Dara Craiceann Ltd v Inditex S.A
[2022] ATMO 114
•11 July 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Inditex S.A. to registration of trade mark application number 2036181 (classes 3, 5) – Zarasyl – in the name of Dara Craiceann Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Shauna Ross of counsel instructed by IP Solved (ANZ) Pty Ltd Applicant: Edwina Whitby of counsel instructed by Holding Redlich |
| Decision: | 2022 ATMO 114 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44, 58, 60 and 62(b) pursued – none established – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by Inditex S.A. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: Zarasyl (‘Trade Mark’)
Application Number: 2036181
Applicant: Dara Craiceann Ltd (‘Applicant’)
Filing Date: 12 September 2019
Claimed Priority Date: 13 August 2019[1]
Specification: Class 3: animal care products (other than for veterinary use)
Class 5: veterinary products
(‘Goods’)
[1] A convention priority date was claimed by the Applicant based on a Canadian trade mark application made in respect of ‘biochemical preparations for veterinary use’ in class 5.
The trade mark application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks on 13 February 2020. The Opponent filed a notice of intention to oppose on 9 April 2020 followed by a Statement of Grounds and Particulars (‘SGP’) on 28 April 2020. A notice of intention to defend was filed by the Applicant on 24 July 2020.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’) and an oral hearing was subsequently requested. Written submissions were filed by the Opponent on 2 March 2022 (‘Opponent’s Submissions’) and by the Applicant on 11 March 2022 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 25 March 2022. Shauna Ross of counsel presented submissions on behalf of the Opponent and Edwina Whitby of counsel presented submissions on the Applicant’s behalf.
Pursuant to discussions at the hearing, I invited the parties to file supplementary written submissions addressing the s 62(b) ground of opposition. Both parties availed themselves of this opportunity with the Applicant filing submissions on 4 April 2022 followed by the Opponent filing submissions on 11 April 2022 (‘Opponent’s Further Submissions’).
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 43, 44, 58, 60, 62(b) and 62A of the Act. However, only ss 42(b), 44, 58, 60 and 62(b) were pressed in written submissions and at the hearing. As such, I consider the grounds under ss 43 and 62A to have been abandoned.
To be successful in this opposition, the Opponent bears the onus of establishing at least one of the grounds.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined depends on the ground of opposition under consideration given the filing date and claimed priority date of the application differ. However, nothing in this decision turns on the distinction between these dates so I will blanketly refer to them as the ‘Relevant Date’.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed as evidence:
| EIS |
|
| EIA |
|
| EIR |
|
EIS
Abadin 1 describes the Opponent as being one of the world’s largest fashion retailers which has more than 7,400 stores worldwide and operates under different commercial formats including ‘ZARA’ and ‘ZARA HOME’. The Opponent has a considerable global trade mark portfolio and is the owner of numerous Australian trade mark registrations which incorporate the word ‘ZARA’ in respect of various goods and services. These Australian registrations include (collectively ‘Opponent’s Marks’):[4]
[4] Relevant details of each trade mark registration are listed in Annexure A to this decision.
| Number | Trade Mark | Class(es) | Priority Date | Short Title |
| 626852 | 3, 25, 39 | 7 April 1994 | 52 Mark | |
| 801650 | 25, 35 | 27 July 1999 | 50 Mark | |
| 1029958 | 3, 4, 5, 6, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 34, 35 | 17 March 2003 | 58 Mark | |
| 1984796 | 3, 9, 14, 18, 25 | 10 May 2018 | 96 Mark |
10. According to Abadin 1, ‘ZARA’ was first used in 1975 in connection with a clothing store located in Spain. Shortly thereafter, ‘ZARA’ was used in relation to the manufacture, supply and sale of clothing goods and it has been continuously used since with respect to these goods and services. Mr Abadin details the Opponent’s promotion of ‘ZARA’ as including the establishment of stores ‘in the main shopping streets and districts of all the major cities worldwide’[5] and ensuring that each store ‘embodies certain characteristics and meets certain criteria to enhance the consumer experience’.[6] Abadin 1 highlights that ‘ZARA’ is featured on the Opponent’s storefronts as well as being displayed instore. ‘ZARA’ also features prominently on its global websites[7] and is promoted on the Opponent’s social media pages.
[5] Abadin 1, [35].
[6] Ibid [34].
[7] See and Abadin 1 exhibits various overseas publications as well as 2 decisions from the Chinese Trade Mark Review and Adjudication Board (‘TRAB’) which recognised the ‘well-known trademark’ status of ‘ZARA’.[8] Mr Abadin asserts that this material illustrates the well-known reputation of ‘ZARA’ in the United States of America, India and China. Further, multiple reports and brand rankings which list ‘ZARA’ as being one of the world’s most valuable and growing brands are also exhibited to Abadin 1.
[8] Abadin 1, Exhibit 3 which contains a 2015 decision on non-approval of registration of Chinese trademark number 9770523 for ‘ZARA’ and a 2017 decision on non-approval of registration of Chinese trademark number 13058305 for ‘ZARA’.
12. Mr Abadin declares that ‘ZARA’ was first used in Australia in April 2011 and it has been continuously used since then in connection with a broad range of goods and services including fashion accessories, clothing and retail services. Goods and services promoted under ‘ZARA’ are provided by the Opponent via a network of 19 physical stores located throughout Australia as well as through its Australian specific websites accessible at and Abadin 1 asserts that ‘ZARA’ enjoyed a substantial reputation in Australia in respect of a broad range of goods and services well before April 2011. In Mr Abadin’s view, this was due to reputation spilling over from overseas markets including Europe and Asia. Mr Abadin states that ‘ZARA’ is ‘known for its broad selection of goods including lifestyle products covering a wide range of the sector and the brand is recognized through its collaborations and different campaigns’.[9] Exhibited to Abadin 1 are various articles and publications which mention the Opponent’s use of ‘ZARA’ in Australia. Mr Abadin observes that the reputation of ‘ZARA’ has also been spread by word mouth based on the number of Australian consumers who travel overseas to purchase ‘ZARA’ branded goods.
[9] Ibid [32].
14. Abadin 1 also references Industria De Diseño Textil S.A. v King Furniture Australia Pty Ltd (‘King Furniture’)[10] wherein the Registrar’s delegate acknowledged that ‘ZARA’ and ‘ZARA HOME’ had acquired a reputation in Australia. In Mr Abadin’s opinion, the King Furniture decision exemplifies the reputation enjoyed by these marks within Australia.
EIA
[10] 2019 ATMO 162 (‘King Furniture’).
15. The Magnier Declaration states that the Applicant commenced operating its business in Ireland under the Trade Mark in June 2018. The Applicant’s business involves the provision of a ‘unique formulated barrier cream, developed by scientists for application to the skin of horses’.[11] Specifically, this equine product ‘contains a proprietary amorphous Silica with a molecular structure tailored to provide sustained delivery of Orthosilicic acid to the skin’.[12] The Applicant subsequently expanded its business into the United Kingdom and the United States of America in August 2019. Ms Magnier explains that the Applicant intends to bring to market a product for use on companion animals which is similar to its equine product.
[11] Magnier Declaration, [13].
[12] Ibid [14].
