September 1, 2015
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INDIA: Well-Known Mark ZARA Wins Trademark Infringement Battle
The Honorable High Court of Delhi recently granted an ad interim injunction in Industria De Diseno Textile Sa v. Oriental Cuisines Pvt. Ltd. And Ors, restraining the defendants (Oriental Cuisines Pvt Ltd and Ors) from the use of the plaintiff’s (Industria De Diseno Textile SA) well-known trademark ZARA as a part of the defendant’s mark, ZARA TAPAS BAR.
The Court emphasized the defendant’s bad faith intent, which the Court said was evident from the defendant’s website advertising the mark. The Court observed that the word “ZARA” was used in such a manner that it was almost 10 times bigger than other words following it. In certain places, the said word was used per se, leaving no doubt of it being identical/deceptively similar to the plaintiff’s well-known mark.
The Court held: “If the Defendants did not want to ride on the plaintiff’s reputation, they would have not used the word ZARA prominently in the words ZARA TAPAS BAR or ZARA, the Bar and Restaurant.”
With respect to the issue of ZARA being common to trade, the Court observed that the defendant could not establish the generic nature of the word ZARA. Further, the plaintiff provided several registrations in its name for the mark ZARA, whereas the defendant relied on 46 third-party registrations for marks it contended to be similar/identical to ZARA, which according to the Court was misconceived, as the words HAZARA, KEWDA, ZARATOR, LOZAR-A, etc. were sought to be claimed similar to the word ZARA by the defendant.
The Court held: “We are living in the 21st century. At least since the beginning of this century, there is widespread dissemination of information through the Internet and television. ZARA was catering to the middle class and higher middle class. Consumers in India cannot be unaware of the plaintiff’s company and its product.”
The single judge also rejected the defendant’s remaining contentions regarding the delay in institution of suit and suppression of facts by the plaintiff. The Court pointed out that mere delay in institution of suit or misstatement of certain facts, unless mala fide, shall not invalidate the plaintiff’s right to seek the relief of injunction. Finally, while granting the relief of ad interim injunction, the Court observed that the plaintiff had a prima facie case and the balance of convenience lay in its favor.
The decision is good news for foreign brand owners seeking to protect their trademarks in India.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2015 International Trademark Association