Industria De Diseno Textil S.A, v Thandi Silwinba

[2023] ATMO 49

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Industria De Diseno Textil, S.A. (Inditex S.A.) to registration of trade mark application number 2063551 (35) – ZAHARA DESIGNZ and device - in the name of Thandi Silwinba

Delegate:

Louise Tuohy

Representation:

Opponent: Shauna Ross of Counsel instructed by IP Solved (ANZ) Pty Ltd

Applicant: Andrew Petale of YIP Legal Pty Ltd

Decision:

2023 ATMO 49

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds considered under ss 42(b), 44 and 60 – no ground established – trade mark to proceed to registration

Background

1. This matter concerns an opposition by Industria De Diseno Textil, S.A. (Inditex S.A.) (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark application (‘Application’) in the name of Thandi Silwinba (‘Applicant’):

   Trade Mark Number:  2063551               

   Trade Mark:  (‘Trade Mark’)

   Filing Date:  19 January 2020

   Specification:  Class 35: Department store retailing; Online retail services; Presentation of goods on communication media, for retail purposes; Retail clothing shop services; Retail services; Retailing of goods (by any means) (‘Services’)

1. The Application was examined as required by s 31 of the Act and advertised as accepted for possible registration on 20 June 2020.

2. On 18 August 2020 the Opponent filed a Notice of Intention to Oppose, followed by its Statement of Grounds and Particulars (‘SGP’) on 11 September 2020. On 3 December 2020 the Applicant filed a Notice of Intention to Defend.

3. Thereafter the parties filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. Once time for filing evidence had ended both parties requested to be heard. Both parties elected a hearing by way of written submissions. The Opponent filed its written submissions on 3 April 2023 and the Applicant filed its written submissions on 12 April 2023.

Grounds of Opposition, Relevant Date and Onus

1. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 60, and 62A of the Act. In the Opponent’s written submissions, it only pressed the grounds under ss 44, 60 and 42(b). The Opponent did not pursue the grounds of opposition under ss 43, 58 and 62A, which I treat as abandoned and have not considered.

2. The date at which the rights of the parties are to be determined is the filing date 19 January 2020 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.

3. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

Evidence

Evidence in Support

• Declaration of Antonio Abril Abadin, General Counsel and Secretary of the Board of the Opponent, made on 2 March 2021, with Exhibits 1 to 21 (‘Abadin’).

Evidence in Answer

• Declaration of Thandi Silwimba, the Applicant, made on 8 June 2021, with Annexures TS-1 to TS-9.

Evidence in Reply

• Declaration of Oscar Garcia Maceiras, General Counsel and Secretary of the Board of the Opponent, made on 11 October 2021, with Exhibits 1 to 10.

The Opponent

1. The Opponent was established in 1963 in Spain to make women’s clothing. Today the Opponent is one of the world’s largest fashion retailers, operating under eight commercial formats, selling in 202 markets through its online platform and in person with more than 7190 stores in 96 markets in all 5 continents.  In Australia the Opponent operates 19 stores.

The Applicant

1. The Applicant is a retailer of African inspired clothing and apparel products. The Applicant has operated its business from popup stalls at various African themed events across Australia since April 2014 as well as from a permanent shop located at Wanneroo Markets in Perth as of March 2016.  

Discussion

Section 44

1. Section 44 of the Act provides:

   44  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.

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   (3)  If the Registrar in either case is satisfied:

   (a)  that there has been honest concurrent use of the 2 trade marks; or

   (b)  that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)  beginning before the priority date for the registration of the other trade mark in respect of:

   (i)  the similar goods or closely related services; or

   (ii)  the similar services or closely related goods; and

   (b)  ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the           other trade mark.

2. In the SGP the Opponent particularises the s 44 ground of opposition as follows:

   1. The priority date of the Other Trade Mark is earlier than the Opposed Trade Mark Priority Date.

   2. The Opposed Trade Mark is substantially identical with or deceptively similar to the Other Trade Mark.

   3. The Opposed Trade Mark Services covered by the Opposed Trade Mark are similar to the services covered by the Other Trade Mark in Class 35.

   4. The Applicant has not used the Opposed Trade Mark honestly and concurrently with the Other Trade Mark.

   5. The Applicant did not use the Opposed Trade Mark before the priority date of the Other Trade Mark.

1. To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar services or goods which are closely related to the Applicant’s Services.

