Delhi High Court Overturns ZORA Trademark Registration After ZARA’s Challenge
The Delhi High Court has recently ruled in favor of Spanish fashion giant ZARA, revoking the trademark registration of ‘ZORA’ held by a fabric trader. The decision follows an appeal by Inditex, ZARA’s parent company, challenging the Registrar of Trade Marks’ initial decision to allow the registration of ZORA by a trader from Sadar Bazar. The case citation is Industria De Diseno Textil, S.A. v. Registrar of Trade Marks & Anr.
Justice Jyoti Singh presided over the matter, resulting in the quashing of the order dated February 8, 2024. The court mandated the cancellation of the ZORA trademark under registration No. 4310686 in Class 24, requiring the removal of the entry from the Register of Trade Marks within two months from the judgment date, July 6.
Arguments and Court’s Rationale
Inditex, which has maintained registrations for the ZARA mark in India since 1993, contended that the Registrar erred by analyzing the marks ZARA and ZORA in isolation rather than as a whole. The company asserted its right to protect the ZARA trademark under Section 11(2) of the Trade Marks Act, 1999, which allows for protection of well-known marks even if the goods are not similar.
The fabric trader argued against ZARA’s claim, saying ZARA had not been formally declared a well-known mark and that ZORA’s trade channels were distinct. They also stated that the name ZORA was chosen in good faith, derived from the English word for “dawn.”
The court, however, found that, when considered in their entirety, ZARA and ZORA are phonetically and visually similar, given their shared consonant structure and similar ending sounds. This similarity could potentially confuse consumers with average intelligence and imperfect recollection.
More Read
Well-Known Mark Status and Court’s Conclusion
Regarding the claim that ZARA was not a well-known mark, Justice Singh clarified that Section 11(2) requires only that a mark be well-known among the relevant segment, not that it be formally declared as such. The court acknowledged ZARA’s extensive presence, advertising efforts, and previous recognition as a well-known mark, establishing its eligibility to oppose the ZORA registration.
The court dismissed the Registrar’s argument that the absence of evidence showing actual confusion negated the opposition. It also noted the significant increase in the fabric trader’s sales following the adoption of the ZORA mark in 2016, suggesting potential market confusion.
Consequently, the court annulled the Registrar’s decision and directed the removal of the ZORA trademark from the registry. Legal representation for ZARA included Advocates Sushant Singh, Sourav Pattanaik, and Piyush Kumar, while Advocates Arun Aggarwal and Pawan Dubey represented the respondents.
