Delhi High Court cancels Sadar Bazar trader's registration of ZORA trademark after ZARA objects

The Delhi High Court recently cancelled the registration of the trademark ZORA, used by a fabric trader, following a challenge by Spanish fashion retailer ZARA [Industria De Diseno Textil, S.A. v. Registrar of Trade Marks & Anr]..Justice Jyoti Singh allowed an appeal filed by Inditex, the owner of the Zara brand, against Registrar of Trade Marks's refusal to accept its opposition to registration of ZORA in favour of a Sadar Bazar-based trader who sells polyester fabric to manufacturers of bags and textile dealers."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 on July 6. .Inditex, which has held registrations for the ZARA mark in India since 1993, argued that the Registrar had wrongly held ZARA and ZORA to be dissimilar by dissecting the marks into their prefixes 'ZA' and 'ZO' rather than comparing them as a whole.It also argued that even if the goods were dissimilar, ZARA was entitled to protection against a deceptively similar mark under Section 11(2) of the Trade Marks Act, 1999, which safeguards well-known marks even against use on unrelated goods.The fabric trader, however, contended that ZARA was not a formally declared well-known mark. It also contended that the rival marks and their trade channels were entirely distinct, and that ZORA had been adopted in good faith, taking its name from the English word for "dawn.".However, the Court held that ZARA and ZORA, both four-letter words sharing the same consonant structure and ending sound, were phonetically and visually similar when viewed as a whole with only the vowel differing. The Court said this distinction was unlikely to register with a consumer of average intelligence and imperfect recollection.On the well-known mark question, the Court held that Section 11(2) requires only that a mark be well-known and not that it be formally declared so by a court or the Registrar. "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."Given Zara's extensive retail presence, sales, advertising expenditure and its prior recognition as a well-known mark by the High Court, the Court held that the brand met this threshold and was entitled to oppose ZORA's registration even assuming the goods were dissimilar..The Court also rejected the Registrar's reasoning that the absence of evidence of actual confusion defeated the opposition.It further noted that the fabric trader's sales had risen sharply after adopting the ZORA mark in 2016.Thus, the Court quashed the Registrar's decision and cancelled the registration of ZORA in Class 24, directing that the entry be removed from the Register of Trade Marks within two months..Advocates Sushant Singh, Sourav Pattanaik and Piyush Kumar represented the ZARA.Advocates Arun Aggarwal and Pawan Dubey represented the respondents.[Read Judgment]