Owner of ZARA for clothing prevents use of ZARA TAPAS BAR for restaurants

India

In Industria De Diseno Textile SA v Oriental Cuisines Pvt Ltd (IA No 11760/2013 in CS (OS) No 1472/2013), the High Court of Delhi has granted an ad interim injunction in favour of Industria De Diseno Textile SA (Inditex) against the use by Oriental Cuisines Pvt Ltd of the mark ZARA TAPAS BAR in relation to restaurants.

Inditex had previously secured an ex parte order against Oriental Cuisines; however, the order was subsequently modified, and Oriental Cuisines was permitted to use the composite trademark ZARA TAPAS BAR. The court in the present proceedings came to the conclusion that Inditex had a good prima facie case entitling it to protect the ZARA mark, even in relation to dissimilar goods and services.

      

Inditex’s signage

Oriental Cuisines’ sign

In support of its case, Inditex relied on the following arguments, among others:

  1. It was the prior user of the mark ZARA in relation to clothing stores worldwide and the mark was well known;
  2. It had registered (in Class 25) and used the mark ZARA in India since 1983 and 1986-87, respectively;
  3. Oriental Cuisines' use of the mark ZARA, along with the word 'tapas' (a name given to Spanish appetisers), created a Spanish association attributable to the popularity acquired by Inditex, which is a Spanish company; and
  4. Oriental Cuisines’ emphasis on the word 'Zara' amounted to a misrepresentation to the public.

In its defence, Oriental Cuisines stated as follows:

  1. Multiple parties in India and abroad used the ZARA marks or ZARA-formative marks;
  2. Inditex’s ZARA mark had been challenged in various jurisdictions, including India and the European Union, which was not disclosed by Inditex;
  3. It was not using the mark ZARA per se, but the mark ZARA TAPAS BAR;
  4. It was willing to settle the matter amicably by confining its activity within Classes 30, 32 and 43;
  5. Inditex’s applications in Classes 3, 18 and 25 had been filed on a proposed-to-be-used basis at least two months after the date of Oriental Cuisines’ applications; and
  6. There had been a delay in filing the suit on Inditex’s part.

After hearing the parties, the court granted an injunction in favour of Inditex, stating that:

  1. The rival marks were deceptively similar, as Oriental Cuisines put the emphasis on the word 'Zara' when using its mark;
  2. ZARA was neither generic nor descriptive, nor was it a dictionary word (as far as Spain was concerned), and Oriental Cuisines had failed to provide a plausible explanation for its adoption of its mark;
  3. The use of ZARA by other parties had not been not proved and, even if such use was occurring, it would not disentitle Inditex to seek relief against Oriental Cuisines; and
  4. In the 21st century, there is a widespread dissemination of information through the Internet and television, and Indian consumers could not be unaware of Inditex's ZARA mark.

Zara is a well-known Arabic name, which is also used in India. In fact, a famous Bollywood movie is named Veer Zahra, with Zahra being a lead character. Therefore, without the Spanish connection highlighted by Inditex, the monopoly given to it in relation to completely dissimilar goods and services could be seen as a bit far-fetched. It would be interesting to see what the outcome would have been if a person named Zara used ZARA in relation to restaurants and relied on the 'own name' defence.

Adheesh Nargolkar, Shailendra Bhandare and Vidhi Kotak, Khaitan & Co, Mumbai

 

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