Clothing giant Zara dismissed in food brand case

Inditex, the parent company of fashionable clothing brand Zara, has partially failed in its bid to register a European trademark to cover food products, restaurants and related services. In its judgment of December 2021, the General Court of the EU ruled mainly in favor of the food producer Ffauf Italia, as explained by Julia Schefman.

The likelihood of confusion between two trade marks is a fundamental ground for refusal of a trade mark application in the EU, as set out in Article 8(1)(b) of the Trade Mark Regulation. the EU. In his Judgment of December 2021the General Court of the EU examined the subject in the context of a dispute between Inditex (owner of the clothing company Zara) and Ffauf Italia, the latter having opposed Inditex’s attempt to register the mark “Zara” to cover food products, restaurants and other such products and services.

How likelihood of confusion is assessed

The existence of a likelihood of confusion between two marks comes down to a careful assessment of the degree of similarity between the signs and the goods and services they designate. This includes consideration of the audience for which the goods are intended; any visual, auditory or conceptual similarity between the signs; the nature, destination and mode of use of the designated goods and services, and whether they are competitive or complementary (Canon); and any additional factors, such as manufacturers, distribution channels and points of sale.

As we covered previously“a lower degree of similarity between the goods or services may be offset by a higher degree of similarity between the marks, and vice versa” (Canon KK vs. MGM). In such cases, a global evaluation is necessary taking into account all factors relevant to the circumstances of the case (Sabel vs Puma).

Background to the Zara trademark dispute

In 2010, Inditex applied for trademark registration of the word sign Zara in classes 29, 30, 31, 32, 35 and 43 (paragraph 3), covering a range of food products, juices and condiments, as well as restaurants and retail/wholesale outlets.

During registration, Ffauf Italia filed a notice of opposition on the basis of 11 earlier marks, including the word mark “Le Delizie Zara”, which it had filed in 2003, and the figurative mark “Zara”, which she filed in 2004 for her line of Italian products including pasta.

The dispute was brought before the Fourth and Fifth Boards of Appeal on several occasions between 2010 and 2020, with parties arguing and appealing on the basis of likelihood of confusion, as well as evidence of genuine use.

In December 2021, the case went to the General Court, which partially upheld the verdict of the Fourth Board of Appealconfirming that there was indeed a likelihood of confusion between the goods covered by Inditex’s request and those covered by the marks held by Ffauf Italia.

The judgment of the Court

Inditex had sought to argue that there was no genuine use of Ffauff’s figurative mark “Zara” in relation to “dry pasta of Italian origin” and of the word mark “Le Delizie Zara” in relationship with parts of Classes 29 and 30. However, the General Court agreed with the Fourth Board of Appeal that genuine use was proven as regards the figurative mark ‘Zara’ and that the genuine use of ‘Le Delizie Zara in relation to classes 29 and 30 could not be challenged, for lack of use, because this mark was still in grace period at the time of the case.

While Inditex partially succeeded in repelling Ffauf Italia’s opposition to its registration covering ‘fresh vegetables’ (class 31) and ‘fruit juices’ (class 32), the General Court decided, like the Fourth Board of Appeal, that there was a likelihood of confusion for the other registrations (under classes 29, 30, 35 and 43).

Ultimately, it decided that registration of the word sign ‘Zara’ should be refused because ‘consumers forming part of the relevant public’ would establish a link between the new word sign ‘Zara’ and Ffauf’s existing marks. This was determined on the basis of whether the goods and services covered by the mark were identical or similar to varying degrees; the marks are very similar; and, lastly, the fact that the consumers concerned would show only an average level of attention when purchasing the goods in question.

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