Co-authored by Mr. Saif Rahman Ansari, fourth year student
of B.Tech LL.B from UPES College of Legal Studies,
On 19th May, the Delhi High Court passed an interim order in the
matter of Industria De Diseno Textile Sa v. Oriental Cuisines
Pvt. Ltd. and ors., which once again strengthened the
protection for marks with trans-border reputation in India. The
case involved the renowned trademark ZARA (hereinafter as
"Plaintiff"), an internationally known company for its
clothing and accessories, who filed an infringement suit against a
leading chain of Spanish cuisine restaurant ZARA TAPAS BAR
(hereinafter as "Defendant") in Chennai and Kolkata for
using a deceptively similar mark as its restaurant name.
The issues between the parties were regarding the deceptive
similarity between 'ZARA' and "ZARA TAPAS BAR',
adoption of the impugned mark 'ZARA TAPAS BAR', delay and
acquiescence, and more importantly ZARA's Trans-Border
Plaintiff, an internationally reputed company adopted the word
ZARA as its trademark in 1975 and the same is registered in India
since 1993. The Plaintiff also manufactured the product in India.
While the defendant is a Spanish cuisine restaurant and bar named
ZARA TAPAS BAR opened in the year 2003. The defendant also filed an
application for registration of the mark ZARA TAPAS BAR which was
opposed by the Plaintiff. The said opposition was pending at the
time of the trial of the present suit.
In the year 2013, when the present suit was filed the defendant
was restrained from using the mark ZARA as its trademark by an
ex-parte ad interim order but the order was later vacated
and the Court allowed the defendant to use composite trademark ZARA
TAPAS BAR not ZARA as per se. On the contrary, plaintiff provided
enough evidence to show that the defendant had been infringing upon
the trademark ZARA belonging to the plaintiff. In some of the
advertisements by the Defendant only word ZARA was highlighted and
was 10 times bigger in font than the following terms TAPAS and BAR.
And in others, word ZARA was used per se without the words
BAR AND RESTAURANT. It was obvious that the defendant attempted to
use the impugned mark in a deceptively confusing manner in order to
gain profit in Plaintiff's goodwill.
The defendant contented that its adoption of mark ZARA was a
Spanish variation of the name Sarah whereas
Plaintiff's adoption was from the name of the city ZARAGOZA. It
was shown that the word ZARA is neither generic nor descriptive nor
a dictionary word when Spanish is concerned. However this
explanation for adoption of the mark ZARA by the defendant was not
convincing and the Defendant failed to prove an honest adoption and
use of the impugned mark. The Court concluded that the mark adopted
by the defendants was used to ride on the reputation of the
globally established mark of the Plaintiff.
At last the recognition and protection of trans-border
reputation of the marks came to the rescue of the Plaintiff and the
court decided the matter in the favor of the Plaintiff. The court
observed that it was prima facie established that the mark
ZARA was adopted by the plaintiff in the year 1975 while the
defendant had adopted the impugned mark in the year 2003. Even at
the time of this adoption by the Defendant, the impugned mark was
well-known and reputed even in India. Evidence in regard to the
same was placed on record by the Plaintiff including some of the
articles like 'ZARA, a Spanish Success Story" of
June 15, 2001 was by CNN.com, 'The reign of
Spain' dated October 28, 2002 in The Guardian,
'Retail @ the speed of Fashion' on the site
thirdeyesight.in by an Indian Devanshu Dutta in
the year 2002 and 2003.
Although there were no ZARA stores in India opened prior to
2010, but the name ZARA had sneaked into the Indian Territory way
before 2003. Thus the Court concluded that the defendants'
adoption of the mark was dishonest and fraudulent and to prevent
any irreparable loss and injury to the plaintiff ad interim
injunction was granted against the Defendant restraining him from
using the impugned mark.
The order passed by the Delhi High Court is a reminder that
Indian Courts are the protector of the well-known marks having
trans-border reputation and infringers in no manner would be
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