ZARA ASSIGNMENT

BLA Case Analysis

Brief Facts of the case:
1. The Plaintiff is an internationally reputed company which operates in fashion and lifestyle
space and is involved in the manufacturing, design, sale and distribution of the products.
In India, the Plaintiff has an associate company named as Inditex Trent Retail India private
Limited which is a joint venture between the Plaintiff and Trent Limited of Tata Group.
The Plaintiff carries out its commercial operations through this associate company.
2. The Plaintiff opened up its first store in A Coruna, Spain, 38 years ago. According to them,
the Plaintiff coined, and adopted Zara as its trademark in [Link] domain name [Link]
was registered on 29th May,1997.
3. The Plaintiff has 1763 ZARA stores, 171 ZARA KIDS stores and 364 ZARA HOME stores
in over 86 countries. India is one of the manufacturing locations for the Plaintiff where
garments and other articles bearing the ZARA mark have been manufactured since 1986-
87.
4. It is asserted that ZARA trademark is one of the Plaintiff’s most valuable assets with a
brand value exceeding $9.4 billion(US). It has become a well-known mark under Section
2(1) (zg) of the Trade Marks Act,1999, and hence the Plaintiff is entitled to protect it
against similar marks by other parties whose products and services are not same as that of
the Plaintiff.
5. The Defendant is ZARA TAPAS BAR which is a restaurant chain in India with multiple
establishments in Chennai and Kolkata. The defendants claim to have opened up the
restaurant in the year 2003.
6. It is averred that in around April 2005, the Plaintiff first came across the trademark
application of the defendant for ZARA TAPAS BAR and filed opposition against it. In
2012 end/2013 beginning, the Plaintiff came across other such applications by the
defendant. This violated the Plaintiff’s right to the internationally known trademark and
the brand ZARA associated with it.
7. It is stated that the defendants are using the Plaintiff’s trademark with extensions “TAPAS
BAR”. By use of the mark ZARA, the defendants are solely trying to ride on the reputation
and brand already created by the Plaintiff worldwide.
8. It is also stated that the Defendants are using the mark ZARA and indulging in
misrepresentation on social media by addressing themselves as ZARA CHENNAI, ZARA
KOLKATA etc dropping the extension and tarnishing the reputation and goodwill of the
Plaintiff. The Plaintiff thus seeks injunction of restraining the defendants from offering any
product or services bearing the mark ZARA.
9. The Defendants have contested the suit and objected that there have been multiple parties
in India and abroad using the mark ZARA and that the Plaintiff did not have a reputation
in India or the world prior to 2002 when the restaurant was established. It is further stated
that there has been a delay in filing the suit by the Plaintiff who ought to have known about
the mark usage by the Defendants since 2002; and this amounts to acquiescence.

Important Legal Issues

1. Whether there is a deceptive similarity between the mark ZARA of the Plaintiff and ZARA
TAPAS BAR of the defendants
 2. Whether ZARA TAPAS BAR has been adopted in ignorance or whether it was a fraudulent
move to move public to the restaurants
3. Whether the mark ZARA has been used by multiple entities and has become widely
prevalent to be used by all
4. Whether the delay caused by the Plaintiff amounts to acquiescence
5. Where material facts have been concealed to disentitle the Plaintiff to the relief of
injunction
6. Whether the mark of the Plaintiff has an international reputation which moves beyond
borders to the extent that the defendants would have dishonestly used the popularity

Court’s views on these legal issues:

1. Although the defendants have named their restaurant as ZARA TAPAS BAR, there is huge
prominence of the word ZARA. According to the evidence, wherever the defendants have
used ZARA TAPAS BAR, the word ZARA is considerably bigger than the other words.
The way it has been used by defendants, there is deceptive similarity.
2. The word ZARA is not generic nor a dictionary word and the defendants have no
substantial explanation for adoption of the mark as well. The mark ZARA has been
fraudulently adopted by the defendant to make people believe that the restaurant is
somehow related to the Plaintiff’s brand.
3. The defendants have claimed words which comprise of ‘ZARA’ to be similar to ZARA
brand; ZARAL, ZARAFA to name a few. Falsity of the claim can easily be substantiated
by looking at the registrations. They have failed to show that it has been used by a large
number of entities.
4. Mere delay does not amount to acquiescence and delay which is not coupled with
acquiescence is not consequential and injunction cannot be granted on such grounds.
5. The statement made by the Plaintiff about knowledge about the defendants in 2011 is not
correct as an affidavit was filed in opposition to the defendants’ application in 2008.
However, delaying the suit in this particular case is not very substantial.
6. Although there was no store of ZARA in India prior to 2010 but the word has been
established since 1993. In the 21st century, there is widespread dissemination of
information through different channels of media. Given the manner of how the defendants
adopted the name and their explanation not sufficing, the Plaintiff is entitled to protection
of its mark.

Views on the case:

The defendants have been using the Plaintiff’s trademark for their business with extensions since
2003 when the first restaurant was set up. However, the way the word ZARA has been used
prominently could warrant a strong relationship between the defendants’ restaurant chain and the
plaintiff’s strong brand which started way back in 1975. The mark was solely proliferated as ZARA
on the social media pages. Additionally, the defendants did not have sufficient evidence to use the
word ZARA which is not a dictionary word either. It is clear that the defendant is trying to harness
the popularity of the plaintiff’s brand and thus it is justified that plaintiff is granted ad interim
injunction.