Quiksilver, Inc. has prevailed in its Federal court case against Kymsta Corp. and their claims against Quiksilver and its Roxy trademark.
Robert McKnight, Chairman and Chief Executive Officer of Quiksilver, Inc., stated, “We are pleased with the decision of the court and glad to put this groundless and frivolous case behind us. As a matter of principle and financial responsibility, Quiksilver is deeply committed to protecting and defending its trademarks and brands. From the beginning, we preferred to enter into a co-existence agreement, but it became clear that Kymsta was much more interested in extracting a big payout from Quiksilver rather than actually using their Roxywear label. We were always confident in the law and our rights with regard to our long standing usage and fame of the Roxy trademark, and while we were happy to let them continue with their very limited use of the name, we were unwilling to risk significant confusion to the consumers.”
The court, indicating that Quiksilver had introduced overwhelming evidence, dismissed the jury and ruled as a matter of law that all of Quiksilver's Roxy trademark registrations are valid and enforceable, that Quiksilver had first use, continuous use, secondary meaning in the marketplace and has the unfettered right to use the Roxy mark, and that, conversely, Kymsta can only use its conflicting Roxywear mark with a clear designation that the product is by Kymsta or one of Kymsta's owners, Roxanne Heptner.
Kymsta can only use the combined name on an interior product label and is prohibited from selling product outside its current channels of distribution. Kymsta is further prohibited from any consumer advertising for Roxywear and is forbidden to sell or license the Roxywear name to third parties.
The ruling also put an end to millions of dollars of damage claims by Kymsta against Quiksilver, and the final judgment further directs Kymsta to refrain from producing any product that is “confusingly similar to or a knock-off of any Roxy clothing product sold by Quiksilver.” Originally filed on May 22, 2002, Quiksilver, Inc. vs. Kymsta Corp. was decided in the United States District Court for the Central District of California.
Quiksilver's legal victory was achieved after nearly two years of intense litigation and a two week trial involving many witnesses testifying as to the origins and development of the Roxy brand.
One of the witnesses was Steve Tully, who as Quiksilver's sales manager in 1990 helped launched the Roxy brand and who is now the President of Quiksilver Women's, Americas. Mr. Tully stated, “We feel totally vindicated, but the outcome was never really in doubt. The court has clearly kept Kymsta's Roxywear label in a very small box. Hopefully our success shows that we will vigorously defend ourselves when we know we're right.”