16. Ms Magnier declares that the Trade Mark was created by combining the elements ‘dara’ (from the Applicant’s Gaelic name) and ‘sil’ (because the product contains a proprietary amorphous silica) and subsequently substituting the letters ‘d’ and ‘i’ with the letters ‘z’ and ‘y’, respectively.[13] In Ms Magnier’s view, the resultant ‘zarasyl’ was a strong and unique name that alluded to both the Irish origin and key technology underpinning the product.
[13] Ibid [17].
17. The Magnier Declaration outlines the Applicant’s intended Australian product distribution channels as including online mediums as well as through veterinary and pet distributors. The Trade Mark has been promoted via the Applicant’s website ( and also ‘through sponsorships and endorsements with third parties within the Applicant's consumer base’.[14] It is the Applicant’s intention to use the Trade Mark ‘in relation to specialised animal care and veterinary products’.[15]
[14] Ibid [55].
[15] Ibid [90].
18. The remainder of the Magnier Declaration largely contains submissions that the Opponent and Applicant provide different types of goods and target different consumers. Ms Magnier compares the Trade Mark with ‘ZARA’ and ‘ZARA HOME’, and concludes that the relevant marks are dissimilar. In Ms Magnier’s opinion, the EIS also does not advance any evidence of ‘ZARA’ possessing a reputation in the animal care industry and the King Furniture decision only supports the reputation of ‘ZARA’ in relation to homewares and furniture.
EIR
19. Abadin 2 provides additional material that allegedly supports the worldwide recognition of ‘ZARA’ and ‘ZARA HOME’. Relevantly, brand ranking guides and third party articles are provided to illustrate the significant online presence enjoyed by these marks and the wide range of goods that they are used on.
20. Mr Abadin responds to the conception of the Trade Mark as outlined in the Magnier Declaration. In his opinion, ‘darasyl’ is the logical trade mark for the Applicant to adopt and not a ‘name that incorporates the well-known ZARA mark at the beginning’.[16] Mr Abadin remarks that the Applicant has not supplied any evidence of use of the Trade Mark in Australia.
[16] Abadin 2, [11].
21. Examples of ‘ZARA’ being used in connection with the sale of pet care accessories are exhibited in Abadin 2 and it is declared that the Opponent provides a ‘ZARA pet collection’.[17] Reference is made to Australian media articles which discuss the Opponent’s expansion from the provision of wardrobe staples to include a range of pet related goods. In Mr Abadin’s view, the modern consumer ‘is typically cognisant of brand extension’ and they ‘might expect that fashion brands will release a range of products that are produced for use with pets and/or pet care’.[18] To illustrate this, Abadin 2 exhibits a decision issued by the Court of Justice of the European Union that recognised ‘there is currently a trend for trade marks present in the fashion market to evolve towards other markets and business sectors’.[19]
[17] Ibid [19]–[20].
[18] Ibid [16].
[19] Abadin 2, Exhibit 11 which contains a 2019 decision made in respect of an application for the EU figurative mark ‘ZARA TANZANIA ADVENTURES’ in classes 39, 31 and 43.
22. Abadin 2 also draws attention to the claim for priority made by the application. Relevantly, Mr Abadin notes that Canadian convention application number 1980224 (‘Convention Application’) relied upon by the Applicant is a pending trade mark application with claims for certain goods in class 5.
Discussion
Section 44
23. Section 44 of the Act relevantly provides:
Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
24. To establish this ground, the Opponent must identify at least one trade mark which satisfies the following requirements:
it is in the name of a person other than the Applicant;
it has a priority date which is earlier than the Trade Mark’s priority date;
it is substantially identical with, or deceptively similar to, the Trade Mark; and
it is in respect of goods and/or services which are either similar and/or closely related to the Goods.
25. The SGP identified the Opponent’s Marks as supporting this ground. Common to each trade mark is the word ‘ZARA’ which, unsurprisingly, forms the focal point of the Opponent’s Submissions. As ‘ZARA’ constitutes the sole element of the 52 Mark, the following discussion will undertake a comparison between the Trade Mark and the 52 Mark. If ‘ZARA’ is not found to be at least deceptively similar to the Trade Mark, logic dictates that the 50, 58 and 96 Marks are also not substantially identical with, or deceptively similar to, the Trade Mark. This is particularly so given the latter two possess a greater degree of dissimilarity to the Trade Mark.
26. The 52 Mark is registered by a person other than the Applicant and has a priority date earlier than 13 August 2019. Requirements (i) and (ii) outlined at [24] of this decision are satisfied. In relation to requirement (iii), the test for ‘substantial identity’ was articulated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[20]
[20] [1963] HCA 66, [12] (‘Shell’).
27. The Full Court of the Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd observed that:
A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[21]
[21] [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).
28. The trade marks are reproduced below:
| Trade Mark | 52 Mark |
| Zarasyl |
29. The Opponent contends that striking aural and visual similarities between the trade marks arise from the 52 Mark being wholly contained in the Trade Mark and the suffix ‘SYL’ being descriptive of the Goods.[22] In short, its position is that ‘ZARA’ forms the essential feature of each trade mark. The Applicant disagrees and asserts that the trade marks are visually and aurally dissimilar due to the presence of ‘SYL’ in the Trade Mark.[23]
[22] Opponent’s Submissions, [62]–[64].
[23] Applicant’s Submissions, [33].
30. In my assessment, the Trade Mark and the 52 Mark are not substantially identical. A side by side comparison of the trade marks reveals notable differences. I do not accept that ‘SYL’ is a directly descriptive element[24] which is capable of excision from the Trade Mark such that ‘ZARA’ may be characterised as its essential feature. The Trade Mark is comprised of 7 letters that ends with the letters ‘SYL’ and is a trisyllabic word. In contrast, the 52 Mark is comprised of 4 letters and is a disyllabic word. These differences contribute to a total impression of dissimilarity emerging from a studied comparison of the trade marks.
[24] This specific issue is discussed at [34]–[36] of this decision.
31. Section 10 of the Act provides that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. The assessment of deceptive similarity was considered in Shell by Windeyer J who stated:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[25]
[25] Shell (n 20) [13].
32. The Opponent’s Submissions highlight that deceptive similarity may be established when one trade mark ‘takes a prominent and distinct feature’ of another trade mark.[26] The Opponent emphasised that the first syllable of a word is the most important for the purpose of distinction and ‘SYL’ is descriptive of the silica contained in the Applicant’s equine product. Due to imperfect recollection, the Opponent submits that the ‘similarity in general style of the words’ would cause consumers to wonder whether the Goods provided under the Trade Mark are an extension of the goods provided under the 52 Mark or come from the same source.
[26] Opponent’s Submissions, [89]–[91].
33. The Applicant’s Submissions contend that ‘ZARA’ is a proper noun whereas ‘ZARASYL’ presents as a medicinal brand and this creates an overall distinct impression when the trade marks are considered in their entirety. In the Applicant’s view, the Trade Mark ‘possesses a different rhythm and sound’ to the 52 Mark when spoken and ‘SYL’ is an oblique reference to the silica contained in the Applicant’s equine product.[27] The Applicant submits that the presence of the letters ‘SYL’ in the Trade Mark, when considered as a whole, creates sufficient aural, visual and conceptual differences between the trade marks.
[27] Applicant’s Submissions, [33].
