Was Zara away with the Fairies?

Zara v House of Zana – How close is too close?

We’ve all read the news and seen the outcome. The trade marks ‘Zara’ and ‘House of Zana’ have been deemed not similar for the purpose of a UK trade mark opposition.

However, in a decision that recognises ‘Zara’ as a well-known brand in relation to clothing, and having an enhanced distinctiveness to a very high degree, what contributed to this finding?

It’s important to remind ourselves from the outset that this isn’t a decision based on why Ms Kotrri (of ‘House of Zana’), the applicant, chose her brand name. The fact that she may have had a legitimate reason for choosing the brand name doesn’t factor into the assessment made by the Registrar on behalf of UK Intellectual Property Office (“UK IPO”).

The task of the Registrar, the decision maker, was to determine whether there was a likelihood of confusion “based on the perspective of the notional average consumer… and on notional fair and ordinary use that either party may make of their respective trade marks. Any comparison of the marks must be on the basis of how they appear in the register”.

So, whilst it was interesting to hear in Ms Kotrri’s evidence about the etymology of her brand and why she chose ‘House of Zana’, it didn’t materially impact on the Registrar’s decision. What did matter was whether a member of the public, the average consumer, would attach any understanding to the word element ‘Zana’.

“While I accept that the subjective intention behind the choice of House of Zana might have been a reference to the magical tailorings of fairies, I find that the average consumer (a member of the UK general public) would be unaware of the significance of the word Zana in the Albanian language. The word Zana is unusual. It is certainly not a common name in English, and not one that I, as a member of the average consumer group, have ever encountered, and I therefore conclude that it is likely to be perceived as a meaningless word”.

In comparing the marks ‘Zara’ and ‘House of Zana’, the Registrar made a multi-factoral assessment. As part of their finding, the Registrar, ruling the marks to be dissimilar, noted how the addition of ‘House of’ impacted on the overall assessment of the marks. The Registrar used the traditional assessment method of breaking down the elements of each mark to finalise the decision:

“In my view, 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 to a low degree.”

“While I agree that “Zana” is much the distinctive component of the House of Zana, the trio of words forms a unit that is more substantial than the four-letter word alone. Since it is the third word, the second shortest of the trio, and is part of a unit, (albeit a unit of conventional construction), I do not agree that the third word [Zana] dominates the House of Zana”.

Before finalising the decision, the Registrar again issued this warning in relation to their findings:

“The question is whether there is a likelihood of confusion amongst a significant proportion of the relevant public, occasional confusion by a small minority is not sufficient to find a likelihood of confusion. The relative weight of the factors is not laid down by law, but is a matter of judgment for the tribunal on the particular facts of each case.

The legal test ‘likely to cause confusion amongst the average consumer’ is inherently imprecise, not least because the average consumer is not a real person; it involves a predication as to how the public might react to the presence of two trade marks in ordinary use in trade” (my emphasis added).

The decision, in relation to likelihood of confusion, favours Ms Kotrri. The decision also goes on to explore a second ground of objection from Zara, specifically, that use of ‘House of Zana’ would impact on the reputation that Zara has built up and acquired. In this respect, the Registrar accepted that there would be a, albeit fleeting, mental link made between ‘Zara’ and ‘House of Zana’, but concluded “the similarity from the overall impressions is not so strong as to provoke such an unthinking Pavlovian response in the general public”. The Registrar concluded, therefore, that he was not satisfied that there would be detriment caused to the repute of Zara, nor did he find any tarnishment (tarnishment here being described as the type of case where conflicts arise between identically named jams and dog food, or identically named chewing gums and cigarettes).

As a Chartered Trade Mark Attorney it’s gratifying to see the general public engage publicly with brand awareness and protection, in this case largely by way of support for Ms Kotrri. High profile cases such as Colin the Caterpillar, Joe Lycett’s ‘Hugo Boss’ name change, and Conde Nast pursuing The Star Inn Vogue in Cornwall, have all received considerable media coverage and served to raise the public profile of trade mark matters in the UK.

However, it is important to keep in mind that whilst such ‘David and Goliath’ cases are fun to read, the reality is that there are hundreds of decisions issued each year in favour of ‘big brands’. They are, of course, entitled to protect themselves within the boundaries of the law – such businesses have spent significant time and money growing the value of their brands and trade marks, a point which should not be overlooked. Whilst it is reassuring to see that litigants in person are supported through the UK opposition process by the UK IPO, it is important to remember that ‘Clearance is King’. Clear your brand before you launch your business. See what else, and who else, is out there. If you’re able to, take professional advice, and start your business from a safe space without the drama and cost of a possible legal disputee. If you need advice, get in touch, or use the tool offered by the Chartered Institute of Trade Mark Attorneys to find someone local to you: CITMA - Find a Chartered Trade Mark Attorney.