2. In the event that each of these requirements is satisfied it may still be possible for me to accept the application (or allow it to proceed to registration) if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make acceptance of the Application for registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon trade mark.

3. The Opponent relies on the following trade mark for the purposes of s 44:

Trade Mark Number	Opponent’s Trade Mark (Opponent’s trade mark)	Filing Date (Priority Date)	Specification
801650	27 July 1999	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

1. The Opponent’s trade mark is registered by a person other than the Applicant and has a priority date earlier than the Relevant Date.

2. The Opponent’s trade mark is registered for clothing, footwear and headgear in class 25 and retail and wholesale services provided by a department store in class 35. The registration of the Trade Mark is sought for a broad range of retail services in class 35, which are the same as the Opponent’s services in class 35 and closely related to the Opponent’s goods in class 25. As such, it only remains to determine whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s trade mark.

Substantially identical

1. The Opponent does not argue that its trade mark is substantially identical to the Trade Mark. However, I will briefly note that the teste for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[3] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

   [3] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

2. For the purposes of comparison, I have reproduced the respective trade marks below:

Trade Mark Opponent’s trade mark

1. On a side by side comparison there are clear differences between the respective trade marks. The Trade Mark contains the word ZAHARA and the word DESIGNZ separated by a device of a women wearing a headdress and stylised dress. In comparison the Opponent’s trade mark is for the word ZARA solus. For these reasons, I find that the Opponent’s trade mark is not substantially identical with the Trade Mark. The total impression emerging from a side by side comparison is not one of similarity.

2. I will now consider whether the Trade Mark is deceptively similar to the Opponent’s trade mark. 

Deceptively similar

1. The expression ‘deceptively similar’ is defined in s 10 of the Act:

   10  Definition of deceptively similar

   For the purposes of this Act, 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.

2. The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hy-line Chicks Pty Ltd, where Richardson J said:

   ‘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.[4]

   [4] (1979) 96 RPC 410, 423 (citations omitted).

3. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited:

   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].[5]

   [5] [1963] HCA 66, [13].

1. Therefore, I must estimate the impression that a person of ordinary intelligence and memory would have of the Trade Mark and the Opponent’s trade mark. I must consider the look, sound, and idea conveyed[6] and all the surrounding circumstances.[7] In the end, however, what is being compared is the effect or impression of the trade marks as a whole.[8]

   [6] Ibid.

   [7] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, [50] (French J).

   [8] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

2. The Opponent argues the aural and visual similarities between the trade marks are obvious largely due to the presence of the common element, ZA at the start of the trade marks and RA at the end of the trade marks. In comparing ZAHARA DESIGNZ and ZARA, the difference arises from additional H and A and the use of DESIGNZ in the Trade Mark. The letters that are not in common, H and A, give rise to some contrast in how the words appear and sound but the difference is likely to be lost as consumers would also have a tendency to slur the syllables together, which causes ZAHARA to sound the same as ZARA or perhaps with a slight distinction in the “ha” sound. The inclusion of DESIGNZ is descriptive, meaning additional emphasis should be placed on the ZARA component. The presence of the image of the African women in the Trade Mark is not an essential element because it is a visual representation of a person wearing clothing in circumstances where the Trade Mark claims the sale of clothing.

3. In reply the Applicant argues the similarity arising from the shared prefix ZA and suffix RA is offset by the presence of HA in ZAHARA. It almost doubles the length of the word and significantly alters the overall visual impact when compared to the ZARA trade mark. The natural pronunciation of ZAHARA would emphasise and elongate the second syllable of the word (ie. za-HA-ra). The variance in the number of syllables present in each trade mark distinguishes them further. The presence of the graphic device of the African lady, distinctive type font and stylisation and the word DESIGNZ in the Trade Mark further differentiates it when compared as a whole. The Applicant also argues that conceptually, ZARA is a female given name, in contrast, the word ZAHARA is an invented word which alludes to the word Sahara (being a reference to the Sahara Desert in Africa), which is reinforced by the African themed elements in the Trade Mark.

4. In this matter, the first word in the Trade Mark, ZAHARA, and the word ZARA being the only element in the Opponent’s trade mark share common prefixes and suffixes. However I agree with Applicant that there are clear visual and aural differences between the trade marks.

