2 December 2021TrademarksAlex baldwin

Zara owner fails to extend mark to food

Spanish retail giant  Inditex, which owns the Zara brand, has failed to convince the EU General Court to extend its “Zara” trademark for food products and restaurant services.

The company sought to partially annul an EU Intellectual Property Office (EUIPO) fourth board of appeal decision to refuse registration of “Zara” under classes 29, 30, 35 and 43 of the Nice Agreement.

Registration was opposed by Italian food company Ffauf Italia who claimed that the “Zara” mark could be confused with its own word mark “Le Delizie Zara” and figurative mark “Zara” filed in 2003 and 2004 respectively.

In a  judgment handed down Wednesday, December 1, the court dismissed Inditex’s appeal, ordering it to bear costs.

Inditex had claimed that the board of appeal erred in finding that evidence submitted by Ffauf demonstrated genuine use of its marks prior to the publication of Inditex’s “Zara” mark in 2010.

But the court agreed with the board of appeal that Ffauf had provided “efficient indications as to the place, period, nature and extent of use of the earlier Italian figurative mark”.

Inditex also alleged that the board erred in comparing the goods and services designated by the marks at issue.

Again, the court agreed with the board of appeal that there was a “certain degree of similarity” between classes Inditex sought to register under, and those covered by the Ffauf marks.

It also ruled that the board rightfully concluded that there was a likelihood of confusion between the marks at issue.

Case background

The company published its trademark application in Community Trade Marks Bulletin on 22 June, 2010.

Inditex sought registration for the word sign “Zara” in classes 29 to 32, 35 and 42 of the Nice Agreement.

In December 2014, the opposition division of the EU Intellectual property Office partially upheld an opposition from Ffauf Italia, refusing Inditex to register its mark under classes 29 to 32 and 35, claiming that there would be a likelihood of confusion.

This led Inditex to file an appeal in February 2015. The Fifth Board of Appeal of the EUIPO dismissed the appeal in February 2018 and annulled the opposition division’s decision to allow registration of the mark under Class 43.

In an unpublished General Court judgment in May 2019, it annulled the Fith Board of Appeal’s decision, referring it back to the Fourth Board of Appeal.

Finally, the Fourth Board of Appeal found that there was a likelihood of confusion between Inditex’s and Ffauf’s marks under classes 29, 30, 35 and 43. This led Inditex to appeal, yet again to the EU General Court.

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