LOS ANGELES — A federal judge has issued a permanent injunction prohibiting Kymsta Corp. from using trademarks that resemble those of Quiksilver Inc.’s junior brand Roxy.
This story first appeared in the April 18, 2008 issue of WWD. Subscribe Today.
The decision on Tuesday by Judge Valerie Fairbank came in a trademark infringement lawsuit that Huntington Beach, Calif.-based Quiksilver filed six years ago in U.S. District Court.
Los Angeles-based Kymsta sells women’s apparel under the brands of Roxywear by Roxanne Heptner, Roxywear by Roxx and Roxywear. However, the judge ruled that Quiksilver used the trademark of Roxy first and has the full right to it.
Kymsta, which is considering an appeal of the decision, was not required to pay damages to Quiksilver. However, during the next 18 months, it is required to phase out the Roxy-related trademarks used on its apparel.
The lawsuit is indicative of the measures many companies take to protect their trademarks, especially in the Internet age, when Web sites such as Facebook, MySpace and blogs rapidly disseminate information.
“Communication is instantaneous and all these kids are connecting,” Quiksilver chairman and chief executive officer Bob McKnight said in an interview. “Roxywear brand is confusing to our Roxy brand. We need to stop the confusion.”
In addition, McKnight said Quiksilver was concerned that Kymsta might license the Roxywear name to be used on other merchandise.
The reach of the Roxy empire extends to more than 90 countries and the brand has annual global sales of more than $800 million in junior sportswear, swimwear, fragrance, footwear, accessories, infants’ clothes and even iPod speakers.
“There was the fear of [Kymsta] creating turmoil,” McKnight said.
The decision said that Kymsta was an innocent user of the Roxywear trademark and did not intentionally infringe on Quiksilver’s marks.
Three years after Quiksilver filed the lawsuit in 2002, Kymsta evolved its Roxywear line from the junior category to contemporary sportswear, said James Nguyen, an attorney at Los Angeles-based Foley & Lardner LLP, who represented Kymsta. He said Roxywear’s sales range from $1 million to $2 million in wholesale sales through retail accounts including Barneys New York, Bloomingdale’s, Fred Segal and Henri Bendel. Though Roxy and Roxywear share some retailers, such as Nordstrom and Bloomingdale’s, they target different customers, he said.
“There is a possibility that this is not over,” Nguyen said, noting that Kymsta might appeal.