EU General Court sides with Zara against EUIPO
The owners of Spanish clothing brand Zara have successfully had a decision of the EU Intellectual Property Office (EUIPO) to deny registration of its mark overturned.
In its decision, issued today, May 8, the Court of Justice of the European Union’s General Court found that the EUIPO had failed to adequately explain its reasoning in rejecting the mark.
Industria de Diseño Textil, which owns a number of fashion brands including Zara, Bershka, and Massimo Dutti, applied to register the ‘Zara’ EU trademark in classes 29-32, 34 and 35 covering various food products and food services in 2010.
Ffauf Italia, an Italian food manufacturer which owns the ‘PastaZara’ brand, opposed the mark later that year. In its opposition, the Italian company cited its own EU word mark ‘Le Delizie Zara’, in classes 29-33, and its figurative mark for ‘Zara’ in class 30.
Ffauf’s opposition was upheld at the EUIPO’s opposition division and subsequently at the office’s Fifth Board of Appeal.
In today’s decision, the EU General Court found that the appeals board had failed to demonstrate sufficient reasoning for its ruling in favour of Ffauf.
In its opposition, Ffauf had supplied additional documentation for the ‘Zara’ figurative mark including a logo for the ‘PastaZara’ brand.
Ffauf’s figurative mark itself, however, did not contain the word pasta. According to the General Court, the EUIPO’s appeals board mistakenly factored in the word ‘pasta’ in its deliberations on the distinctive character of Ffauf’s mark and had failed to explain its reasoning for doing so.
The court also said that it was unable to identify the evidence assessed by the appeals board in considering genuine use of Ffauf’s marks.
On the basis that the appeals board had failed to provide sufficient explanation of its reasoning, the court annulled its decision.
When filing its appeal to the General Court, Industria de Diseño Textil dropped its claim to register confectionary products in class 30.
The court awarded costs to Industria de Diseño Textil.
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