CANCELLATION No C 24 808 (INVALIDITY) 

 

Industria de Diseño Textil, S.A. (Inditex, S.A.), Avenida de la Diputación "Edificio Inditex", 15142 Arteixo (A Coruña), Spain (applicant), represented by Clarke, Modet y Cía., S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

 

a g a i n s t

 

Roger Ansell and Zainab Ansell, P.O.Box 1990, Moshi, United Republic of Tanzania (EUTM proprietors), represented by Errol Ian Sandiford, Sandiford Tennant LLP, 2nd Floor, Albert House, 111-117 Victoria Street, Bristol BS1 6AX, United Kingdom (professional representative).

On 17/06/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is upheld.

 

2.	European Union trade mark No 8 238 123 is declared invalid in its entirety.

 

3.	The EUTM proprietors bear the costs, fixed at EUR 1 080.

 

REASONS

 

On 09/07/2018, the applicant filed a request for a declaration of invalidity against European Union trade mark No 8 238 123 ‘Zara Tours’ (word mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely against all the services in Classes 39 and 43. The application is based on European Union trade mark registration No 112 755 ‘ZARA’ (word mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed an application for invalidity and argues that considering the high level of reputation of the earlier mark, the high similarity between the marks, the link in the mind of the consumer and the detriment and unfair advantage of the reputation of the earlier mark, it is undeniable that the contested mark should be declared invalid. In particular, the applicant argues that the conflicting signs are highly similar and the difference between them consists of merely one word (‘TOURS’), which refers to the EUTM proprietors’ services and is thus descriptive. The applicant argues that it has build-up a family of marks, which share the following structure (ZARA + descriptive term in English) and considering that the challenged mark keeps the same structure, it would easily be associated with the applicant.

The applicant provides an explanation of the evidence it filed (Annexes 1 to 29, listed below in the respective section of the decision) and argues that it proves that its trade mark has a high level of acquired distinctiveness and a high level of awareness among consumers and has also acquired a ‘good reputation’ and a ‘particular reputation’ for the relevant goods - its mark enjoys an image of fashion, trend, efficiency, functionality, excellence, reliability and quality custom service reputation. In addition, the applicant argues that there is a link between the marks in the mind of the consumers in view of the high degree of similarity between the mark, the high level of acquired distinctiveness and reputation of the earlier mark, the overlap in the relevant public and the existing trend of fashion trade marks expanding towards different fields of business like foodstuff, restaurant’s services, hotel, travel and temporary accommodation. In support of its arguments it refers to some of the evidence it filed. The applicant claims that use of the contested trade mark will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark and explains why each of these risks of injury exists. As mentioned, the applicant claims that it owns several marks formed by the distinctive and common element ‘ZARA’, in addition to other words such as “KIDS”, “HOME” or “BASIC”, and provided some evidence thereof in order to show that it used the earlier marks forming the alleged family of ‘ZARA’ marks. According to the applicant all the conditions laid out by article 60(1)(a) and 8(5) EUTMR are fulfilled and the contested mark should be declared invalid.

The EUTM proprietors replied that the marks are visually, aurally and conceptually different. According to the EUTM proprietors, the element ‘ZARA’ is a very common female forename in the English-speaking territories, whilst ‘ZARA TOURS’ will be seen as a business specialising in travel/tours.

