ZARA Wins Trademark Battle Against Delhi Trader Who Profited With ‘Zora’

Photo: Zara

India-West News Desk

NEW DELHI- The Delhi High Court has cancelled the registration of the ZORA trademark, ruling in favor of Inditex, the Spanish parent company of fashion retailer ZARA, in a trademark dispute with a Sadar Bazar-based fabric trader.

Justice Jyoti Singh, in a July 6 judgment, set aside a February 8, 2024 order of the Registrar of Trade Marks that had rejected Inditex’s opposition to the registration of ZORA in Class 24 for polyester fabric.

“The impugned order dated 08.02.2024 is quashed and set aside, cancelling the registration of the mark ZORA under registration No.4310686 in Class 24. Respondent No.1 is directed to remove the entry from the Register of Trade Marks and rectify the same for the sake of purity of the Register, within two months from today,” the Court ordered.

The Court held that Zara and Zora were visually and phonetically similar when viewed as a whole, with the difference of a single vowel unlikely to be noticed by a consumer of average intelligence and imperfect recollection.

“Both have four letters and the first letters are ‘Z’ and both end with ‘RA’ which means that they have the same consonant structure Z-R-A and the only change is in the vowel,” the Court observed.

The Court also ruled that ZARA was entitled to protection under Section 11(2) of the Trade Marks Act, 1999, clarifying that a trademark need not be formally declared “well-known” to qualify for protection.

“The enquiry under Section 11(2) is whether opponent’s mark is substantially well known amongst the relevant segment and enjoys immense and extensive reputation in India and not whether there is a prior formal declaration as a well-known mark,” the Court said.

In reaching its decision, the Court noted that ZARA has been registered in India since 1993, along with its retail presence, sales, advertising expenditure and earlier recognition by the High Court as a well-known mark. It also rejected the Registrar’s view that the absence of evidence of actual consumer confusion weakened Inditex’s opposition.

The fabric trader argued that ZARA had not been formally declared a well-known trademark, that the two businesses operated through different trade channels, and that ZORA had been adopted in good faith from the English word meaning “dawn.”

Rejecting those arguments, the Court also noted that the trader’s sales had increased significantly after adopting the ZORA mark in 2016 before directing the Registrar of Trade Marks to remove the registration from the trademark register within two months.