India: Protection To Marks With Trans-Border Reputation Well Recognized In India

Co-authored by Mr. Saif Rahman Ansari, fourth year student of B.Tech LL.B from UPES College of Legal Studies, Dehradun

On 19th May, the Delhi High Court passed an interim order in the matter of Industria De Diseno Textile Sa v. Oriental Cuisines Pvt. Ltd. and ors., which once again strengthened the protection for marks with trans-border reputation in India. The case involved the renowned trademark ZARA (hereinafter as "Plaintiff"), an internationally known company for its clothing and accessories, who filed an infringement suit against a leading chain of Spanish cuisine restaurant ZARA TAPAS BAR (hereinafter as "Defendant") in Chennai and Kolkata for using a deceptively similar mark as its restaurant name.

The issues between the parties were regarding the deceptive similarity between 'ZARA' and "ZARA TAPAS BAR', adoption of the impugned mark 'ZARA TAPAS BAR', delay and acquiescence, and more importantly ZARA's Trans-Border Reputation.

Plaintiff, an internationally reputed company adopted the word ZARA as its trademark in 1975 and the same is registered in India since 1993. The Plaintiff also manufactured the product in India. While the defendant is a Spanish cuisine restaurant and bar named ZARA TAPAS BAR opened in the year 2003. The defendant also filed an application for registration of the mark ZARA TAPAS BAR which was opposed by the Plaintiff. The said opposition was pending at the time of the trial of the present suit.

In the year 2013, when the present suit was filed the defendant was restrained from using the mark ZARA as its trademark by an ex-parte ad interim order but the order was later vacated and the Court allowed the defendant to use composite trademark ZARA TAPAS BAR not ZARA as per se. On the contrary, plaintiff provided enough evidence to show that the defendant had been infringing upon the trademark ZARA belonging to the plaintiff. In some of the advertisements by the Defendant only word ZARA was highlighted and was 10 times bigger in font than the following terms TAPAS and BAR. And in others, word ZARA was used per se without the words BAR AND RESTAURANT. It was obvious that the defendant attempted to use the impugned mark in a deceptively confusing manner in order to gain profit in Plaintiff's goodwill.

The defendant contented that its adoption of mark ZARA was a Spanish variation of the name Sarah whereas Plaintiff's adoption was from the name of the city ZARAGOZA. It was shown that the word ZARA is neither generic nor descriptive nor a dictionary word when Spanish is concerned. However this explanation for adoption of the mark ZARA by the defendant was not convincing and the Defendant failed to prove an honest adoption and use of the impugned mark. The Court concluded that the mark adopted by the defendants was used to ride on the reputation of the globally established mark of the Plaintiff.

At last the recognition and protection of trans-border reputation of the marks came to the rescue of the Plaintiff and the court decided the matter in the favor of the Plaintiff. The court observed that it was prima facie established that the mark ZARA was adopted by the plaintiff in the year 1975 while the defendant had adopted the impugned mark in the year 2003. Even at the time of this adoption by the Defendant, the impugned mark was well-known and reputed even in India. Evidence in regard to the same was placed on record by the Plaintiff including some of the articles like 'ZARA, a Spanish Success Story" of June 15, 2001 was by CNN.com, 'The reign of Spain' dated October 28, 2002 in The Guardian, 'Retail @ the speed of Fashion' on the site thirdeyesight.in by an Indian Devanshu Dutta in the year 2002 and 2003.

Although there were no ZARA stores in India opened prior to 2010, but the name ZARA had sneaked into the Indian Territory way before 2003. Thus the Court concluded that the defendants' adoption of the mark was dishonest and fraudulent and to prevent any irreparable loss and injury to the plaintiff ad interim injunction was granted against the Defendant restraining him from using the impugned mark.

The order passed by the Delhi High Court is a reminder that Indian Courts are the protector of the well-known marks having trans-border reputation and infringers in no manner would be entertained.

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