5. The word ZAHARA in the Trade Mark is made up of three syllables and includes the letters HA, in comparison the word ZARA has two syllables. These two words would be pronounced differently and have clear visual differences and I consider it unlikely they would be incorrectly identified.

6. Conceptually, while I consider that the words ZAHARA and ZARA would be viewed by consumers as being a given name, possibly having multiple origins, the addition of the device element in the Trade Mark gives it a distinct African theme.

7. Further, I do not agree with the Opponent that the inclusion of the word DESIGNZ in the Trade Mark is descriptive, meaning additional emphasis should be placed on the ZARA component, or that the device is not an essential element. The Trade Mark as a whole would be viewed as ZAHARA DESIGNZ separated by a device, and the test requires I estimate the impression of the whole of each trade mark, and does not permit me to simply disregard the word DESIGNZ and the device element. The Trade Mark and the Opponent’s trade mark in my view are more likely to be perceived and remembered by consumers in their entirety.

8. Considering all the above, I am not satisfied that there is a real and tangible of deception or confusion. I do not consider the overall impressions of the trade marks to be deceptively similar. There are sufficient visual, aural and conceptual differences such that the trade marks are distinguishable when considered in their entirety.

9. The Opponent has not established its ground of opposition under s 44 of the Act.

Section 60

1. Section 60 of the Act provides:

   60  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.

1. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

   1. In 1963, INDITEX, S.A. started to operate in Spain to make women’s clothing. Today, INDITEX, S.A. is one of the world’s largest fashion retailers selling (among other products) cosmetics, jewellery, clothing, footwear, fashion accessories, lifestyle products, household products, furniture, homewares, bedding, tableware, home decorations and related services and accessories in 202 markets through its online platform or its over 7,000 stores in 96 markets in all 5 continents.

   2. INDITEX, S.A. is the registered owner of the ZARA trade mark.

   3. In 1975, the ZARA Mark was first used in Spain by INDITEX, S.A. in connection with the sale of clothing services.

   4. The ZARA Mark was coined by INDITEX, S.A. as a unique and arbitrary way of communicating the source of its services.

   5. In Australia, INDITEX, S.A. is the registered owner of the ZARA trade mark and the registered owner of other ZARA-formative trade marks in various Classes including in Class 35. INDITEX, S.A.’s ZARA trade mark is hereinafter referred to as the “ZARA Mark”.

   6. In April 2011, the ZARA Mark was first used in Australia by INDITEX, S.A. in connection with the opening of its first of many dedicated bricks and mortar retail stores. Today, INDITEX, S.A. is currently present in Australia through a network of nineteen (19) ZARA Stores and through its websites and

   7. Since April 2011, INDITEX, S.A. has continuously used the ZARA Mark in Australia in connection with its goods and services which include, among others, jewellery, clothing, footwear, headgear, fashion accessories and retail services. INDITEX, S.A. has continuously used the ZARA Mark in Australia in connection with its retail services (collectively the “ZARA Services”). The ZARA Services are provided in Australia through INDITEX, S.A.’s retail stores and provided online through its website

   8. INDITEX, S.A.’s ZARA Mark is well known in Australia and internationally through use in connection with the ZARA Services. The ZARA Mark had already acquired a substantial reputation in respect of the ZARA Services in Australia before the Opposed Trade Mark Priority Date.

   9. Based on the renown and reputation acquired by INDITEX, S.A. in the ZARA Mark in respect of the ZARA Services in Australia, the use of the Opposed Trade Mark would be likely to deceive or cause confusion.

   10. Considering INDITEX, S.A.’s reputation in Australia and internationally in the ZARA Services and taking into account INDITEX, S.A.’s use of the ZARA Mark in Australia since as early as 2011, consumers are likely to be deceived or confused into believing that the Opposed Trade Mark Services are those of INDITEX, S.A., or somehow associated and/or affiliated with the Opponent or endorsed by or sponsored by INDITEX, S.A., when that is not the case.

1. To satisfy s 60 of the Act the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

2. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[9] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation 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…[10]

   [9] [2000] FCA 1335, [81].

   [10] [1992] FCA 159, [118].

3. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[11]

   [11] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

4. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:

   What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[12]

   [12] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

5. Turning to the Opponent’s evidence, in Abadin, Mr Abadin declares that the Opponent was established in 1963 in Spain to make women’s clothing. Today the Opponent is one of the world’s largest fashion retailers, operating under eight commercial formats, selling in 202 markets through its online platform and in person with more than 7190 stores in 96 markets in all 5 continents.

