The Guardian recently reportedrecently reported on a case involving Amber Kotrri, owns House of Zana, which trades online and from a single concept store in Darlington, County Durham. It specialises in handmade kimonos.
In December 2020, it tried to register as trade marks the following two logos in class 35 (Clothing):
It was approved by the UK IPO and published in February 2021. Publishing a trade mark gives anyone a 2-month window to oppose the application for registration.
Industria De Diseño Textil, Sociedad Anonim, opposed the registration. It is the owner of trademarks for ZARA (as a plain word mark). It opposed on a number of grounds:
- That the parties’ marks are highly similar (visually, aurally and conceptually), such that there is likelihood that the average consumer will be confused as to the origin of the goods – section 5(2)(b) claim
- ZARA mark has an extensive reputation, and the applicants mark would bring to mind the Zara mark, it would take an unfair advantage of and ride on the success of ZARA and cause detriment to the ZARA brand.
The Applicant Katri defended the opposition, although did so badly and without any legal advice. That’s said, she still won – but the Judge basically took in to account none or very little of her evidence, as it was not relevant. But it shows the disparity between what the average person thinks a Court (or in this case a Tribunal) should take into account and what the Court or Tribunal actually takes into account. Ms Kotrri made points relating to: (i) the Applicant’s own local business reputation; (ii) the impact of the presence of the words “House of”; (iii) the meaning of Zana in Albanian; (iv) the parties’ difference in branding and a lack of intention to mislead customers; and (v) that the names Zara / Zana are different, with different business focus and ethos.
The Tribunal Officer took a very detailed and careful look at all of the legal points required to make a decision – you can see the lengthy judgment here.
One interesting argument by Zara’s lawyers was that “House of” did not add anything, and that Zana was the real distinctive part of the mark. The Tribunal Officer disagreed. He said the words “House of” are “flavoured with a gentle grandeur such that they may more fairly be considered to have a degree of distinctiveness, though still a low degree” and:
The overall impression of House of Fashion or House of Windsor – two of the marks given in the Opponent’s evidence – is clearly quite different from the words Fashion or Windsor standing alone.
Ultimately, after a long winded judgment, the Officer concluded that there was not a likelihood of confusion between the marks, and so House of Zana succeeded in her application.
What’s interesting is the mind of the business owner faced with a strong letter from Zara’s London Lawyers Taylor Wessing. She said to the Guardian: “Kotrri said about two years ago she received a notice opposing her attempt to trademark her business name. It was followed by a lawyer’s letter suggesting that her store’s name was too similar to Zara and people could be confused. She was given three months to stop using it and her first thought was to comply. “I mean, how do you fight something like that?”
She did it herself – not something I’d personally recommend over getting expert trademark lawyer advice from me – but in the end it turned out ok for her.
She bravely said she hoped to send out a message. “It was a win for myself and my business but it is also for other independents out there who are going through this. This shows you can stand up to big businesses.”
And you can stand up to big businesses – but best to have a great lawyer fighting your corner too.