Zara TM for food and a doll's head

ZARA

A legal dispute that has been lasting for 10 years has finally come to an end. The General Court (GC) has ruled against the fashion retailer Zara, part of the Inditex group, as it sought to register the homonym word mark for fresh vegetables, juices, pasta and restaurant services. 

The dispute started in 2010, when Inditex tried to register the word mark “ZARA” as a EUTM, for goods and services in classes 29, 30, 31, 32, 35 and 43, including, amongst others, pasta, jams, fresh vegetables and fruit juices, as well as restaurant services, self-service restaurants and cafeterias.

The Italian-based company Ffauf Italia SpA owned several previous trade marks, but precisely the following are relevant in this case: 

-       The international registration “LE DELIZIE ZARA”, designating the EU and UK for products in classes 29 and 30. 

-       The Italian figurative mark ZARA, for products in class 30, designating fresh, dry, preserved, deep-frozen, ready to use pasta, all products of Italian origin.

-       The Italian word mark “LE DELIZIE ZARA”, for goods and services in classes 29 to 33.

Ffauf Italia SpA filed a notice of opposition against Inditex’s EUTM application, alleging the relative ground of likelihood of confusion, pursuant to article 8.1.b) EUTMR and supported by article 8.5 EUTMR (for trade marks with reputation) with regards to the figurative trade mark. 

From its side, Inditex asked Ffauf Italia to prove the genuine use of their trade marks. The Italian company successfully submitted evidences such as catalogues depicting types of pasta, samples of packaging or invoices. 

At this point, the Opposition Division of the EUIPO partially accepted the opposition and therefore, partially refused the mark, as they appreciated likelihood of confusion.

The decision didn’t suit either Ffauf Italia, nor Inditex, reason why the companies decided to seek the EUIPO’s Boards of Appeal (BoA) opinion. The Boards of Appeal considered that the term “ZARA” was only acceptable for registration in relation to certain goods and services but not for the ones in classes 29, 30, 35 and 43, as it would enter into conflict with the goods and services covered by the earlier marks. Consequently, the BoA dismissed Inditex’s appeal, considering that the goods and services were identical or similar to the ones covered by the earlier marks. On the other hand, the opposition based on article 8.5 EUTMR was dismissed, since the Italian company couldn’t prove sufficiently the reputation of their figurative mark. 

After this decision in 2019, Inditex decided to lodge an appeal before the GC. As a result, the GC ruled that the EUIPO should revoke its decision and issue a new one, on the basis that it was not sufficiently motivated according to EU law, due to the inadequacy of the statement of reasons.

A new decision was issued by the fourth Board of Appeal, partially accepting the above-mentioned appeal against the opposition, considering that the sought mark “ZARA” was only acceptable for goods and services in classes 31 and 32, since likelihood of confusion was appreciated, with regards to the earlier national mark “ZARA” and international mark “LE DELIZIE ZARA”. 

Again, Inditex considered that the arguments given by the BoA were not sufficient to dismiss the action, and for this reason lodged another appeal before the GC. 

In this case, the GC concluded that: 

-       The word element “ZARA” is contained in both earlier marks, as well as in the sought mark. The visual element of the national TM “ZARA” does not have a high degree of distinctiveness.

-       An average degree of visual similarity exists between the mark applied for and the national TM, as well as the international TM. 

-       The phonetic comparison shows a high degree of similarity, since the word element “ZARA” is identical in the sought TM and in the Italian registration. The international one has an additional element but still identical. 

-       As regards conceptual comparison, the brand could be perceived as a girl’s name, but had no meaning in relation to the goods and services. 

The Court also highlighted that the reputation must be proved with regards to the earlier mark (it is not enough to claim reputation). 

Consequently, the Court dismissed the appeal lodged by Inditex, confirming the decision of the BoA. 

The global assessment of the likelihood of confusion showed the existence of this risk between the marks at issue, concerning the goods and services in Classes 29, 30, 35 and 43. Therefore, the Court confirmed that the term “ZARA” could only be used to designate products included in classes 31 and 32, such as fresh vegetables or fruit juices, but not for pasta or restaurants. 

 

 

BARBIE

In 2014, the Chinese company Jieyang Defa Industry Co. Ltd successfully registered as a Registered Community Design (RCD) a doll’s head. 

The company Mattel, Inc., the well-known Barbie doll manufacturer, filed an application for declaration of invalidity of the design, according to Article 52 of Regulation No 6/2002.

Mattel claimed that the Chinese design “lacked novelty and individual character in relation to the earlier designs”. 

The Cancellation Division of the EUIPO, and at a later stage the Boards of Appeal, admitted Mattel’s arguments and considered that the design “lacked individual character and that the overall impression produced on the informed user by the two designs was the same”. 

From its side, Jieyang lodged an appeal before the General Court, arguing that the doll’s face is distinctive, in particular the facial features, such as the shape of the face or the make-up, are different enough from the Barbie ones. The applicant insisted that the overall impression is different from the one of the previous designs at issue, since the shape of the face is different, the eyebrows too, the nose is smaller and the colour and size of the eyes is different. 

In addition to this, the applicant claimed that the above-mentioned differences should be taken into consideration together with the definition of informed user. In this case, informed users are considered the children and their parents, who will have a higher degree of attention, since they will be familiar with the product. 

The CG agreed with the arguments given by the BoA in its decision, to the extent that the Court did not appreciate the differences supported by the applicant, since the shape of the face, the eyebrows and the nose are extremely similar. 

This huge similarity within the main elements of the doll’s face makes inevitable the evocation of Barbie’s face and therefore the Court concluded that the overall impression made on consumers was not different. 

Finally, the Court considered that the informed user, even if it is familiarised with the product, would not notice the minimum differences existing between the different dolls. 

In the light of the above, the GC dismissed the appeal, thus ruling in favour of Mattel.