Did anyone think of the fact that how similar Zana and Zara sound that one might confuse it with the other like you plan to go to Zara and you enter the Zana shop? Well, the Spanish fashion giant with over 6,477 stores around the world considers that it is quite a possibility and thereby brings an objection to the trademark registration application of a small boutique owner in England under the name of ‘House Of Zana.’
FACT OF THE CASE
In 2019 Mrs. Kotrri launched a fashion line of handmade kimonos and wished to get it registered under the name of ‘House of Zana.’ But the same was objected to by Zara on the ground that the 2 names are conceptually identical and moreover the low-quality cloth line offered by the boutique will tarnish their worldwide reputation.
ISSUES INVOLVED IN THE CASE
So the case falls under the category of identical trademark, which was discussed with the help of an example of a recent case of Delhi Lakme Ltd. v. Subash Trading
The court ruled out that the word like me is phonetically similar to the word Lakme, thereby creating a possibility of deception and confusion caused to the consumers.
So the main issue of the case is Whether the word Zara and House of Zana are identical enough that the application for a trademark is rejected.
CONTENTIONS OF ZARA
- The party contended the word Zana is just one brush stroke away from Zara, thereby hinting at the possible intention that the 2 words sound similar to the consumers.
- The brand name will result in commercial loss to Zara as the 2 business deals in clothing lines.
CONTENTIONS OF ZANA
- The owner Mrs. Kotrri said that there is no similarity between the names as ZANA is an Albanian word for Fairies.
- The idea behind the name is that the clothes are manufactured by the delicacy of fairies.
- She said how can the store name be confused with a well-established and recognized brand over the world with a small handmade kimono boutique.
The matter was put forward before the tribunal and year-long proceedings took place in which Mrs. Kotrri represented herself and finally the matter came in her favor. As judge Matthew William ruled the verdict in her favor by giving a speaking order:
- The differences between the marks are sufficient to rule out the likelihood of direct confusion.
- There is no cynical motive behind using the name Zana as they wish to underline the idea that the kimonos are manufactured by the delicacies of the fairies.
- The mental link between the 2 names is too insubstantial and fleeting that it can’t cause any exploitation of the ZARA’s reputation.
The doctrine of deception is used by the court in the present case as trademarks are nowadays valuable assets and companies go through a lot of pain to get them registered, and even in some cases go through a year-long legal battle. This doctrine is used in India in various cases like giving the verdict that ‘Surya’ and ‘Bhaskar’ are deceptive being the literal translation of Sun, in M/s Surya Roshini ltd. v. M/s Electronics Sound Components Co. in the present matter we can see that not only is the translation of 2 words different but also the use of the word ‘house of’ before Zana also makes them phonetically different.
Daman Preet Kaur
I am a final year student, pursuing law from Punjabi University Patiala. I have interned with 7 law firms and throughout these internships, I try to make sure they deal with different areas of law so that I can learn and diversity my knowledge as much as possible.
As I truly believe a great lawyer is one who knows something of everything and everything of something.