The issuance of a permanent injunction barring a clothing manufacturer and wholesaler from certain uses of trademarks that were confusingly similar to a surfwear manufacturer's QUICKSILVER ROXY and ROXY trademarks has been affirmed by the U.S. Court of Appeals in San Francisco. In a not-for-publication decision, the court limited the scope of the injunction to allow some uses by the defending manufacturer of marks that included the term "Roxywear," in connection with the wholesale marketing or sale of young women's clothing products.

The surfwear maker was likely to sustain irreparable harm in the absence of injunctive relief, the court said, due to the defending manufacturer's inability to control retailers' use of the marks, the parties' conflicting Internet marketing, and the defending manufacturer's intent to change its price-point or distribution, which could potentially damage the surfwear maker's brand.

The district court originally barred all uses of the challenged marks. The appellate court limited the injunction's scope because of the defending manufacturer's innocent adoption of its marks, the surfwear maker's delay in bringing suit, the parties' long period of coexistence in the market, and the surfwear maker's own admission that the limited injunction was sufficient to avoid consumer confusion.

The injunction requires the term "Roxywear" to be displayed as one word, with all letters in the same typeface, color, and format. The term must be accompanied by the identifier "by Roxanne Heptner," "by Roxx," or "by Kymsta." The marks may be displayed only on the interior labels of the defending manufacturer's clothing and may not be shown on the outside of clothing or on badges, tags, or labels affixed to the outside of clothing.

The defending manufacturer also was enjoined from expanding its sales of clothing under the marks beyond its current channels of distribution and from advertising the marks directly to consumers.

Quiksilver, Inc., 9th Cir., ¶61,549.