INDITEX, S.A..

This decision concerns an application by INDITEX, S.A. (the "Holder") to extend protection for its trade mark, ZARA, to Australia. The dispute arose during the examination of the Holder's International Registration Designating Australia (IRDA). The Hearing Officer, Nicholas Smith, was tasked with determining whether the IRDA should be accepted or rejected.

The primary legal issue before the court was whether the trade mark ZARA had acquired distinctiveness in the Australian market for the Holder's services by the filing date. Specifically, the court had to determine if consumers regarded the trade mark ZARA alone as a badge of origin for the hospitality services offered by the Holder, rather than associating it with the geographical location of Zara.

The Hearing Officer found that the market for the Holder's services was broad, encompassing the adult population of Australia. However, the Holder failed to provide sufficient direct evidence demonstrating how the market had been educated about the use of the trade mark in relation to its services, or that consumers would identify ZARA as connoting the Holder's services rather than a geographical location. The Hearing Officer was not satisfied that the evidence established that the descriptive trade mark ZARA had achieved factual distinctiveness at the relevant date. Consequently, the application to extend protection was rejected under section 41 of the relevant Act.

In accordance with regulation 17A.24, the Hearing Officer rejected the IRDA in whole. The Hearing Officer also directed that if a notice of appeal is filed within one month of the decision, the disposition of the application would be in accordance with the Court's direction or order.