Goliath and the Fairy: ZARA Loses Court Action Against House of Zana

In 2021, international fashion giant ZARA commenced legal action against an independent boutique called ‘House of Zana’, claiming that House of Zana had “conceptually identical branding” of which could be easily mistaken for the brand ‘ZARA’.

ZARA representatives contacted the owner of House of Zana, Mrs Amber Kotrri (Mrs Kotrri) in April 2021 and demanded she re-brand, giving Mrs Kotrri only a matter of weeks to withdraw her trademark application with the UK Intellectual Property Office (UKIPO) and a few extra months to ‘phase out’ her brand name altogether.

Mrs Kotrri personally defended the matter and explained the word “Zana” is an Albanian word meaning “fairy”.

This 28-year-old businesswoman and mother of three was determined to fight the case to maintain her brand. She requested ZARA withdraw their legal opposition against the House of Zana trademark.

UKIPO

On 17 December 2020 Mrs Kotrri applied for a UK trade mark with UKIPO and sought registration for her marks under Class 25 – ‘Clothing’.

The House of Zana’s mark was published for opposition on 19 February 2021.

ZARA’s representatives filed an objection alleging a contravention of the sections 5(2)(b) and 5(3) of the UK’s Trade Marks Act 1994 (Act).

Section 5(2)(b) of the Act – Likelihood of Confusion

ZARA based its arguments around the likelihood that the average customer would be confused as to the origins of the goods.

The UK Tribunal considered:  

(a) the likelihood of confusion must be appreciated globally…;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question …;
(c) the average consumer normally perceives a mark as a whole…;"

amongst others.     

Section 5(3) of the Act – Reputation

The purpose of section 5(3) of the Act is to afford the proprietor of a mark that has acquired a reputation a form of extended protection. It does not only require a reputation and a mental link but also serious likelihood that detriment will flow from the use.

Regarding section 5(3) of the Act, the law appears to require consideration of:

(a)The reputation of a trade mark…;
(b)The trade mark… must be known by a significant part of that relevant public;

amongst others.

Outcome

The Tribunal considered that the goods were in fact identical as both brands were clothing retailers. However, the Tribunal did not agree that there was a sufficient likelihood of confusion, despite the similarities.

The considerations under section 5(3) of the Act as to reputation were considered, with the Tribunal finding that ZARA had a significant reputation in the market. However, the Tribunal was not persuaded that that was a sufficient link between ZARA and the House of Zana (in the minds of consumers), in order to cause detriment to ZARA.

The Tribunal found that ZARA’s comparisons of the two brands were "too insubstantial and fleeting".

You can read the full decision here.

Considerations

Rules relating to trade mark registration in Australia are, in many ways, similar to that in the UK.

This case is a prime example of issues that can arise when creating a new brand, particularly where it draws the ire of a major (and well resourced) opponent.

If you require advice with respect to your branding an trade marks, contact Andrew Sutton or Iain Freeman.

Disclaimer – the information contained in this publication does not constitute legal advice and should not be relied upon as such. You should seek legal advice in relation to any particular matter you may have before relying or acting on this information. The Lavan team are here to assist.