Dara Craiceann Ltd v Inditex S.A

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.