Friday, August 21, 2015

The Battle for Names

The trademark infringement tussle between the luxury clothing line ZARA of Spain and the Chennai based Zara Tapas Bar resulted in the Delhi High Court deciding in favour of the clothing brand not because it was a well-known name across the world but to simply protect its trademark rights.
ZARA, the internationally reputed luxury clothing brand, the plaintiff, sued Zara Tapas Bar, the defendant for trademark infringement and sought an injunction to restrain the defendant from passing off and infringement of its mark. The plaintiff had started conducting its business in India in 2010 through its associate company Inditex Trent Retail India Private Limited, which is a joint venture between the plaintiff and the Tata Group Company. The plaintiff contended that the trademark was conceptualized in the year 1975 and the domain name was registered in 1997 and since then the plaintiff has been using the mark continuously and extensively. It was in 2005 that the plaintiff became aware of the defendant’s use of the name Zara, which the plaintiff immediately opposed. However, in 2012, the plaintiff came across another application by the defendant, which was also opposed by the plaintiff.
The court in deciding the dispute looked into the way the mark was being used by the defendants. The defendant’s website focused on the word “ZARA” and “TAPAS BAR” was barely readable. It repeatedly described itself as only ZARA making it a dishonest and fraudulent adoption of the mark by the defendants. The court also quashed their argument as it stated that it is the choice of the plaintiff to sue infringers. If the plaintiff does not choose to sue certain infringers, it does not disentitle them to sue other infringers.  

The court stated that the defendants wanted to ride on the reputation and goodwill of the plaintiff. The court granted an ad interim order to the plaintiff’s mark irrespective of the goods and services dissimilarity as the court was of the view that such blatant unauthorized use of the plaintiff’s mark could discredit their reputation. The court added that the clothing brand had acquired a cross-border reputation and directed the defendant to remove the signage and all promotional material using the name ‘Zara’.  

Nayanika Singhal