While cancelling registration of the mark “ZORA” bearing registration No. 4310686 in Class 24, the Delhi High Court has directed the Registrar of Trade Marks to remove the “ZORA” entry from the Register of Trade Marks. The Court clarified that for the purposes of Section 11(2) of the Trade Marks Act, an earlier mark need not be formally declared as a “well-known trademark” before its proprietor can oppose registration of a later similar mark. If the evidence shows that the earlier mark is entitled to protection as a well-known mark in India, Section 11(2) can be invoked.
The Court also laid down that similarity between rival marks must be judged on an overall impression and not by dissecting the marks into separate syllables or components. Applying that test, “ZARA” and “ZORA” were held to be deceptively similar phonetically and visually. Additionally, the Court emphasised that under Section 11(2), the issue is not confined to consumer confusion in the classic Section 11(1) sense. The focus is on protection of the reputation and distinctiveness of the earlier well-known mark against dilution, unfair advantage and detriment, even where the later mark is sought to be registered for dissimilar goods.
A Single Judge Bench of Justice Jyoti Singh first examined Section 11 of the Trade Marks Act and made an important distinction between Section 11(1) and Section 11(2). It observed that Section 11(1) is concerned with likelihood of confusion in cases involving similar or identical goods/services, whereas Section 11(2) protects an earlier well-known mark even against dissimilar goods if use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.
On the issue whether a mark must be formally declared “well-known” before Section 11(2) can be invoked, the Court held that Section 11(2) does not require a prior formal declaration by a court or inclusion in the Registrar’s list of well-known marks. What is required is that the earlier mark should, on the evidence, be entitled to protection as a well-known mark in India under Section 2(1)(zg) read with Section 11(6) and Explanation (b) to Section 11.
Applying that principle, the Court found that the evidence on record clearly showed that “ZARA” had immense reputation, substantial Indian and international presence, extensive sales, advertising, diversified product lines, and prior judicial recognition as a well-known mark. The Court therefore held that “ZARA” was entitled to protection as a well-known mark under Section 11(2), regardless of whether there had been a separate formal declaration process.
The Court then held that the Registrar had applied the wrong legal test while comparing “ZARA” and “ZORA”. It said that rival marks must be compared as a whole and not by dissecting them into parts such as “ZA” and “ZO”. The Court found that both marks are four-letter word marks, begin with “Z”, end with “RA”, have the same consonant structure, and produce a similar overall phonetic impression. The difference of one vowel was held insufficient to avoid deceptive similarity, particularly from the perspective of a person of average intelligence and imperfect recollection.
The Court further observed that once Section 11(2) is attracted, the respondent’s argument on dissimilarity of goods loses much of its force, because a well-known mark is protected even against dissimilar goods. Even otherwise, the Court noted that both marks were in Class 24 and there was a connection in the course of trade, as ZARA’s brand presence extended beyond end-consumers to manufacturers, traders and suppliers dealing in textiles, bags and related products.
The High Court also held that the Registrar wrongly looked for proof of actual public confusion. It clarified that actual confusion is not the controlling test under Section 11(2). The proper enquiry under that provision is whether the later mark, used without due cause, would take unfair advantage of or harm the distinctive character or reputation of the earlier well-known mark. The Court found that use of “ZORA” would dilute and blur the distinctiveness of “ZARA” and would wrongly suggest a trade connection with the appellant’s brand.
Briefly, an appeal was filed under Section 91 of the Trade Marks Act, 1999 filed by Industria De Diseno Textil, S.A. against an order of the Registrar of Trade Marks dated Feb 08, 2024., whereby, the Registrar had rejected the appellant’s opposition and allowed registration of the mark “ZORA” in Class 24 in favour of Aggarwal Bag House. The dispute arose because the appellant, owner of the well-known mark “ZARA”, contended that “ZORA” was deceptively similar and could not be registered. The appellant stated that “ZARA” is its flagship brand, adopted in 1975, and that it has acquired extensive international and Indian reputation in relation to fashion products and home products. It also pointed out that ZARA has been present in India since the 1980s through contract manufacturers, had opened stores in India from 2010 onwards, and held registrations in several classes including Class 24.
Respondent No. 2 had applied on Oct 30, 2019 for registration of “ZORA” with a user claim since June 03, 2016 for fabrics including coated, laminated, impregnated and waterproof fabrics in Class 24. The appellant opposed this registration on the ground of deceptive similarity, overlap in trade connection, and dilution of the reputation and distinctiveness of the mark “ZARA”.
The Registrar, however, held that “ZARA” and “ZORA” were phonetically and visually different because the prefixes “ZA” and “ZO” sounded and appeared different. The Registrar also took the view that the goods, trade channels and consumer bases were different, since respondent No. 2 was selling raw polyester lining fabric to manufacturers, while the appellant sold finished retail products through exclusive stores and websites. On that basis, the opposition was rejected.