34. A central point of contention between the parties is what weight should be attributed to the presence of ‘SYL’ in the Trade Mark. The Opponent asserts that ‘SYL’, together with its phonetic equivalent ‘SIL’, is common to and descriptive in the trade. In its view, ‘SYL’ has, by the Applicant’s admission,[28] a descriptive quality or it denotes silica or silicon.[29] As such, the presence of ‘SYL’ ought to be discounted in assessing whether the trade marks are deceptively similar. For its part, the Applicant acknowledged that ‘SYL’ indirectly reflects that its equine product contains silica. However, the Applicant asserted that this is not determinative and reiterated that it is ‘SYL’, and not ‘SIL’, which forms the tail of the Trade Mark.
[28] See [16] of this decision which discusses the Applicant’s conception of the Trade Mark.
[29] Opponent’s Submissions, [71].
35. In my view, the material relied on to support the proposition that ‘SYL’ should be discounted is not persuasive. The Opponent referred to ‘a plethora of marks on the Australian Trade Marks Register that have the suffix SYL or SIL in classes 3 and 5’ but actual particulars were not provided.[30] Likewise, reference was made to Re Bensyl Trade Mark (‘Bensyl’) wherein it was recognised that ‘quite a few’ marks ‘ending in -YL or -IL’ in classes 3 and 5 existed on the register.[31] This is of limited assistance due to three factors. First, Bensyl concerned a foreign trade marks register. Second, the suffix under consideration is ‘-SYL’ and not ‘-YL’ or ‘-IL’. Third, it was expressly observed in Bensyl that the ‘co-existence of marks on the register is not evidence that any of the marks are in use. … what matters is the overall effect of the two marks concerned, not their individual parts’.[32]
[30] My inspection of the Register of Trade Marks indicates the existence of only 16 earlier trade marks ending with ‘SYL’ which are either pending or registered and contain claims in class 3 and/or class 5.
[31] (1992) RPC 529, 532 (‘Bensyl’).
[32] Ibid.
36. At the hearing, Ms Ross noted that ‘SIL’ is a suffix ‘not unknown in the [pharmaceutical and healthcare] market’.[33] Again, this is not compelling given that the suffix under consideration is ‘SYL’ and not ‘SIL’. In addition, the same authority observed that ‘the suffix SIL does not convey anything in particular’.[34] Nonetheless, an important distinction to draw is that the Trade Mark contains ‘SYL’ as a suffix and not ‘SIL’. Based on the material provided, I am not satisfied that ‘SYL’ is a suffix commonly used in the trade or would be perceived by consumers as denoting the presence of silica or silicon. Moreover, ‘SYL’ is not an international non-proprietary name nor is it the chemical symbol for silicon or silicon dioxide.[35] ‘SYL’ may possibly allude to a characteristic of the Goods, however, it is not the name of the Goods nor does it directly describe a characteristic of same. Consequently, I am not satisfied that ‘SYL’ should be discounted on the basis of descriptiveness.
[33] Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd [2020] FCA 39, [51] (Stewart J).
[34] Ibid.
[35] The chemical symbols for silicon and silicon dioxide are ‘Si’ and ‘SiO2’ respectively.
Accordingly, for the reasons that follow, the Trade Mark is not deceptively similar to the 52 Mark. The Opponent rightly points out that the first part of a trade mark is important for comparative purposes.[36] It is apparent that the trade marks share some visual similarity given ‘ZARA’ forms the first four letters of the Trade Mark and is the entirety of the 52 Mark. However, this does not automatically result in a finding of deceptive similarity because the whole of each trade mark must be considered.[37] To this end, the similarity arising from the shared letters ‘ZARA’ is offset by the presence of ‘SYL’ in the Trade Mark. It almost doubles the length of the word and significantly alters the overall visual impact when compared to the 52 Mark.
[36] London Lubricants (1920) Limited's Application (1925) 42 RPC 264, 279 (Sargant LJ).
[37] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J); Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92] (Keane CJ, Stone and Jagot JJ).
38. Aurally, both parties agree that the 52 Mark would be pronounced as two short syllables, namely ‘ZA-RA’. I consider the natural pronunciation of the Trade Mark would include ‘SYL’, albeit slurred or mispronounced as, for example, ‘ZA-RA-SY’ or ‘ZA-RA-SEAL’. Equally, the Trade Mark’s construction may lend itself to being pronounced as ‘ZA-RAS-IL’. The variance in the number of syllables present in each trade mark distinguishes them further. There is merit in the Applicant’s Submissions that the Trade Mark contains ‘three equally emphasised syllables’ and that ‘SYL’ would elongate the Trade Mark when enunciated.[38] The sibilant nature of ‘SYL’ also differs markedly to ‘RA’ in the 52 Mark.
[38] Applicant’s Submissions, [33].
39. Conceptual differences between the trade marks also exist. The 52 Mark consists of a proper noun. ‘ZARA’ is a female given name and is likely to be remembered on this basis by ordinary consumers. In contrast, the Trade Mark is an invented word with no established meaning. Ordinary consumers are unlikely to be confused between the trade marks given they would perceive the Trade Mark as being an invented word rather than a familiar proper noun. It follows that the trade marks are conceptually distinct.
40. In assessing whether there is a likelihood of deception or confusion, it is appropriate to consider all the surrounding circumstances including the prospective purchaser.[39] The Goods in question are ‘veterinary products’ and ‘animal care products’. The Applicant’s Submissions draw attention to the fact that its equine product is regulated by the Australian Pesticides and Veterinary Medicines Authority and is ‘highly specialised’.[40] While this may be true, the Goods in the current matter have been widely drafted and it is the notional use of the Goods which must be considered.[41] Here, the Goods broadly encompass items ranging from veterinary diagnostic reagents through to animal shampoos and ointments. The degree of care exercised by the prospective purchaser will naturally vary depending on the item. However, it is reasonable to expect that a consumer will at least pay a rudimentary level of attention when purchasing any item that falls within the broad scope of the Goods given each item is related to the wellbeing and/or care of pets or livestock.
[39] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J).
[40] Applicant’s Submissions, [53]–[61].
[41] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).
41. For the above reasons, I am satisfied that there is no real and tangible danger of confusion between the Trade Mark and the 52 Mark. Sufficient visual, aural and conceptual differences exist between the trade marks such that, even allowing for imperfect recollection, the trade marks are readily distinguished when considered in their entirety. It follows that the 50, 58 and 96 Marks are also not deceptively similar to the Trade Mark.
42. The s 44 ground of opposition has not been established.
Section 58
43. Section 58 of the Act relevantly provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
44. A prerequisite to establishing this ground is that the trade mark relied upon by the Opponent must be at least substantially identical with the Trade Mark.[42] The Opponent’s Marks were identified as underpinning this ground of opposition.[43] For the reasons stated,[44] I do not consider any of the Opponent’s Marks to be substantially identical with the Trade Mark. Accordingly, this ground of opposition fails at the threshold.
[42] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[43] Opponent’s Submissions, [124].
[44] See discussion at [28]–[30] of this decision.
45. The s 58 ground of opposition has not been established.
Section 60
46. Section 60 of the Act relevantly provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
47. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent’s Submissions identified ‘ZARA’ and ‘ZARA HOME’ as the trade marks supporting this ground of opposition.[45]
[45] Opponent’s Submissions, [132].
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[46] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
reputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...[47]
[46] [2000] FCA 1335, [81] (‘McCormick’).
[47] [1992] FCA 159, [118] (‘ConAgra’).
