Delhi High Court Cancels 'ZORA' Trademark, Holds It Deceptively Similar To Well-Known ZARA Mark

The Delhi High Court has cancelled the registration of the trademark 'ZORA', holding it to be deceptively similar to the Spanish fashion company ZARA's well-known mark.

Justice Jyoti Singh set aside an order of the Registrar of Trade Marks that had dismissed ZARA owner Industria De Diseno Textil S.A.'s opposition to the mark.

The court directed the Registrar to rectify the Register of Trade Marks by removing the trademark ZORA within two months.

The appeal arose from an order dated February 8, 2024, by the Registrar of Trade Marks. Aggarwal Bag House had applied to register the trademark ZORA in 2019, claiming use since 2016 for plain, coated, laminated, impregnated and waterproof fabrics under Class 24.

ZARA opposed the application. The Registrar, however, rejected the opposition, holding that ZARA and ZORA were phonetically and visually different because the prefixes "ZA" and "ZO" differed, even though both marks ended with "RA".

The Registrar also found that the competing goods and their trade channels were distinct, making confusion between the marks unlikely.

The High Court disagreed with the Registrar's view that ZARA required a formal declaration to claim protection as a well-known mark. It held that Section 11(2) "does not require the earlier trademark to be a declared well-known mark either by the Court or by the Registrar."

Explaining the provision, the Court said the word "entitled" in the Explanation means "to grant a legal right to or qualify for" and cannot be interpreted to mean "declared.

On the comparison of marks, the Court found the Registrar's approach fundamentally flawed.

It held, "Contrary to the settled legal proposition, Respondent No.1 dissected ZARA and ZORA and compared the dissected parts of the marks i.e., 'ZA' and 'ZO' instead of looking at the marks on an overall impression and concluded that they were phonetically and visually dissimilar, which is completely untenable in law."

Examining the marks afresh, the court noted, "Both are word marks and contain four letters and are written in capital letters... While pronouncing the marks, both end with the sound 'RA' and have the same rhythm and while there is a difference in the vowel sound of 'a' and 'o' but to an average man with imperfect recollection, the overall sound in the ears will be almost alike. Hence, the two words are phonetically deceptively similar."

On the question of competing goods, the Court held that Section 11(2) protects a well-known mark even against dissimilar goods, making the issue of similarity of goods immaterial for deciding the opposition.

It also rejected the registrar's reliance on the absence of evidence of actual confusion.

The court further held that Baghouse had no honest reason or due cause to adopt the deceptively similar mark ZORA and observed that its reluctance to change the trademark for inner linings of bags reflected an attempt to take unfair advantage of ZARA's reputation.

Allowing the appeal, the court held, "Appellant has been able to make out a case that rejection of its opposition by Respondent No.1 and direction to register the trademark ZORA is legally flawed and warrants interference."

The impugned order dated 08.02.2024 was quashed, and the registration of ZORA was cancelled.

The Registrar was directed to rectify the Register by removing the trademark ZORA within two months.