A small boutique shop known as House of Zana has been successful in their attempt to defend themselves from an opposition by fashion brand Zara.
The North East business House of Zana were threatened with trademark infringement on the grounds that Zara was conceptually identical to that of House of Zana.
In order for any ground to establish a likelihood of confusion it is important for the trademark holder to establish the following factors:-
- The likelihood of confusion must be appreciated globally, taking account of all relevant factors;
- the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
- the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
- the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
- nevertheless, the overall impression conveyed to the public by a composite trade mark may be dominated by one or more of its components;
- however, it is also possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
- a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
- there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
- mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
- the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
- if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.
Zara’s claim was that the marks were highly similar and this was enough to successfully oppose the application.
This matter was considered by the UK Intellectual Property Office who looked through all the arguments submitted.
On issuing their decision to Amber Kotrri, who runs House of Zana, the UK Intellectual Property Office deemed the link between the marks as ‘too insubstantial’.
The opposition was therefore unsuccessful and House of Zana could continue to registration.
Yet another example of David and Goliath where the small company has succeeded.
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