50. Further, Kenny J stated in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[48]
[48] McCormick (n 46) [86].
51. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[49] Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[50]
[49] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[50] ConAgra (n 47) [77].
52. It is clear from the evidence that, at the Relevant Date, ‘ZARA’ had acquired a reputation in Australia amongst a significant number of consumers. Abadin 1 claims that ‘ZARA’ has been used overseas by the Opponent for more than 44 years prior to the Relevant Date, of which 8 years included a physical presence in Australia. The reputation enjoyed by ‘ZARA’ can be readily inferred from the immense revenue and advertising expenditure figures disclosed together with the extensive marketing activities detailed in the Opponent’s evidence.
53. Public awareness of ‘ZARA’ is apparent in the significant following garnered by the Opponent’s social media pages. The Instagram page for ZARA has ‘over 41 million followers’ and the Facebook page has received in excess of 28 million ‘likes’.[51] The reputation is further illustrated by the widespread media coverage of ‘ZARA’. This includes featuring in articles published in: newspapers such as the Herald Sun and the Sydney Morning Herald; online blogs; industry and lifestyle magazines such as Ragtrader, Woman’s Day, Marie Claire and Vogue; and various websites such as News.com.au and Yahoo7 Lifestyle.[52] The existence of this reputation is consolidated by ‘ZARA’ being consistently featured in various global ranking lists as a valuable, prominent and upwards trending brand.[53] Notably, the 2019 ‘Brand Finance Apparel 50’ report ranked ‘ZARA’ as the world’s second most valuable apparel brand.
[51] Abadin 1, [40].
[52] Ibid Exhibit 3.
[53] Ibid Exhibits 4, 5, 6.
54. The Applicant’s Submissions do not dispute that ‘ZARA’ had acquired a reputation in Australia at the Relevant Date. Indeed, the Applicant openly acknowledged that ‘the Opponent enjoys a reputation as a major global retailer of fashion, providing clothing and fashion accessories for human use, homewares and household products’.[54] However, the Applicant submits that the Opponent’s evidence fails to demonstrate that ‘ZARA’ has ‘any reputation in the equine, veterinarian or animal care industries in Australia’.[55] The Opponent contests this and postulates that its ‘reputation extends to, inter alia, fashion, cosmetic, lotions, creams, homewares and other goods and services’.[56]
[54] Applicant’s Submissions, [85].
[55] Ibid [94].
[56] Opponent’s Submissions, [162] (emphasis in original).
55. In my view, there is considerable force in the Applicant’s submission. The evidence reveals that the reputation enjoyed by ‘ZARA’ and ‘ZARA HOME’ is confined to apparel and homewares. The majority of evidence filed demonstrates use of ‘ZARA’ and/or ‘ZARA HOME’ exclusively in relation to these goods. The true nature of the reputation is evident in the excerpts accompanying the brand ranking lists and the TRAB decisions filed as part of the EIS. For example, the 2015 Interbrand excerpt describes the growth of ‘ZARA’ as ‘indicative of an increasing demand for fast fashion’,[57] the 2019 ‘Brand Finance Apparel 50’ report excerpt lists ‘ZARA’ as the ‘Spanish fast-fashion retailer’[58] and one TRAB decision states that ‘ZARA’ is capable of being ‘recognized as a well-known trademark on clothing products’.[59] The Opponent drew attention to invoices and shipping documents that demonstrate use of ‘ZARA’ and ‘ZARA HOME’ in relation to cosmetics such as perfumes, hand soaps and air fresheners. However, the relatively small quantities listed in these documents combined with the use for a short duration of time does not provide a cogent basis to extend the reputation of ‘ZARA’ or ‘ZARA HOME’ to such goods.
[57] Abadin 1, Exhibit 4, 283.
[58] Ibid Exhibit 6, 501.
[59] Ibid Exhibit 3, 191.
56. Accordingly, I am satisfied that ‘ZARA’ and ‘ZARA HOME’ had acquired a reputation in relation to apparel and homewares in Australia before the Relevant Date. Pursuant to s 60(b) of the Act, consideration must now be given to whether, because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
Likely to deceive or cause confusion
57. The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[60]
[60] [1979] RPC 410, 423 (citation omitted).
58. It has been recognised that ‘the test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient that consumers might wonder whether the respective goods might be connected in the course of trade’.[61] To this end, it has been observed that ‘the threshold for confusion is not high’[62] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[63]
[61] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [84(e)] (O’Bryan J).
[62] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[63] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).
59. Section 60 of the Act does not require the goods upon which ‘ZARA’ or ‘ZARA HOME’ are used to be similar to the Goods within the meaning of the Act.[64] Equally, there is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act. Nevertheless, it has been observed that:
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[65]
[64] Act s 14 which provides that goods are similar to other goods if they are the same as the other goods or if they are of the same description as that of the other goods.
[65] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39] (emphasis in original).
60. I have already found that the Trade Mark is not substantially identical with, or deceptively similar to, either ‘ZARA’ or ‘ZARA HOME’.[66] By itself, this finding is not determinative of the Opponent’s prospects of establishing the ground under s 60. However, I am not satisfied that the nature and extent of the reputation enjoyed by ‘ZARA’ and ‘ZARA HOME’ is such that it eclipses the notable differences between the respective trade marks and the goods to which they will be applied.
[66] See discussion at [28]–[41] of this decision.
61. The Opponent highlighted a specific circumstance which it believes accentuates the likelihood for confusion, namely that consumers are cognisant of the fashion sector engaging in brand extension and collaborations with other companies. Evidence of the Opponent’s ‘ZARA’ pet collection and animals being featured in their advertising, as well as other fashion retailers producing clothing for animals, was provided to substantiate the existence of a connection between the fashion sector and animals.[67] The evidence filed does not support the Opponent’s proposition for the following reasons. First, the evidence of other retailers producing animal clothing is limited insofar as it relates mainly to clothing for dogs and consists of one article together with a screenshot from an overseas website. Second, the collocation of animals with clothing for humans is likely to be perceived by consumers as a novel marketing campaign rather than brand extension to animal products. Third, the ‘ZARA’ pet collection was launched in 2021 which postdates the Relevant Date. It is also confined to animal clothing, brushes, leashes and pet beds which are clearly dissimilar to the Goods. As the Applicant pointed out, examples of fashion retailers producing clothing for pets or using pets in their advertising ‘is not sufficient evidence of a convergence between the markets for clothing and fashion accessories on the one hand, and veterinary products and products for the care of animals on the other’.[68] I agree and do not consider the Opponent’s evidence elevates the likelihood for confusion in any meaningful way.
[67] See Abadin 1, Exhibits 15, 16, 17; Abadin 2, Exhibits 13, 14, 15.
[68] Applicant’s Submissions, [73].
62. In my opinion, the reputation enjoyed by ‘ZARA’ and ‘ZARA HOME’ firmly resides in human apparel and homewares, which plainly differ to items that fall within the ambit of the Goods. Whilst it is true that there is no threshold level of similarity required to exist between the relevant goods, the fact that goods to which the ‘ZARA’ and ZARA HOME’ reputation attaches are unrelated to the Goods further diminishes the risk for confusion.
63. Accordingly, I am not satisfied that there is a real and tangible danger that use of the Trade Mark would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers.
64. The s 60 ground of opposition has not been established.
Section 42
65. Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
66. To succeed under this ground, the Opponent must establish that use of the Trade Mark would be, rather than might be, contrary to law.[69] The SGP identifies ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as underpinning this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
[69] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
For the reasons provided at [46] to [63] of this decision, the Opponent has failed to establish the s 60 ground of opposition. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL imposes a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[70] Consequently, I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same finding with regard to the contention that use of the Trade Mark would be contrary to s 29 of the ACL.[71]
[70] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
[71] Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22, [58].
68. The observations of Hill J addressing the relationship between s 52 of the now repealed Trade Practices Act 1974 (Cth)[72] and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are also relevant:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[73]
[72] See Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] wherein Rangiah J observed that ‘s 18 of the ACL replaced s 52 of the TPA and the provisions are in identical terms’.
[73] [1989] FCA 506, [40].
69. As such, I am not satisfied that use of the Trade Mark would amount to passing off at common law because I do not consider s 18 of the ACL would be contravened.
70. The s 42(b) ground of opposition has not been established.
Section 62
71. Section 62(b) of the Act relevantly provides:
Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
…
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
72. To succeed under this ground, the Opponent is required to demonstrate the existence of evidence and/or representations that were false in material particulars. It must then show that the application for registration was accepted on the basis of the false evidence and/or representations. Crucially, there must be a ‘a causal connection between the suggested false statement and the acceptance of the application’.[74]
[74] Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639, [20] (Bennett J). See also Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369, [857] (Anderson J).
73. The Opponent alleged that the Applicant’s entitlement to rely on the priority date of the Convention Application was a representation that was false in material particulars. There are two bases to this allegation. First, at the time the claim for priority was made, there was a disconformity between the identity of the Applicant and the applicant of the Convention Application. The latter was in the name of Adrienne Magnier and not the Applicant,[75] which contravened s 29 of the Act.[76] Second, the claim for priority is impermissible because it has been applied in relation to a wider specification of goods than what was particularised in the Convention Application, being ‘biochemical preparations for veterinary use’ in class 5. The Applicant rejected the Opponent’s allegation and, in any event, claimed the Opponent has failed to establish a causative relationship between the allegedly false representation and the acceptance of the Trade Mark.
[75] As at the date of the hearing, the Convention Application was in the name of Adrienne Magnier.
[76] Broadly, s 29 of the Act provides that if a person has made an application for the registration of a trade mark in a Convention country, that person or another person (successor in title) of whom that person is a predecessor in title when filing the application with the Registrar may claim a right of priority for the registration of the trade mark in respect of any or all of those goods and/or services in accordance with the Trade Mark Regulations 1995 (Cth).
74. At the outset, I note that the claimed priority date of an application has been recognised as constituting a material particular.[77] On its face there is considerable merit in the criticisms levelled at the validity of the Applicant’s claim for priority. Be that as it may, the Opponent has failed to establish a causal connection between the allegedly false representation and the acceptance of the application for registration. The Opponent’s Further Submissions posit that:
The causal connection required by s 62(b) is that the Registrar has accepted for registration the [Trade] Mark in the name of the Applicant, for the class 3 and 5 goods claim with a priority date of 13 August 2019 based on the Canadian Application based on the false representation of the availability of the convention claim in the circumstances. Unless this opposition is successful, the [Trade] Mark will proceed to registration with those particulars recorded on the Register. The priority claim will exist for the life of the [Trade] Mark in circumstances where it should not be permitted …[78]
[77] Medvisit Pty Ltd v MedVisit LLC [2017] ATMO 140, [74].
[78] Opponent’s Further Submissions, [15].
75. While the consequences may be problematic, there is nothing before me to demonstrate that the examination outcome of the application would have differed if the claim for priority had not been made. For example, the Opponent has not identified the existence of any trade mark that would have prevented acceptance of the Trade Mark if the priority date had been the filing date of the application. My inspection of the examination file indicates that the claimed priority date did not materially alter any decision made by the examiner that led to the acceptance of the application. In the absence of countervailing evidence, I am satisfied that the application would have been accepted for registration irrespective of the claim for priority made by the Applicant.
76. The s 62(b) ground of opposition has not been established.
Decision
77. Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
78. The Opponent has not established a ground of opposition. It follows that trade mark application number 2036181 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
79. The Applicant has sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
11 July 2022
Annexure A
| Number | Trade Mark | Classes | Priority Date | Owner |
| 626852 | Class 3: bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices Class 25: clothing, footwear, headgear Class 39: merchandise transportation, packing and storing | 7 April 1994 | Industria De Diseno Textil, S.A. (INDITEX, S.A.) | |
| 801650 | Class 25: clothing, footwear, headgear Class 35: retail and wholesale services provided by a department store; business management and business administration services; advertising services including those for distributing and advertising commercial pamphlets and prospectuses and the distribution of product samples | 27 July 1999 | Industria De Diseno Textil, S.A. (INDITEX, S.A.) | |
| 1029958 | Class 3: bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; oils for toilet purposes, eaux de toilette, laundry starch (dressing), indigo for laundry blueing, cotton sticks for cosmetic purposes, shoe creams and polishes, wax and pitch for shoes, waxes, shampoos, hair colorants and dyes; boot creams, bleaching preparations for cosmetic purposes, deodorants for personal use (perfumery), flower extracts (perfumery); paper guides for applying eye make-up, incense, aromatic wood, hair sprays and nail polish, pencils for cosmetic purposes and eyeliner pencils, lip liner pencils; after-shave lotions; lotions for cosmetic purposes; beauty masks; ornamental patterns for cosmetic purposes, cosmetic kits, false eyelashes and nails, pumice stone, aromatic potpourris, pomades for cosmetic purposes, cosmetic preparations for slimming purposes, cosmetic preparations for baths, cosmetic preparations for skin care and tanning, hair waving preparations, washing products, make-up products, toiletries; depilatory products, sanitary products (toiletries), non-medicated products for facial treatment, non-medicated products for hair care and treatment, make-up removing products, shaving products, non-medicated oral care products, nail-care products, sachets for perfuming linen, nail-polish removing products, chemical products for brightening colors for household use (washing of linen), stain removers, non-medical bath salts, small tissues impregnated with cosmetic lotions Class 4: industrial oils and greases; lubricants, dust-absorbing, wetting and binding products; fuels (including motor spirit) and illuminants; candles and wicks for lighting; grease