6. Mr Abadin declares that the Opponent is the registered owner in Australia of the ZARA trade mark and ZARA formative trade marks including ZARA HOME and ZARA BASIC. Exhibit 1 to Abadin is a schedule of the Opponent’s Australian and international trade marks registrations.[13]

   [13] I have reproduced the Opponent’s Australian trade mark registrations at Annexure 1 to this decision.

7. Mr Abadin declares that the Opponent’s ZARA trade mark was first used in Australia in April 2011 in connection with its goods and services which include, among others, clothing, footwear, headgear, fashion accessories and retail services. Mr Abadin declares that this first use coincided with the opening in Australia of the Opponent’s first dedicated bricks and mortar retail store. Exhibit 2 to Abadin comprises copies of articles from Australian newspapers, weblogs and online magazines covering the opening of the Opponent’s first Sydney store.  

8. Mr Abadin declares that the Opponent is currently present in Australia through its network of nineteen ZARA branded stores and through its websites and Exhibit 16 to Abadin comprises screenshots from the Internet Archive Wayback Machine showing pages from the Opponent’s website zara.com/au/ for the years 2018 to 2020. Exhibit 15 to Abadin comprises a copy of an article published in 2013 regarding the opening of the Opponent’s seventh store in Australia.

9. Confidential Exhibit 9 to Abadin comprises the Opponent’s Australian sales figures for the years 2011 to 2018.

10. Exhibit 8 to Abadin comprises copies of delivery notes from the Opponent which show the delivery of clothing items to its ZARA branded retail stores in Sydney and Melbourne for the years 2017 to 2019.

11. Confidential Exhibit 20 to Abadin comprises the Opponent’s Global advertising expenditure for its ZARA trade mark for the years 2014 to 2020 and its ZARA HOME trade mark for years 2014 to 2018.

12. Exhibit 19 to Abadin comprises copies of Australian newspaper and magazine articles and reviews published in print, online and via social media for the years 2010 to 2020. The articles and reviews promote the Opponent’s ZARA branded clothing, accessories and retail store business.

13. Exhibit 18 to Abadin comprises screenshots from the Opponent’s social media accounts including Facebook, Instagram, Twitter, You Tube and Pinterest, under the handles @ ZARA and @ ZARA HOME.

14. In my assessment of the evidence, the Opponent’s ZARA trade mark has been well advertised and promoted, not only via the Opponent’s websites and social media accounts, but also through Australian news media and magazines. The Opponent’s confidential sales figures show significantly high volumes of sales with reference to the ZARA trade mark in Australia. Based on the evidence, I find that since the opening of its first Australian retail store in 2011 the Opponent has enjoyed a substantial reputation in Australia in relation to clothing, footwear, headgear, fashion accessories and retail services at the Relevant Date sufficient for the requirements of s 60(a) of the Act.

15. It is not sufficient that the Opponent merely establishes that the ZARA trade mark has a reputation, the Registrar must also be satisfied that because of the use of the Trade Mark would be likely to deceive or cause confusion.[14]

    [14] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

16. In this matter even though I have found that the ZARA trade mark has a reputation in Australia, I do not find that by reason of that reputation, any use of the Trade Mark would be likely to deceive or cause confusion. The visual, aural and conceptual differences I identified at paragraphs [27] to [31] are no less relevant here and I am not satisfied that use of the Trade Mark would be likely to deceive or cause confusion.  

17. The Opponent has not established the ground of opposition under s 60 of the Act.

Section 42(b)

1. Section 42(b) of the Act provides:

   42 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.

1. In the SGP the Opponent particularises the s 42(b) ground of opposition as follows:

1. In 1963, INDITEX, S.A. started to operate in Spain to make women’s clothing. Today, INDITEX, S.A. is one of the world’s largest fashion retailers selling (among other products) cosmetics, jewellery, clothing, footwear, fashion accessories, lifestyle products, household products, furniture, homewares, bedding, tableware, home decorations and related services and accessories in 202 markets through its online platform or its over 7,000 stores in 96 markets in all 5 continents.

