Summary
This post examines the Delhi High Court's decision in the Zara trademark dispute between the international fashion brand and a local restaurant, Zara Tapas Bar. The court favoured the luxury brand, not due to its global reputation, but to protect its trademark rights in India. The analysis covers the plaintiff’s history, the defendant’s arguments, and the court’s evaluation of the use of the mark. The judgment highlights the court’s emphasis on honest use and the impact of trademark dilution, regardless of the nature of goods or services. The outcome reinforces the principle that trademark owners are entitled to selectively enforce their rights against infringers.
The Delhi High Court resolved a trademark infringement dispute between the internationally recognised fashion brand ZARA and a restaurant and bar operating under the same name in India, deciding in favour of the clothing brand on the basis of its established trademark rights rather than any hierarchy of commercial importance.
Background
ZARA, the internationally reputed fashion brand and the plaintiff in the proceedings, sued Zara Tapas Bar for trademark infringement and sought an injunction restraining the defendant from infringing, passing off, and diluting its trademark. The plaintiff’s associate company, Inditex Trent Retail India Private Limited — a joint venture between the plaintiff and a Tata Group company — had commenced operations in India in 2010. The plaintiff contended that the term ZARA had been conceived and adopted as its trademark in 1975, when it opened its first shop in La Coruña, Spain, and that its domain name had been registered in 1997 and continuously used thereafter. The plaintiff became aware of the defendant’s trademark application for “ZARA TAPAS BAR” in 2005 and filed an opposition; it subsequently encountered a further application in late 2012 and filed a second opposition.
Arguments
The defendant proposed a co-existence arrangement under which it would confine use of the marks to restaurant and allied services. The plaintiff rejected this proposal outright. The defendant contended that the plaintiff had concealed the existence of numerous other trademark disputes against it in both India and the European Union, and that the delay in filing the suit amounted to acquiescence. The defendant also argued that it was not using the mark “ZARA” per se, but rather “ZARA TAPAS BAR” and subsequently “ZARA, the Tapas Bar and Restaurant”.
Findings
The court examined the manner in which the defendants had used the mark. It found that the defendant’s website and social media pages prominently featured the word “ZARA” while the words “TAPAS BAR” were barely legible; the defendant consistently described itself simply as “ZARA” and associated itself with Spanish products — the very origin associated with the plaintiff’s brand. This pattern of use was characterised by the court as a dishonest and fraudulent adoption of the mark.
The court rejected the defendant’s argument that the mark had become publici juris, holding that a trademark owner is not precluded from enforcing its rights against one infringer by the mere fact that it has elected not to pursue others. The allegation that the plaintiff had not come to court with clean hands was held to be unsubstantiated: non-disclosure of facts not material to the claim, made without mala fide intent, did not disentitle the plaintiff from seeking relief. The Delhi High Court granted an ad interim order dated May 19, 2015, protecting the plaintiff’s mark irrespective of any dissimilarity in goods and services, on the basis that the unauthorised usage could discredit the goodwill and reputation of the plaintiff.
Significance
The decision affirms that a trademark owner with a globally recognised mark may obtain protection in India against use of that mark by dissimilar businesses where there is a risk of discrediting the brand’s goodwill. It also confirms that delay in pursuing infringers does not amount to acquiescence unless it can be shown to have been accompanied by conduct that led the alleged infringer to act to its detriment in reliance on the owner’s inaction.
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.