Sometimes when it comes to trademark disputes they can be defined as a battle between ‘David and Goliath’ considering the different positions and backgrounds of the Parties.
This is the case between an owner of a small boutique in the UK and the global clothes chain Zara.
Amber Kotrri owns a clothes boutique under the name ‘House of Zana’ for which she filed a trademark in the UK.
Against this application, an opposition was filed by ZARA based on an earlier mark for clothes and stores. Additionally an established reputation was claimed aiming to support the likelihood of confusion and the possible negative impacts on Zara’s famous brand.
Mrs. Kotrri pointed out that the name of her boutique stemmed from the Albanian word for fairies, and the reason for using it was the fact that her husband was Albanian.
The UKIPO accepted the meaning of the mark applied for but concluded that it is not popular among UK consumers at all, so it is irrelevant for the case.
Although the Office found some similarities between ZANA and ZARA, dismissed the entire similarity between the signs because the words HOUSE OF in the later mark created enough distinguishing impression.
When it comes to the claimed reputation of ZARA, the Office found only a small possibility for association with the latter mark in the consumer’s mind, so any detriment or tarnishment was not feasible as a whole.
Source: CMS Cameron McKenna Nabarro Olswang LLP – Kelly Saliger for Lexology.