Court Upholds ZARA's Status as a Well-Known Trademark, Protects Against Dissimilar Goods
In a significant judgment, the Delhi High Court has quashed the registration of the trademark "ZORA," finding it deceptively similar to the well-known trademark "ZARA," owned by Industria De Diseno Textil, S.A. The court underscored the phonetic and visual resemblance between the two marks and upheld ZARA's entitlement to protection under Section 11(2) of the Trade Marks Act, 1999, even against dissimilar goods.
The dispute arose when Industria De Diseno Textil, S.A., renowned globally for its ZARA brand, challenged the Registrar of Trade Marks' decision to allow the registration of the mark "ZORA" by Aggarwal Bag House, which claimed its use for polyester fabrics. The Registrar had dismissed ZARA's opposition, asserting the marks were phonetically dissimilar based on a comparison of prefixes "ZA" and "ZO."
Justice Jyoti Singh of the Delhi High Court disagreed with this approach, emphasizing the anti-dissection rule which mandates that marks must be compared as a whole. Upon examining the marks ZARA and ZORA, the court found them to be phonetically and visually similar, noting the common structure of the suffix "RA," which contributes to confusion in the minds of consumers with average intelligence and imperfect recollection.
The judgment highlighted ZARA's established reputation, both internationally and in India, as a well-known trademark deserving protection beyond the goods it is registered for. The court rejected the argument that ZARA needed a formal declaration as a well-known mark, stating that substantial evidence of its reputation sufficed.
Furthermore, the court addressed the doctrine of dilution, noting that the adoption of the mark "ZORA" was likely to dilute ZARA's distinctiveness and reputation. It pointed out that Aggarwal Bag House's sales surged following the adoption of "ZORA," indicating an unfair advantage taken of ZARA's established reputation.
In a detailed ruling, the court ordered the cancellation of the ZORA trademark registration, directing the Registrar to rectify the Register of Trade Marks. This decision reaffirms the legal principles protecting well-known trademarks from dilution and deceptive similarity, ensuring the purity of the trademark register.
Bottom line:-
Trade Marks Act, 1999 - Phonetic and visual similarity of trademarks ZARA and ZORA - ZARA held as a well-known trademark entitled to protection under Section 11(2) of the Trade Marks Act, 1999, even against dissimilar goods.
Statutory provision(s): Section 11(2), Trade Marks Act, 1999
Industria De Diseno Textil, S.a. v. Registrar of Trade Marks, (Delhi) : Law Finder Doc id # 2940934
