of considering third-party trademark existence agreements in legal proceedings. Parties involved in trademark disputes must diligently examine prior agreements and the landscape of co-existing marks to assess the strength of their claims. Ultimately, a comprehensive understanding of third-party agreements is essential for navigating trademark disputes and seeking injunctive relief effectively.

The Case Discussed:

Case Title: Relaxo Footwears Limited Vs XS Brands Consultancy Private Limited and another

Judgment/Order Date: 03.05.2024

Case No: CS Comm 917 of 2018

Neutral Citation:2024:DHC:3971

Name of Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal.H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com

Ph No: 9990389539