Zara can sometimes sell safari-friendly items – from lightweight utility-inspired jackets to earth-toned jumpsuits, but consumers are highly unlikely to mistake the brand for a Tanzania-based travel agency, right. ? This is not what a European Union court recently ruled in a decision rejecting a trademark application filed by Zara Tanzania Adventures for a figurative mark, which includes the word “Zara” with “Tanzania Adventures “for use in connection with” travel and tourism “. services ”,“ education and training services on wildlife, ecology, safaris ”and“ travel agency and hotel services ”.
According to the Court of Justice of the European Union (“CJEU”), whose decision follows damage suffered by the travel agency before the European Union Office for Intellectual Property (“EUIPO”) and to an appeal before the CJEU, the brand of Zara Tanzania Adventures – which it uses in classes 39 (travel and tourism services), 41 (wildlife education and training services, ecology, safaris) and 43 (travel agency and hotel services) – is just too similar to those owned by the Spanish retail giant, and therefore cannot be registered with EUIPO.
The categories of products and services that Zainab and Roger Ansell listed on their 10-year-old registration application are important. After all, trademarks – that is, all words, names, symbols or designs, or any combination thereof, used in commerce to identify and distinguish the products of one business from another – are recorded by the classes of goods and services on which they are actually used. Class 25 covers, for example, clothing, while Class 3 includes various cosmetic products.
It is well established that two companies with very similar trademarks – that is, any word, name, symbol or design, or any combination thereof, used in commerce to identify and distinguish products from ‘another firm – and very similar product categories cannot both retain trademark registrations (as opposed to common law rights). At the same time, two companies using similar marks can enjoy the benefits of registration if the types of goods and services for which they use the marks differ.
This is why, for example, an airline, a valve company and a Swiss watch company all maintain registrations for the “Delta” brand.
With that in mind, the CJEU’s decision to dismiss Ansell’s claim – which largely depended on the argument from Zara’s parent company, Inditex, that fashion and travel aren’t that different – is striking. . The clothing giant has argued that it’s not uncommon for fashion publications, as well as influencers, to marry fashion and travel trends. Coupled with “the current trend of fashion brands moving into new adjacent markets, such as food, travel, hotels and restaurants”, it is possible that Zara is subject to consumer confusion and / or a unfair competition if the Ansell trademark were registered.
Zara’s victory “demonstrates the scalable and far-reaching nature of fashion brands and the markets in which they can operate and thrive,” according to Simon Casinader and Daniel Cartmell of K&L Gates. “The court held that, in accordance with the current trend of fashion brands moving to other markets, the risk of undue advantage cannot be ruled out despite the differences between products and services, and underlined the importance of take into account all the factors relevant to the circumstances of the case in order to determine the risk.
While the travel company may have lost the trademark battle in the EU, the company is embroiled in a battle in the United States after filing for the same trademark with the US Patent and Patent Office. Trademarks (USPTO “) in March 2018. Zara opposed the application in January and the parties are currently back and forth before the USPTO Trademark Trial and Appeal Board.