Industria De Diseno Textil, S.A. v. Registrar of Trade Marks & Anr.

Relevant Acts and provisions

Trade Marks Act, 1999

Section 11(1)Section 11(2)Section 11(5)Section 11(6)Section 11(7)Section 2(1)(zg)Section 91

Trade Marks Rules, 2017

Rule 43

Provisions considered: Sections 2(1)(zg), 11(1), 11(2), 11(5), 11(6), 11(7) and 91 of the Trade Marks Act, 1999; Rule 43 of the Trade Marks Rules, 2017.

Brief facts

The Appellant, which owns the globally recognised ZARA mark, opposed the registration of ZORA, applied for by Respondent No. 2, a Sadar Bazar trader known as Aggarwal Bag House, for plain, coated, laminated and waterproof fabrics in Class 24. Respondent No. 2 claimed to have used ZORA since 3 June 2016. ZARA has been used in India since 1986-87 through contract manufacturers and registered in Class 24 since 2003. The Registrar dismissed the opposition on 8 February 2024, concluding that the marks did not sound or look similar, citing the different prefixes 'ZA' and 'ZO', and stating that the businesses of a high-end retailer and a small wholesale fabric supplier could never overlap. The Appellant challenged this decision under Section 91 of the 1999 Act.

Issues before the Court

1. Whether ZARA is entitled to protection as a well-known trade mark under Section 11(2) without a prior formal declaration by a court or the Registrar.
2. Whether the marks ZARA and ZORA are deceptively similar when considered as a whole, rather than by dissecting their syllables.
3. Whether differences in goods and trade channels undermine an opposition once the earlier mark is recognised as well known under Section 11(2).
4. Whether Respondent No. 2's use of ZORA in 2016, six years after ZARA's Indian stores opened, was honest.

Court's findings

The Court noted that the Registrar's order did not address Section 11(2) or ZARA's well-known status despite thorough submissions, and dismissed the opposition based on perceived dissimilarity. Explanation (b) to Section 11 defines an earlier mark as one entitled to protection as a well-known mark; 'entitle' means to grant a legal right or qualify for protection, not to be formally declared. Interpreting it otherwise would render Section 11(5) and Rule 43 of the 2017 Rules meaningless. The evidence supported ZARA's case: use in India since 1986-87, registration in Class 24 since 2003, over 6,400 stores in 95 markets, and the Court's 2015 ruling in Industria de Diseno v. Oriental Cuisines recognising ZARA's transborder reputation by 2003. On similarity the Court reviewed past cases involving vowel changes, such as Essco Sanitations (ESSCO/OSSO), Ajanta Pharma (OLPET/OLOPAT) and Sulphur Mills (FORTIS/FERTIS), observing that changing one vowel within an otherwise identical consonant structure rarely avoids deceptive similarity. Respondent No. 2's explanation for the name ZORA changed between its counter-statement and written submissions, and its revenue increased from about Rs. 2.45 crore in 2016-17 to Rs. 31.34 crore by 2023 after adopting the mark, which the Court saw as supporting, though not formally determining, the allegation of bad faith.

Decision

The Delhi High Court allowed the appeal, reversed the Registrar's order of 8 February 2024, and cancelled the registration of ZORA (No. 4310686) in Class 24, directing the Registrar to correct the Register within two months.

Important paragraph references

The judgment records: 'The only difference in the two marks is the vowel O, which is an insignificant distinction.' (as quoted in the source compilation)

Cases cited

• Industria de Diseno Textil SA v. Oriental Cuisines Pvt. Ltd.

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Anti-Dissection Rule Bad Faith Deceptive Similarity Phonetic Similarity Section 11(2) Trademark Dilution Well-known Trademark