On 11 April 2019 the EU General Court delivered its judgment in the case of Industria de Diseño Textil, SA Inditex v European Union Intellectual Property Office (EUIPO) T‑655/17 concerning an opposition based on the risk of unfair advantage being taken of the distinctive character or repute of Inditex’s earlier marks or detriment being caused to the distinctive character or repute of the marks. The opponent owns the well-known fashion brand, ZARA.

The Court ruled that the Board of Appeal should have considered the strength of Inditex’s earlier marks’ reputation or their degree of distinctiveness to assess whether a later trade mark risked taking unfair advantage of or causing detriment to the distinctive character or repute of the earlier marks under Article 8(5) of Regulation No 207/2009, despite the differences between the goods and services covered by the parties’ respective marks.

Background

10 years prior to the judgment, Mr and Mrs Ansell filed an EU trade mark application for the figurative mark “ZARA TANZANIA ADVENTURES” for services in classes 39, 41 and 43. The specifications for those classes included services such as travel and tourism services, entertainment services for tourists and holidaymakers and travel agency services for booking accommodation.

Inditex filed a notice of opposition in respect of all the services applied for. Inditex’s opposition was based on the following earlier marks: an EU word mark ZARA, registered in classes 25, 39 and 42 since 2001, and an EU word mark ZARA in classes 35 and 41, registered in 2005.

In 2011 the Opposition Division partially upheld the opposition, but rejected that part of the opposition that had been brought on the basis of Article8(5) (earlier mark with a reputation).

The Board of Appeal decision

In 2017 the Board of Appeal dismissed Inditex’s appeal and said the mark applied for should be allowed to proceed to registration in respect of all the services in Classes 39 and 43.

The Board of Appeal found that Inditex had not put forward evidence of the risk of unfair advantage being taken of or detriment being caused to the distinctive character or the repute of their earlier trade marks in ‘ZARA’, and Inditex had only made general allegations in this respect. There were also significant differences between the goods and services concerned (including their nature, purpose, and the means by which they are marketed). Accordingly, the Board of Appeal found that Article8(5) did not apply.

EU General Court Judgment

The EU General Court annulled the decision of the Board of Appeal which had allowed the ZARA TANZANIA ADVENTURES mark to proceed to registration in respect of the services in Classes 39 and 43.

Interpretation of Article 8(5)

Article 8(5) of Regulation No 207/2009 enables the proprietor of an earlier national or EU trade mark to oppose the registration of marks if the following conditions are met:

  1. the marks at issue must be identical or similar;
  2. the earlier mark cited in opposition must have a reputation; and
  3. there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

An assessment of the existence of one of the types of injury referred to in Article 8(5) or a serious risk that it will occur in the future must include analysis of the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue, and the nature and degree of proximity of the goods or services concerned. The stronger the distinctive character and reputation of a trade mark, the easier it will be to show a risk of injury.

Risk of Injury

The EU General Court found that the Board of Appeal erred as it did not make an overall assessment of the risk of injury under Article 8(5) of Regulation, taking into account all factors relevant to the circumstances of the case.

There is currently a trend for trade mark owners in the fashion industry to expand into other markets and business sectors, and Inditex had shown this (rather than simply confining itself to “general allegations” as the Board of Appeal had found). There was also a growing trend among bloggers and social media influencers to post and comment about their travel experiences (including their holiday wardrobes), which further blurred the traditional boundaries between the travel and fashion sectors. Consequently, the ZARA TANZANIA ADVENTURES mark might bring Inditex’s earlier ZARA marks to the minds of the relevant public, irrespective of the differences between the goods and services covered by the parties’ marks. This was particularly likely because the goods and services covered by the marks at issue are intended for the general public (among others) as opposed to professional consumers.

The Board of Appeal should have taken into account the strength of the earlier marks’ reputation and distinctive character in its assessment as to whether there was a risk of unfair advantage being taken of or detriment being caused to the distinctive character or the repute of the earlier marks.

Impact

The EU General Court recognised the trend for fashion brands to move into other markets, such as fashion magazines often containing articles about travel. The strength of the reputation and distinctiveness of Inditex’s earlier mark meant that it was much easier to show a risk of damage, despite the differences between the goods and services of the respective marks.

This indicates that for well-known fashion brands, trade mark protection may well extend beyond the scope of the goods and services for which the trade mark is actually known. Nevertheless, persuasive evidence will still need to be adduced to show a presence of a ‘link’ in the minds of consumers, and the risk of injury.