for boots, grease for leather; candles; moistening oil Class 5: sanitary products for medical purposes, food for babies, plasters, materials for dressings; disinfectants; products for destroying vermin; fungicides, herbicides, mineral waters for medical purposes; cotton for medical purposes; sanitary panties; compresses, deodorants not for personal use; first-aid boxes; solutions for contact lenses; incontinence napkins and sanitary napkins (panty liners); chemical preparations for the diagnosis of pregnancy; products for protection from the sun (sunburn ointments); mouthwashes for medical purposes; aromatic salts; bath salts for medical purposes; salts for mineral water baths, menstruation panties; menstruation tampons; surgical cloths Class 6: common metals and their alloys, building materials of metal, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery and small items of metal hardware, pipes of metal, safes, goods of common metal not included in other classes; rings for keys; ores; cellars of metal, tool cases (empty), poles of metal, boxes and pots of metal for preserves, padlocks, bells, chests of metal, pot hooks of metal, step ladders, hooks, buckles of common metal, money boxes of metal, insignia of metal, tin cans (empty), ice molds of metal, works of art of common metal, identity plates of metal, hardware, wire cloth, wire gauze, door bells, door knobs (handles of metal) Class 8: hand-operated tools and instruments, cutlery (knives, forks and spoons), side arms, other than firearms, razors; non-electric can openers, non-electric manual hair-curling apparatus, electric and non-electric depilatory apparatus, nutcrackers not of precious metal, electric and non-electric nail clippers, manicure cases, razor cases and covers, blades for razors, shoe trees (shoemakers' tools); nail files, electric and non-electric razors for cutting hair, razors for cutting beards, shaving sets, depilatory tweezers, nail nippers, rasps, scissors Class 9: scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, distributing, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmitting and reproducing sound or images, magnetic recording media, sound recording disks, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers; fire extinguishers; electronic agendas, electric make-up removing apparatus, apparatus for games designed solely to be used with television sets; telephone apparatus; scales (apparatus for weighing); directional compasses; pince-nez chains; accounting machines, kaleidoscopes, footwear for protection against accidents, protective helmets, spyglasses, chronographs (time recording apparatus); bullet-proof vests, swimming and life jackets, pince-nez cords, spectacle lenses, spoons for metering, pedometers; compact disks (audio and video); optical compact disks, mirrors (optics); cases for spectacles, for pince-nez and for contact lenses; floats for swimming, spectacles (optics), sunglasses, anti-dazzle eyewear, binoculars (optics), diving gloves, gloves for protection against accidents, computer printers; temperature indicators; instruments containing eyepieces; cassette players; barcode scanners; pince-nez; contact lenses; lenses (optics); signal lanterns, magic lanterns and optical lanterns, magnifying glasses (optics), dictating and invoicing machines, mechanisms for counter-operated apparatus, dressmaker's measures, spectacle and pince-nez frames, weights, electric and galvanic batteries, electric irons (for ironing), computer programs (recorded programs), recorded computer operating programs; computer mice; magnetic cards, thermometers for non-medical use, electronic pocket translators, diving clothes,, clothing for protection against accidents and irradiation, special protective suits for aviators, apparel for wear and clothing for protection against fire; transistors (electronic); egg timers Class 11: apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; pillows and blankets heated electrically for non-medical use, grilling apparatus, drying apparatus, bathtubs, bidets, bulbs, electronic coffee makers with filters, electric heaters for feeding bottles, kitchen ranges, showers, friction lighters for igniting gas, lanterns, sinks, lamp globes, faucets, lamps, wash-hand basins, lanterns, lamp shades, driers (hair driers), electric driers for laundry, toilet bowls; lighters, electric blankets not for medical purposes Class 12: vehicles, apparatus for locomotion by land, air or water; children's safety seats for land vehicles; bicycles, golf carts, shopping carts, cleaning carts, safety belts for vehicle seats, baby carriages, small curtains (against the sun) for motor vehicles, saddle covers for bicycles and motorcycles, seat covers for vehicles, covers for vehicles, tricycles, sleighs Class 14: precious metals and their alloys and goods made of or coated with these materials not included in other classes, jewelry, precious stones, timepieces and chronometric instruments, shoe and hat ornaments of precious metal, ornamental pins, tie pins, pin cases of precious metal, napkin rings of precious metal, ashtrays of precious metal for smokers, cases for needles of precious metal, cuff links, badges of precious metal, fancy key rings, medals, coins, works of art of precious metal, silverware (with the exception of cutlery, table forks and spoons) Class 16: paper, cardboard and goods made thereof, not included in other classes, printed matter, printed publications, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paintbrushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic packaging materials (not included in other classes), printing type, printing blocks; albums, almanacs, hand-held apparatus for labeling, files for documents, writing articles and implements, cardboard or paper boxes, hat boxes of cardboard, decals, calendars, jackets for papers, posters, document holders for passports, catalogs, pictures, newspapers, drawing cases, cases for stencils, non-textile labels, sealing wax, books, lithographs, tablecloths of paper, writing cases, engraved works of art, babies' diapers of paper and cellulose (disposable), babies' diaper-pants of paper or cellulose (disposable), handkerchiefs of paper, pen cases, check-book holders, wrapping paper, toilet paper, paperweights, patterns for dressmaking and sewing, newspapers, mats for beer glasses, registers for marking pages, magazines (journals), bags (sleeves, sachets) for packaging (of paper or plastic), tissues of paper for removing makeup, table napkins of paper, face towels (paper towels), bookends, decal application cloth, bookbinding cloth, inking sheets for document reproducing machines, canvas for painting, inks, inkwells; tailors' chalk, hand towels of paper Class 18: leather and imitation leather, goods made of these materials not included in other classes, animal skins and hides, trunks and suitcases, umbrellas, parasols and walking sticks, whips and saddlery; frames for bags, frames for umbrellas, leather bags for transporting children, wheeled shopping bags, satchels, traveling bags, bags, pots and boxes of leather or leather board, leather boxes for hats, boxes of vulcanized fiber, wallets, briefcases (leather goods), small toiletry chests, collars for animals, leather laces, dog leashes, travel and key cases (leather goods), saddlery articles, leather linings for footwear, umbrella covers, saddle covers for horseback riding, haversacks, carrying cases, backpacks, purses not of precious metal, music cases, bags (envelopes, pouches) for packaging (of leather), bags for climbers and campers, school bags, garment bags (for travel) Class 20: furniture, mirrors, frames, goods not included in other classes of wood, cork, reed, cane, horn, bone, ivory, whalebone, shell, amber, mother of pearl, meerschaum, substitutes for all these materials or of plastics; fans for personal use, pillows, curtain rings, large safes (not of metal), cupboards, benches (furniture), table tops, screens, bedsprings, boxes of wood or plastic, boxes for toys, beds, head rests, trolleys, racks for bottles, baskets not of metal, cushions, mattresses, chests of drawers, bamboo curtains, cradles, divans, shelves, mirrors, display stands, index cabinets, garment covers (storage and wardrobes); bed and furniture fittings, flower stands, jewelry cases not of precious metal, tailors' dummies, tables, works of art of wood, wax, plaster or plastic, umbrella stands, playpens for babies, coatstands for clothing and hats, coatstands, sleeping bags for camping, chairs, armchairs, sofas, stools for children, embroidery frames, high chairs for babies, easy chairs, frames for brushes, deck chairs Class 21: household or kitchen utensils (not