Q&A: Mark Caddle on House of Zana vs Zara
The high-profile case demonstrates the need for small businesses to undergo early trademark clearance searches, the Withers & Rogers attorney tells WIPR.
A small business owner selling sustainable clothing defeated fashion giant Zara recently in a trademark dispute over the alleged similarity of their names.
Amber Kotrri launched her fashion label House of Zana in 2018—specialising in handmade kimonos—and opened a shop the following year in Darlington, a town in the northeast of England. The name ‘House of Zana’, said Kotrri, was inspired by the Albanian word for ‘fairy’, due to her husband’s Albanian heritage.
In December 2020, Kotrri applied for a UK trademark in respect of two figurative marks showing her brand name ‘House of Zana’, and sought registration for goods in Class 25, specifying simply ‘clothing’.
Zara, which is owned by Spanish firm Inditex (Industria De Diseño Textil), filed its opposition to the application in February 2021, based on sections 5(2)(b) and 5(3) of the Trade Marks Act 1994 in defence of its word mark ‘Zara’.
Zara argued that the name ‘House of Zana’ was “conceptually similar” to its own, and would “bring to mind the ‘Zara’ mark”, which would then enable Kotrri to “take unfair advantage by free-riding on the coat-tails” of its reputation, and “cause detriment” to the reputation and distinctive character of the ‘Zara’ mark.
The fashion retailer demanded that Kotrri rename her business and remove all existing branding, but she stood firm and defeated Zara in a tribunal heard on August 3 in the UK, heard by Judge Matthew Williams.
Kotrri based her defence on her established reputation locally; the impact of the presence of the words ‘House of’ in her brand name; the meaning of ‘Zana’ in Albanian; the parties’ difference in branding and a lack of intention to mislead customers; and the fact that the names Zara and Zana are different, with differing business focus and ethos.
Mark Caddle, partner and trademark attorney at Withers & Rogers, gave WIPR his views on the case.
What are your observations on this case and were you surprised with the outcome?
There is established case law to support that where marks are conceptually different there’s little likelihood of confusion. The differences between ‘Zana’, a meaningless word, and ‘Zara’, a known name, mean the decision was not all that surprising.
Also, the tribunal considered the importance of ‘House of…’, and the mark as a whole, not simply Zara v Zana, when comparing the marks.
The judge said: “In my view, the words ‘House of’ are flavoured with a gentle grandeur such that they may more fairly be considered to have a degree of distinctiveness, though still to a low degree.
“While I agree that ‘Zana’ is much the distinctive component of the House of Zana, the trio of words forms a unit that is more substantial than the four-letter word alone. Since it is the third word, the second shortest of the trio, and is part of a unit, (albeit a unit of conventional construction), I do not agree that the third word [Zana] dominates the House of Zana.”
Considering these comments, it is not surprising that the marks were deemed not to be confusingly similar.
While Zara was considered to be a reputable brand, the tribunal thought that use of the phrase ‘House of Zana’ would not damage or tarnish its reputation as the two brands are sufficiently distinctive.
Some of the surprise expressed about the decision is probably due to the high level of public attention. A famous brand such as Zara failing to prevent the registration of a trademark which includes a single letter variation, ‘Zana’, is bound to attract attention.
What is your view of ‘David & Goliath’-type cases like this?
Nowadays these cases capture the public interest, mostly thanks to the forum of public opinion created by social media platforms, and natural curiosity in high-profile brand names.
It is always reassuring to see ‘David’ obtaining advice from a trademark expert. That can have a big impact on how these disputes play out.
The alternative, taking no advice and caving to the demands of Goliath without assessing the merits of the case, is all too often an opportunity missed.
Are there examples of similar cases that you’d like to draw upon?
This reminds me of the decision in Bentley Motors v Bentley Clothing (a family-run business based in Manchester).
This case, which made its way to the Court of Appeal in December 2020, also found in favour of ‘David’. Bentley Clothing had registered its ‘Bentley’ trademark for clothing, which was ultimately a key factor in its success.
Like with House of Zana, this case centred on a small business standing firm against the demands of a much larger one, relying on the legal system to be the decision maker in the dispute rather than being swayed by the resources of the other party.
It also shows how conducting trademark clearance searching before entering new product or service markets can be highly beneficial in avoiding trademark disputes.
What advice would you give to small business owners who may find themselves in a similar situation?
It can be daunting for a small business owner to receive a robust legal letter, particularly when agreeing to its demands could have serious consequences. For example, having to rebrand at the request of a much larger business, perhaps without any compensation for doing so.
Taking advice on whether or not any threatened action will be successful must be the first step. Early trademark clearance searching is essential and this applies to businesses of any size. This is necessary guidance in understanding the risks when launching a new brand and the likelihood of disputes arising.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox.
Today’s top stories
