タグ: Inditex

ZARA Unsuccessful Opposition against TM “LAZARA”

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On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.
[Opposition case no. 2023-900175]

Opposed mark

Opposed mark, consisting of a wordmark “LAZARA” in standard character, was applied for registration by Japanese individual to be used on clothing in class 25 on November 20, 2022, and published for post-grant opposition on May 29, 2023.

Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an opposition on July 27, 2023 before the lapse of a two-month statutory period and claimed opposed mark “LAZARA” shall be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations (TM Reg no. 4108998 and IR no. 752502 in class25) for word mark “ZARA”.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

INDITEX contended that the opposed mark “LAZARA” is similar to its own trademark “ZARA,” a globally renowned fast-fashion brand given the suffix “LA” is a descriptive word that merely indicates the definite article in Spanish. Besides, the goods in question are identical.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

INDITEX contended that the mark “ZARA” has become renowned among relevant consumers in connection with apparel. Given the high degree of resemblance between “LAZARA” and “ZARA” as well as the goods, it is likely that consumers will confuse or misconceive the goods bearing the opposed mark “LAZARA” with “ZARA.”

Article 4(1)(xix) proscribes the registration of a trademark that is identical with or similar to another entity’s famous mark if the trademark is intended for the purpose of gaining unfair profits or causing damage to the entity.

INDITEX contended that the applicant had filed the opposed mark with the intention of obtaining unfair profits through free-riding on the well-known trademark “ZARA”.

JPO decision

The JPO Opposition Board held that “ZARA” has acquired a certain degree of recognition among relevant consumers in Japan and foreign countries as a source indication of clothing, however, the Board denied a high degree of recognition of the mark among the consumers by taking into consideration the produced evidence. The Board criticized “INDITEX produced precedent administrative decisions as evidence that admitted famousness of the mark “ZARA” in Japan. But, famousness of trademark shall be assessed on a case-by-case basis based on relevant facts and evidence produced in each case. Therefore, the precedent decisions would not bind the ongoing case. INDITEX did not reveal sales figure and expenditure for advertisement in connection with apparel bearing the mark ZARA.”

Furthermore, the Board found the consumers would perceive the opposed mark “LAZARA” as a whole, which would suggest an unfamiliar foreign word from a visual perspective. If so, “LAZARA” and “ZARA” are evidently dissimilar in appearance and pronunciation because of the distinction between the presence and absence of the letter “LA” in the suffix and the overall sound. As for the concept, it is not comparable since either mark does not give rise to any specific meaning. Consequently, both marks are unlikely to cause confusion due to their dissimilarity.

Additionally, the Board noted that INDITEX had not presented any evidence to substantiate their assertion that the applicant had filed the opposed mark for the purpose of gaining unfair profits or causing harm to INDITEX.

Based on the foregoing, the JPO dismissed the entire allegations of INDITEX and allowed “LAZARA” to survive.

ZARA vs AZRA

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The Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against trademark registration no. 6638156 for word mark “AZRA” in classes 11, 20, 21, 24 and 27 by finding dissimilarity to and less likelihood of confusion with “ZARA”.

[Opposition case no. 2023-900013, decided on September 1, 2023]

Opposed mark

Opposed mark, consisting of a wordmark “AZRA” in standard character, was applied for registration in the name of STREAK Co., Ltd., a Japanese company offering bedding, pillows, pillow covers, cushions [furniture], mattresses, curtains and sleeping pads, on August 9, 2022, by designating various goods in classes 11, 20, 21, 24 and 27, and published for post-grant opposition on November 16, 2022, without confronting with office action from the JPO.

Screen capture from Rakuten

Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an opposition on January 14, 2023 before the lapse of a two-month statutory period and claimed opposed mark “AZRA” shall be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations for word mark “ZARA”.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

INDITEX argued “AZRA” is similar to its own trademark “ZARA”, a worldwide famous fast-fashion brand, from visual, phonetic and conceptual points of view. Besides, the goods in question are identical.

Article 4(1)(xv) prohibits registering a trademark which is likely to cause confusion with the business of other entities.

INDITEX argued that “ZARA” has acquired a remarkable reputation among relevant consumers and the close resemblance between the marks and goods, and thus relevant consumers are likely to confuse or misconceive the goods bearing the opposed mark “AZRA” with “ZARA”.