made of precious metal or coated therewith); combs and sponges, brushes (except paintbrushes), brush-making materials, articles for cleaning purposes, steel wool, unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes, bottle openers, oil cruets, stirrers for cocktails, candle extinguishers, non-electric apparatus for removing make-up, sugar bowls, trays, baby baths (portable), floor mops, crystal balls, tea infusers, candy boxes, bottles, shaving brushes, pots, coffee makers, boxes, non-electric heaters for feeding bottles, shoe horns, candelabra, pipettes for wine tasters, fly catchers, centerpieces for tables, brushes for shoes, sieves, buckets for preserving ice, tie presses, door handles (knobs) (of porcelain), comb cases, ironing board covers, gardening gloves, gloves for household use, gloves for polishing, shoe trees (lasts), piggy banks not of metal, soap dishes, pots, birdcages, butter dishes, toiletry sets, works of art of porcelain, terra cotta or crystal, toothpick holders, rug beaters, bread baskets, dusting cloths and rags, pepper pots, clothes-pegs, clothes racks, plates, feather-dusters, powder compacts, shaving brush stands, sponge holders, toilet paper holders, trouser presses, perfume sprayers and vaporizers, graters, crumb trays, bottle coasters, place mats, boot jacks, salt shakers, clothes-drying racks, tea or coffee services, table napkin stands, washing boards, ironing boards, bread boards, cutting boards, cups, stretchers for shirts, shoe stretchers, stretchers for trousers, teapots, flower pots, toiletry utensils, tableware, drinking glasses, vinegar cruets, clothes-drying racks, baskets for domestic use not of precious metal Class 22: ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials; eiderdowns (down coverlets), envelopes of straw for bottles, tarpaulins Class 24: textiles and textile goods not included in other classes, bed and table linen; oilcloths; curtain tie-backs of textile, flags, pennants (not of paper), table runners, bed covers, curtains of textile or plastic, bed spreads and coverlets, eiderdowns (down-filled covers), labels of cloth, linings (cloths), mattress covers, protective furniture covers, covers for cushions and pillow cases, washing mitts, bed and travel blankets, tablecloths, mosquito nets, cloths for cleaning glasses, handkerchiefs of textile, louvred shutters of textile, bath linen (except clothing), household linen, sheets, sleeping bags, doilies, towels, billiard cloth, tapestries of textile, traced cloths for embroidery; fabric, fabric for furniture, face towels of textile, small face towels of textile, small towels for removing make-up made of textile, transparent curtains Class 25: ready-made clothing for women, men and children, footwear (excluding orthopedic footwear), headgear, dressing gowns, bibs not of paper, headbands (clothing), boas (worn around the neck), mufflers, socks, layettes, hoods (clothing), shawls, belts (clothing), wet suits for water skiing, neckties, corsets (girdles), sashes for wear, pelerines (clothing), stoles (furs), scarves, bathing caps and sandals, knitted caps, gloves (clothing), body linen, jerseys, mantillas, stockings, mittens, ear muffs (clothing); bowties; diapers; babies' diaper pants; neck scarves; pareos; furs (clothing); pajamas; soles; underwear; heels; suspenders; bathing suits; clothing for gymnastics and sports; veils (clothing); paper clothing; clothing for motorists and cyclists Class 26: lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, small glass articles (trimmings for clothing); pin cushions; ornaments for footwear and hats (not of precious metal), needles, pins, hair ornaments, haberdashery (except threads and yarns); hair bands, buttons, armbands, reins for guiding children, brooches (clothing accessories), sewing boxes, belt clasps, laces for shoes, wreathes made of artificial flowers, tea cosies, ornamental badges, sewing thimbles, tiaras (hair decorations), needle cases (not of precious metal); buckles (clothing accessories), buckles (brooches for footwear), shoulder pads for clothing, hair pins, badges not of precious metal, spangles, numbers or letters for marking linen, bodkins, slides (hair clips), lace trimmings, feathers (clothing accessories), pompons, zippers (haberdashery) Class 27: carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, non-textile wall hangings; small bath mats, paper for wallpapering, wallpaper, products for covering floors, reinforcements to be placed under carpets, floor coverings Class 28: games, toys, gymnastic and sporting articles not included in other classes, Christmas tree decorations, apparatus for physical exercises, fishing tackle, Christmas trees of synthetic material, bladders of balls for games, fishing rods, dolls' houses, climbing belts, pieces for the elbows and knees (sports goods), kites, cups for dice, gloves (accessories for games), golfing, boxing, fencing and baseball gloves, amusement machines neither operated with coins nor designed for use only with a television receiver, puppets, carnival and theater masks, tables for table tennis, party novelties, rackets and bats, rattles, dolls' clothes; automatic amusement machines Class 34: lighters for smokers Class 35: advertising, business management, business administration, office functions, shop-window dressing, demonstration of goods, publishing of advertising texts, organization of trade fairs for commercial or advertising purposes, organization of exhibitions for commercial or advertising purposes, sales promotion (for third parties); assistance in franchised commercial business management; assistance with regard to commercial activities of an enterprise consisting in the management of orders via global communication networks; assistance with regard to commercial activities by means of credit card issuance and administration, modeling for advertising or sales promotion, promotion and management of shopping centers, retail outlet services or sale via global communication networks, public auction sales | 17 March 2003 | Industria De Diseno Textil, S.A. (Inditex, S.A.) | |
| 1984796 | Class 3: non-medicinal toiletry preparations and cosmetic products; non-medicinal dentifrices; essential oils for manufacture of perfumed products; laundry bleach products; laundry preparations; degreasing substances; polishing preparations; cleaning products; non-medicinal soaps; cosmetics; non-medicinal hair lotions; shoe creams and polishes; tailors' wax; shoemakers' wax; waxes for leather; depilatory wax; laundry wax; parquet floor wax; shampoos; cosmetic kits; depilatory products; make-up removing preparations; deodorants for human beings or animals [perfumery products]; lipsticks; pencils for cosmetic use; hair sprays; nail varnish; lacquer-removing products; tissues impregnated with cosmetic lotions; cloths impregnated with a detergent for cleaning; after-shave lotions; lotions for cosmetic use; make-up products; pomades for cosmetic use; stain removers; sachets for perfuming linen; nail care products; bleaches for cosmetic use; extracts of flowers [perfumery products]; incense; scented wood; decorative patterns for cosmetic use; adhesives for false eyelashes, hair and nails; pumice stone; potpourris [fragrances]; cosmetic preparations for slimming; bath preparations for cosmetic use; hair waving preparations; detergents for launderettes; toiletries; oral hygiene products other than for medical use; bath salts other than for medical use; oils for toiletry purposes; sunscreen products; eau de Cologne; deodorant soaps; talcum powder, for toilet use; adhesives for cosmetic use; greases for cosmetic use; abrasives; shaving products; color-brightening chemicals for household use (laundry); cotton sticks for cosmetic use; beauty masks; mustache wax; bleaching products for household use; hair colorants; eyebrow cosmetics; cleaning chalk; shampoos for pets [non-medicinal sanitary preparations]; cosmetics for animals; cosmetic creams; bars of soap; antiperspirant deodorants; detergents; laundry starch; cleansing milk for toilet purposes; Javelle water; dry-cleaning products; scented water; perfumes; cosmetic preparations for eyelashes; cosmetic products for skin care; make-up powder; adhesives for affixing false hair; fabric softeners for laundry use; cosmetic dyes; color-removing products; eau de toilette Class 9: Photographic apparatus and instruments; cinematographic apparatus and machines; optical apparatus and instruments; weighing apparatus and instruments; nautical apparatus and instruments; surveying apparatus and instruments; measuring apparatus and instruments; apparatus and instruments for verification (supervision); signaling apparatus and