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Fashion giant Zara criticised over trade mark challenges against smaller businesses
Zara, the Spanish high street fashion giant, recently received negative publicity having been accused of using its financial muscle to intimidate two small independent businesses into giving up their trade mark applications and to cease using their trading names.
The small businesses in question are House of Zana, an independently owned boutique in Darlington which trades under the name House of Zana, and Tara Sartoria, an on-line retailer of silk products and garments sourced ethically from Vietnam and Indonesia.
House of Zana attributes the name Zana to the hometown in Albania of her husband. Tara Sartoria’s website says ‘We are named for Tara, the Buddhist goddess of compassion and protection, to honor the women whose lives we touch for the better. Tara, my English name, was born from a lotus, the flower you see in our name. Sartoria, Italian for a tailor’s shop, honors the handmade in our clothing.’
Zara has opposed both businesses’ applications for trade marks. In order to succeed in opposing the applications, Zara will have to convince the Trade Marks Tribunal that House of Zana and Tara Sartoria are similar to its own trade mark Zara and that there exists the likelihood of confusion on the part of the public, which includes the likelihood of association with Zara’s trade mark. Another potential ground of opposition that Zara could deploy would be to argue that its trade mark has acquired a reputation in the UK and the use of House of Zana or Tara Sartoria takes unfair advantage of, or is detrimental to, the character of Zara’s trade mark.
It is probable that Zara will overcome the first hurdle in demonstrating that both names are similar to Zara. For the purposes of assessing similarity, the words ‘Zana’ and ‘Tara’ are the critical words when making the comparison. Both words are aurally similar to Zara. ‘House of’ and ‘Sartoria’ lack any distinctiveness and are disregarded for the purposes of considering similarity.
The question then arises whether there is likely to be confusion on the part of the public. The public, for these purposes, will be the fashion buying public and confusion tends to be assessed at the point of purchase. The question is whether the consumer at the point of purchase is confused into believing that the goods they are buying are those of the other trade mark owner.
Tara Sartoria’s website is quite distinctive to Zara’s website and therefore it would appear to be a significant stretch that anyone would be confused into thinking they were buying Zara’s goods. House of Zana is a small boutique store in Darlington and it’s equally unlikely that the fashion purchasing public would believe they were in a Zara store.
Whether either Tara Sartoria or House of Zana takes unfair advantage of Zara’s reputation or is detrimental to it, is perhaps where there is divergence in the two small businesses’ positions. The trade mark Tara Sartoria viewed as a whole is unlikely to be seen as ‘free riding’ on Zara’s coat tails or otherwise creating detrimental association with Zara.
House of Zana is much closer to Zara and could possibly be viewed as ‘free riding’. However, Zara would then have to prove an additional element, namely that the behaviour of consumers had changed to Zara’s detriment as a result of the use of House of Zana. An example of such a change in behaviour might be that some of Zara’s customers stopped travelling to its nearest store (which happens to be in Newcastle 30 miles away) because they were attracted by the House of Zana’s trade mark. This would be difficult to prove.
Trade marks are important monopoly rights and give trade mark owners rights to protect their brands in which they have invested or intend to invest. This applies equally to any small business starting out and to multi-national business with established brands.
Regrettably, some large companies seek to use their financial clout and significant legal resources to extend the reach of their rights beyond the scope of the protections afforded to them. They may take this approach in order to stifle any form of perceived competition by using the threat of Court proceedings for infringement or opposition proceedings on weak grounds in the expectation that they will scare smaller businesses into surrendering their trade marks to them.
If you have been on the receiving end of threats of trade mark infringement, one of our team of intellectual property lawyers will be happy to advise you.