Article 4(1)(xix) prohibits registering a trademark that is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

INDITEX argued the applicant must have filed the opposed mark aiming to gain unfair profits by the free-riding opponent famous trademark “ZARA”.

JPO decision

To my surprise, the JPO Opposition Board had a view that “ZARA” has not acquired a high degree of reputation and popularity among general consumers even though widely recognized among fashion conscious consumers by taking into consideration the produced evidence. The Board pointed a high number of followers on Facebook (31millions), Instagram (57millions) by itself would be insufficient and irrelevant to demonstrate a high degree of recognition among general consumers of the goods in question.

Besides, the Board found “AZRA” and “ZARA” are obviously dissimilar in appearance and pronunciation by stating that difference on the first and second letter and sound would be sufficiently distinguishable given both marks visually consist of four alphabets and aurally just two or three sounds. As for the concept, it is incomparable since either mark does not give rise to any specific meaning. Therefore, both marks are unlikely to cause confusion due to dissimilarity between the marks.

Since no evidence was shown by Inditex to support that the applicant filed the opposed mark for unfair purposes or causing damage to the opponent.

Based on the foregoing, the JPO dismissed the entire allegations of INDITEX and allowed “AZRA” to survive.

Failed Opposition against “Zara Sube Mist” by ZARA

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On March 25, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA” against trademark registration no. 6357258 for word mark “Zara Sube Mist” in class 3 by finding dissimilarity to and less likelihood of confusion with “ZARA”.

[Opposition case no. 2021-900193]

Zara Sube Mist

The opposed mark, consisting of three words, “Zara”, “Sube”, and “Mist” in standard character, was applied for registration by IBI Inc. to be used on cosmetics in class 3 on January 30, 2020.

The JPO granted protection on February 16, 2021, and published for opposition on March 23, 2021.

The applicant is using the opposed mark on skin lotions. Click here.

It should be noted “zara zara” is a usual term to represent the condition of ‘rough skin’ in Japanese. Likewise, “sube sube” is often used to represent the condition of ‘smooth skin’. Because of it, we would conceive of skin conditions from the term “Zara Sube.”

Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, claimed the opposed mark “Zara Sube Mist” shall be canceled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier IR no. 973064 for word mark “ZARA” in relation with cosmetics of class 3.

INDITEX argued, that given “ZARA” has acquired a remarkable reputation, relevant consumers of the goods in question are likely to see the literal element “Zara” as a prominent portion of the opposed mark and thus confuse or misconceive the opposed mark with “ZARA”.

JPO Decision

The JPO Opposition Board admitted that “ZARA” has become famous among relevant consumers and traders as a source indicator of the opponent in connection with clothing.

In the meantime, the Board questioned if the opponent mark “ZARA” has acquired a certain degree of reputation and popularity in relation to cosmetics from the produced evidence.

The Board found the consumers would see the opposed mark in its entirety due to a tight combination of three words and a non-redundant sound of ‘zara-sube-mist’. Being that “ZARA” failed to prove a certain degree of reputation and popularity as a source indicator of cosmetics, the Board has a reason to believe that relevant consumers would not consider the term “Zara” as a prominent portion of the opposed mark. If so, the opposed mark just gives rise to a pronunciation of ‘zara-sube-mist’ and no specific meaning.

Based on the above findings, the Board held “Zara Sube Mist” and “ZARA” are obviously dissimilar from visual, phonetic, and conceptual points of view.

If so, the opposed mark “Zara Sube Mist” is unlikely to cause confusion with “ZARA” by virtue of a low degree of similarity and remote association between apparel and cosmetics even though “ZARA” has been famous for apparel brand and coined word.

In a conclusion, the JPO dismissed the entire allegations of INDITEX and allowed “Zara Sube Mist” to survive.

ZARA successful in invalidating the Zarbleu mark

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The Japan Patent Office (JPO) sided with Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA” in an invalidation action against Japanese TM Registration no. 6110359 for word mark “Zarbleu” in class 25 by finding a likelihood confusion with “ZARA”.
[Invalidation case no. 2019-890038, Gazette issued date: August 28, 2020]

Zarbleu

Disputed mark “Zarbleu” was applied for registration by a Chinese corporation on January 24, 2018, by designating sweaters, shirts, trousers, outers, skirts, dresses, T-shirts, underwear, headgear, gloves, coats, and other clothing in class 25, and registered on December 28, 2018, without confronting with office action from the JPO.