2. INDITEX, S.A. is the registered owner of the ZARA trade mark.

3. In 1975, the ZARA Mark was first used in Spain by INDITEX, S.A. in connection with the sale of clothing services.

4. The ZARA Mark was coined by INDITEX, S.A. as a unique and arbitrary way of communicating the source of its services.

5. In Australia, INDITEX, S.A. is the registered owner of the ZARA trade mark and the registered owner of other ZARA-formative trade marks in various Classes including in Class 35. INDITEX, S.A.’s ZARA trade mark is hereinafter referred to as the “ZARA Mark”.

6. In April 2011, the ZARA Mark was first used in Australia by INDITEX, S.A. in connection with the opening of its first of many dedicated bricks and mortar retail stores. Today, INDITEX, S.A. is currently present in Australia through a network of nineteen (19) ZARA Stores and through its websites and

7. Since April 2011, INDITEX, S.A. has continuously used the ZARA Mark in Australia in connection with its goods and services which include, among others, jewellery, clothing, footwear, headgear, fashion accessories and retail services. INDITEX, S.A. has continuously used the ZARA Mark in Australia in connection with its retail services (collectively the “ZARA Services”). The ZARA Services are provided in Australia through INDITEX, S.A.’s retail stores and provided online through its website

8. INDITEX, S.A.’s ZARA Mark is well known in Australia and internationally through use in connection with the ZARA Services. The ZARA Mark had already acquired a substantial reputation in respect of the ZARA Services in Australia before the Opposed Trade Mark Priority Date.

9. Based on the renown and reputation acquired by INDITEX, S.A. in the ZARA Mark in respect of the ZARA Services in Australia, the use of the Opposed Trade Mark would be likely to deceive or cause confusion.

10. The use of the Opposed Trade Mark is use, in trade or commerce, which is likely to mislead or deceive consumers in contravention of ss 18 and 29(1) of the Australian Consumer Law which is Schedule 2 to the Competition and Consumer Act 2010 (Cth). Consumers are likely to be misled or deceived into believing that the Opposed Trade Mark Services offered and provided under the Opposed Trade Mark are those of INDITEX, S.A. or somehow associated or affiliated with INDITEX, S.A. in breach of section 18 of the Australian Consumer Law 2010 (Cth).

11. Providing and offering to provide the Opposed Trade Mark Services also suggests that the Applicant and the Opposed Trade Mark Services are associated or affiliated with INDITEX, S.A. or that the Applicant has obtained INDITEX, S.A.'s sponsorship or approval to use the Opposed Trade Mark, when that is not the case. This conduct is in breach of section 29(1) of the Australian Consumer Law 2010 (Cth).

12. The use of the Opposed Trade Mark amounts to actionable passing off by the Applicant.

1. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on section 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be, contrary to law.[15]

   [15] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

2. Section 18 of the Australian Consumer Law[16] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60 of the Act.[17] In this matter, I have found that the Opponent has failed to establish a ground of opposition under s 60 of the Act. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.

   [16] Competition and Consumer Act 2010 (Cth), sch 2.

   [17] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.

3. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[18] nor will it constitutepassing off.[19]

   [18] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.

   [19] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

4. The Opponent has not established the ground of opposition under s 42(b) of the Act.

Decision

1. Section 55 of the Act provides:

   55  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.

2. The Opponent has not established a ground of opposition. Accordingly, I decide that trade mark number 2063551 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 of the Act in line with Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

21 April 20223

Annexure 1

The Opponent’s registered Australian trade marks:

Trade Mark Number	Trade Mark	Priority Date	Class(es)
626852	ZARA	7 April 1994	3, 25 39
651229	ZARA	23 January 1995	18
800786	ZARA	20 July 1999	9, 14, 16, 24, 28
800788	ZARA BASIC	20 July 1999	18, 25
801650	ZARA	27 July 1999	25, 35
802819	ZARA	5 August 1999	20, 35, 42
835123	ZARA	15 May 2000	26
843254	TEXTURES ZARA	20 July 2000	3, 21, 25
1029958	ZARA HOME	17 March 2003	3, 4, 5, 6, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 34, 35
1265356	ZARA HOME	3 July 2007	2, 15, 34
1392558	ZARA	20 July 2010	4, 8, 9, 11, 18, 21, 34, 35
1399752	ZARA FOR MUM	2 September 2010	3, 18, 25, 35
1454531	ZARA BASIC	21 June 2011	3, 18, 25
1744556	JOIN LIFE ZARA	10 September 2015	18, 25
1984796	ZARA SRPLS	10 May 2018	3, 9, 14, 18, 25