instruments; life-saving apparatus and instruments; apparatus and instruments for controlling electric current; apparatus and instruments for accumulating electricity; apparatus and instruments for switching electricity; apparatus and instruments for regulating electricity; apparatus and instruments for conducting electricity; sound transmitting apparatus; image transmitting apparatus; apparatus for reproducing images; sound reproduction apparatus; apparatus for recording images; sound recording apparatus; magnetic recording media, sound recording disks; DVD; compact disks; digital recording media; mechanisms for coin-operated apparatus; cash registers; calculators; computers; data processing equipment; software; fire extinguishers; computer peripheral devices; anti-glare glasses; eyeglasses; optical lenses; chains for pince-nez; contact lenses; cords for pince-nez; spectacles (optics); spectacle glasses; spectacle cases; spectacle frames; sunglasses; eyeglass cases; containers for contact lenses; footwear for protection against accidents, irradiation and fire; bullet-proof vests; life jackets; clothing for protection against accidents, irradiation and fire; gloves for divers; gloves for protection against accidents; diving suits; encoded magnetic cards; protective suits for aviators; electronic agendas; telephone apparatus; weighbridges (weighing apparatus); directional compasses; accounting machines; protective helmets; telescopes; chronographs (time recording apparatus); measuring spoons; pedometers; optical compact disks; mirrors (optics); binoculars (optics); temperature indicators; computer game software; cassette players; bar code readers; signal lanterns; magnifying glasses (optics); dictating machines; mechanisms for counter-operated apparatus; weights; electric batteries; recorded computer programs; electronic pocket translators; transistors (electronics); thermometers not for medical use; intercommunication apparatus; video cassettes; animated cartoons; walkie-talkies; downloadable electronic publications; egg timers [sandglasses]; acoustic sound alarms; anti-theft alarms; fire alarms; mouse pads; loudspeakers; sound amplification apparatus; antennas; anti-glare visors; headsets (for music); answering machines; counterfeit coin detectors; teeth protectors; money counting and sorting machines; apparatus for measuring the thickness of skins; electronic tags for goods; goggles for sports; magnets; light-emitting electronic pointers; mobile telephones; enlarging apparatus (photography); apparatus and instruments for astronomy; thermionic valves for radio; coin-operated musical automata [juke boxes]; scales; life-saving rafts; magnetic tape recorders; head cleaning tapes; video tapes; magnetic tapes; demagnetizing apparatus for magnetic tapes; barometers; ticket dispensers; thermostats; cameras [photography]; video cameras; video game cartridges (software); magnetic encoders; revolution counters; transparencies; slide projectors; dynamometers; reflecting disks for wear for the prevention of traffic accidents; hemline markers; dosage dispensers; radiotelephony sets; scanners [data processing equipment]; flash-bulbs (photography); photocopiers; holograms; compact disc players; luminous signs; neon signs (advertising); video recorders; megaphones; computer memory devices; microphones; microprocessors; modems; diving snorkels; objectives (lenses) (optics); ozonizers; projection screens; electric switches; dog whistles; push buttons for bells; radios; audio and video-receivers; wrist rests for use with computers; balances (steelyards); television apparatus; record players; word processing equipment; video telephones (telephones with image); covers adapted for portable computers; digital book readers; smartphones; smart watches; magnetic wires; radiological apparatus for industrial use; personal stereos Class 14: Precious metals; alloys of precious metal; semi-precious stones; jewelry; precious stones; chronometric instruments; time-measuring instruments; ornamental pins; tie pins; works of art of precious metal; novelty key rings of precious metals; medals; coins; badges of precious metal; footwear ornaments of precious metal; hat ornaments of precious metal; cuff links; pendants for watch chains; watch chains; watch cases; threads of precious metal (jewelry); jewelry cases; jewelry articles; ornamental pins [jewelry]; decorative brooches [jewelry]; jewelry of yellow amber; amulets; rings (jewelry); jet ornaments; bracelets (jewelry); brooches (jewelry); chains (jewelry); boxes of precious metal; necklaces (jewelry); tie clips; watch glasses; chronographs (watches); alarm clocks; diamonds; charms (jewelry); costume jewelry; cases for timepieces; jewelry; medallions (jewelry); earrings; pearls (jewelry); watch straps; jewelry watches; rosaries; wristwatches Class 18: Leather and imitation leather; animal skins; trunks and suitcases; umbrellas and parasols; walking sticks; whips; harnesses; saddlery; collars for animals; clothing for animals; bags for climbers; bags for campers; beach bags; handbag frames; frames for umbrellas or parasols; mountaineering sticks; bags for sports; net bags for shopping; travel bags; bags [envelopes, pouches] of leather, for packaging; bags; bags; traveling sets (leatherware); key cases; attaché cases; coin purses, not of precious metal; leather backpacks for carrying infants; wheeled shopping bags; boxes of leather or leather board; boxes of vulcanized fiber; card cases [notecases]; wallets; school satchels; vanity cases; leather laces; umbrella covers; covers for horse-saddles; haversacks; backpacks; reins made of rope; leather thread; suitcase handles; walking stick handles; umbrella handles; whips; horse blankets; furniture coverings of leather; umbrella rings; blinders (harness); harness for animals; harness fittings; canes incorporating seats; shoulder belts [straps] of leather; empty tool bags of leather; muzzles; bridles [harness]; horse halters; leather board; bands of leather; traveling trunks; shopping bags; straps for soldiers' equipment; harness straps; straps (thongs) of leather; straps for skates; leather straps; leather butt hides; curried skins; covers and blankets for animals; stirrups; parts of rubber for stirrups; bits for animals [harness]; reins (harness); moleskin (imitation of leather); nosebags; casings, of leather, for springs; knee-pads for horses; horse-riding saddles; harness for animals; valves of leather Class 25: Clothing; headgear; footwear; bibs not of paper; headbands (clothing); bath robes; bathing suits; bath sandals; boas (necklets); scarves; hoods [clothing]; shawls; belts (clothing); money belts (clothing); wet suits for water-skiing; neckties; girdles [corsets]; fur stoles; foulards; caps [headwear]; caps; gloves (clothing); raincoats; girdles (underwear); body linen [garments]; mantillas; stockings; socks; neckerchiefs; furs [clothing]; pajamas; soles (for footwear); heels; veils [clothing]; suspenders; layettes (clothing); capes; sports jerseys; mittens; ear muffs (clothing); inner soles; wristbands (clothing); dress shields; beach wear; dressing gowns; pockets for clothing; sock suspenders; stocking suspenders; petticoats; tights; aprons (clothing); masquerade costumes; uniforms; visors (headwear); wooden shoes; caps; coats; esparto shoes or sandals; non-slip devices for footwear; bath slippers; caps (headwear); blouses; bodies [clothing]; berets; footmuffs, not electrically heated; lace boots; boots; boot uppers; studs for football boots; half-boots; fittings of metal for footwear; tips for footwear; heelpieces for footwear; shirts; shirt yokes; shirt fronts; T-shirts; short-sleeved tee-shirts; bodices [lingerie]; vests; jackets; fishing vests; stuff jackets; slips (underwear); ready-made clothing; detachable collars; clothing of leather; clothing of imitation leather; shower caps; slippers; skirts; trousers; ready-made linings (parts of clothing); top coats; trench coats (clothing); gymnastic shoes; jerseys (clothing); pullovers; sweaters; liveries; muffs (clothing); footwear uppers; pocket squares; parkas; pelerines; pelisses; spats; leggings (trousers); knitwear [clothing]; clothing for gymnastics; underwear; sandals; saris; underpants; hats; wimples (clothing); togas; trouser straps; suits; turbans; clothing; sports shoes; shoes; footwear for sports; motorists' clothing; slippers | 10 May 2018 | Industria de Diseño Textil, S.A (Inditex, S.A) |
and Edelman JJ).
Key Legal Topics
Areas of Law
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Intellectual Property
Legal Concepts
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Jurisdiction
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