Invalidation action by Inditex

INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an invalidation action on July 20, 2019, and claimed “Zarbleu” shall be retroactively invalidated in contravention of Article 4(1)(xv) of the Japan Trademark Law by citing senior trademark registrations for word mark “ZARA” in relation with clothing in class 25 and 35.

Article 4(1)(xv) prohibits registering a trademark which is likely to cause confusion with the business of other entities.

INDITEX argued, given “ZARA” has acquired a remarkable reputation among relevant consumers and the close resemblance between the marks and goods, relevant consumers are likely to confuse or misconceive opposed mark with “ZARA”.

JPO Decision

It would not surprise us that the JPO Invalidation Board admitted a high degree of reputation and popularity of “ZARA” among relevant consumers and traders as a source indicator of INDITEX in connection with clothing based on the facts that (i) “ZARA” launched fashion business in Japan since 1998 and increased the number of its stores in Japan to 100 as of December 2019, (ii) worldwide sales in excess of EUR 18 billion. (iii) ZARA has been ranked No.24(2017), No.25(2018) on Interbrand’s list of the most valuable global brands.

Astonishingly, the Board found a certain degree of similarity between “ZARA” and “Zarbleu” by stating that relevant consumers have a tendency to pay higher attention to the prefix of a mark and “Zarbleu” incorporates the same prefix “Zar” with “ZARA” which has acquired a high degree of reputation among the consumers in connection with clothing.

In addition, addressing sufficient strength of the ZARA mark as a fanciful term and close relatedness of goods in dispute, the Board concluded that relevant consumers and traders are likely to confuse clothing bearing the disputed mark “Zarbleu” with ZARA or misconceive a source from any entity systematically or economically connected with INDITEX. Thus, the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

Based on the foregoing, the JPO decided in favor of INDITEX and declared invalidation of the disputed mark “Zarbleu”.

ZARA Fails in Japanese Trademark Opposition Against “ZORA”

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The Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA” against trademark registration no. 6164247 for word mark “ZORA” in class 18 by finding dissimilarity to and less likelihood of confusion with “ZARA”.
[Opposition case no. 2019-900291, Gazette issued date: June 26, 2020]

Opposed mark

Opposed mark, consisting of a wordmark “ZORA” in standard character, was applied for registration in the name of CREST Co., Ltd., a Japanese company offering a wide variety of bags, pouches, and wallets for women or kids, on July 20, 2018, by designating bags, pouches, wallets in class 18, and published for opposition on August 13, 2019, without confronting with office action from the JPO.

Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, claimed opposed mark “ZORA” shall be revocable in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing senior trademark registrations for word mark “ZARA” in relation with bags, pouches, wallets in class 18 and 35.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

INDITEX argued “ZORA” is similar to its own trademark “ZARA”, a worldwide famous fast-fashion brand, from visual, phonetic and conceptual points of view. Besides, the goods in question are identical.

Article 4(1)(xv) prohibits registering a trademark which is likely to cause confusion with the business of other entities.

INDITEX argued, given “ZARA” has acquired a remarkable reputation among relevant consumers and the close resemblance between the marks and goods, relevant consumers are likely to confuse or misconceive opposed mark with “ZARA”.

Article 4(1)(xix) prohibits registering a trademark that is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

INDITEX argued the applicant must have filed opposed mark aiming to gain unfair profits by the free-riding opponent famous trademark “ZARA”.

JPO Decision

The JPO Opposition Board admitted a high degree of reputation and popularity of “ZARA” among relevant consumers and traders as a source indicator of the opponent in connection with clothing based on the facts that (i) “ZARA” launched fashion business in Japan since 1998 and increased the number of its stores in Japan to 100 as of December 2019, (ii) worldwide sales in excess of EUR 18 billion. (iii) ZARA has been ranked No.24(2017), No.25(2018), No.29(2019) on Interbrand’s list of the most valuable global brands.

In the meantime, the Board held “ZORA” and “ZARA” are obviously dissimilar in appearance and pronunciation by stating that difference on the second letter and the first sound would be anything but negligible given both marks visually consists of four alphabets and aurally just two sounds. As for the concept, it is incomparable since either mark does not give rise to any specific meaning.

If so, both marks are unlikely to cause confusion due to dissimilarity between the marks. Besides, the Board could not identify any ground to believe the applicant filed opposed mark for unfair purposes or causing damage to the entity.

Based on the foregoing, the JPO dismissed the entire allegations of INDITEX and allowed “ZORA” to survive.