No.9770523 "ZARA" trademark application was filed by one individual surnamed Pan for the trademark to be used on Class 43 services including restaurants and cafeterias. On August 18th, 2013, Inditex did not buy the decision for the opposition proceedings made by the Trademark Office (TMO) and sought a review at the former Trademark Review and Adjudication Board (TRAB). Inditex claimed that its "ZARA" trademark has been extensively registered in China and gains high popularity after long, wide use and promotion. The copying and imitation of the trademark in dispute would easily cause confusion, mislead the public and prejudice its interests. Inditex pleaded for enjoining the registration of the trademark in dispute. Pan argued that "ZARA" was not a group of exclusive Latin letters and many trademarks containing the name "ZARA" had been registered. Pan thought that the trademark in dispute does not constitute the similar marks used on the same or similar goods and the registration and use of the trademark in dispute would not violate the interests of Inditex.
The former TRAB held that the evidences provided by Inditex could prove the "ZARA" trademark had been familiar to the relevant consumers after long-time and extensive promotion before the application of the trademark in dispute. Considering that many international renowned designer brands in clothing and cosmetics tend to have products in multiple lines of industries, co-existence of the trademark in dispute and "ZARA" trademark would confuse relevant consumers and jeopardize the interests of Inditex. Pan's act of registering the trademark in dispute should be subject to the restrictions provided in Article 13, paragraph 3 of the current Trademark Law of China.
Impact of the Case
In terms of the well-known trademarks in China used across multiple industries, the protection range should be adapted to its popularity. The case has broaden the protection scope for famous, creative and popular well-known trademarks registered in China so as to curb the act of selling goods by freeriding or hitting the edge ball.
(Editor Shao Jingjing)
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