The EUTM proprietors analyse the evidence of reputation filed by the applicant and argue that Annex 1 is simply a list of trade marks registered worldwide, their current status is not accurate and they cannot be taken into account to determine the size of the investment made by the applicant in promoting the mark. In addition, the applicant has the habit of registering trade marks in several classes with the purpose of monopolising the register and preventing third parties from registering marks for goods and services unrelated to its activities. The Second Board of Appeal took a decision on 06/02/2013, in which it was found that the applicant failed to prove genuine use of the earlier mark in relation to Class 39 services and the applicant’s earlier mark was also revoked in relation to ‘provision of food and drink; temporary accommodation’ in Class 43. A similar decision was taken by the United Kingdom Trade Mark Office in which the applicant’s mark UK No 1 574 845 was revoked also in relation to Class 39 services. The EUTM proprietors deny the applicant’s claim that ‘Zara’ is not only well known or reputed, but famous in the whole European Union for goods in Classes 3, 14, 18, 21, 24 and 25 and even beyond any concrete field of business. According to the proprietors, the earlier mark is only noted for clothing and related goods/services supplied by the applicant, furthermore, the survey (Annex 3) was conducted in October 2013, which is some time after the relevant date 23/04/2009. The remaining Annexes filed by the applicant are no more than internal documents relating to the company or items from various websites, none of which have any bearing on establishing reputation. Furthermore, a number of these items are after the relevant date.

In relation to the link between the signs, the EUTM proprietors state that the relevant consumers would not establish a mental link between the marks in view of the huge differences between the applicant’s goods and the services of the contested mark as to their respective nature, purpose, method of used, service provider, manufacturer and marketing means, and, therefore, no unfair advantage would be taken of the earlier mark as required by Article 8(5) EUTMR. In order to justify its case of ‘free riding’, the applicant cited a number of well-known brand owners who have extended their brands to other arears. If this were the case, the same could not be said of the applicant who is only known for its high street clothing retailing business and related activities and such activities and the services of the contested mark are so distinct that the only point they share in common is that they are both aimed at the average consumer and the same relevant public. In relation to dilution, the EUTM proprietors argue that the applicant did not file any evidence in relation to a change in the economic behaviour of the average consumer and, also, that ‘ZARA’ is not unique, as it is a female forename. There is no detriment to the repute either, as the services covered by the contested EUTM do not have any characteristics or quality of any kind, which are detrimental to the repute of the earlier mark.

The EUTM proprietors claim, as can be seen from the evidence they filed in support, that they adopted and have been using the ‘Zara’ element of the contested mark many years prior to the filing date of the applicant’s mark. The marks referred to in the applicant’s evidence as a ‘family of formative marks’ consist merely of the word ‘Zara’ with the addition of descriptive matter to indicate the intended purpose of the goods, i.e. ‘Zara Home’ - items for the home, ‘Zara Kids’ - clothing for children, ‘Zara basic’ - simply items of lower value than the average item, and such marks cannot be considered a ‘family of marks’. According to the EUTM proprietors the evidence shows that both marks have been co-existing on the UK and European Union markets since as early as 1988 and on EU register from 05/07/2013, thereby indicating that the marks are peacefully co-existing. The proprietors conclude that none of the supporting evidence filed by the applicant shows that at the relevant date, the earlier mark had become distinctive or had acquired a reputation in the European Union, and accordingly, in their view, the application for invalidity must be rejected.

In support of their observations, the proprietors submitted documents (Annexes 1 - 8), in particular: a printout from a website showing information about the female forename ‘Zara’, copies of decisions of the EUIPO and the UKIPO, copy of trade mark registrations of the applicant and a copy of the proprietors’ UK TM registration ‘Zara Tours’ filed on 27/04/2009 and entered in the UK register on 12/10/2012.

The EUTM proprietors also filed a witness statement of 18/09/2018 by Zainab Ansell, joint proprietor of the contested EUTM, in which he outlines the history of its mark and business activities and refers to Annexes 1 – 8. It is mentioned, inter alia, that the proprietors devised the word ‘Zara’ contained in their mark in 1986 by conjoining the first letters of the proprietors’ names and that the mark was first used in Tanzania in 1986. The annexes consist of the following:

- Annex 1, which gives a brief history of the business activities of the proprietors.

- Annex 2 - Correspondence from the International Air Transport Association (IATA) dated 1987 and 1988 and addressed to the ‘Zara International Travel Agency’ of the proprietors.

- