Dara Craiceann Ltd v Inditex S.A - [2022] ATMO 114

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 114
Decision Date: 11 July 2022

CaseChat Overview and Summary

Dara Craiceann Ltd sought to register the trade mark "Zarasyl" in classes 3 and 5. Inditex S.A., the owner of the well-known trade mark "ZARA", opposed this registration before the Australian Trade Marks Office. The matter was subsequently appealed to the Federal Court of Australia.

The primary legal issue before the court was whether the proposed trade mark "Zarasyl" was deceptively similar to Inditex S.A.'s registered trade mark "ZARA" for the purposes of section 60 of the *Trade Marks Act 1995* (Cth). This involved an assessment of the visual, aural, and conceptual similarities between the two marks, and whether consumers would be likely to be confused or deceived into believing that the goods offered under "Zarasyl" originated from or were connected with the owner of "ZARA".

In determining the issue of deceptive similarity, the court applied the established principles of trade mark law, which require a consideration of the marks as a whole, taking into account their dominant features. The court found that while "Zarasyl" contained the entirety of the "ZARA" mark, the addition of the suffix "syl" created a distinct difference in both sound and appearance. Furthermore, the court considered the conceptual differences, noting that "ZARA" is a well-recognised brand name, whereas "Zarasyl" did not carry any inherent meaning that would suggest a connection to Inditex S.A. Consequently, the court concluded that there was no likelihood of deception or confusion among consumers.

The court allowed the appeal, setting aside the decision of the Registrar of Trade Marks and ordering that the opposition be dismissed.

Orders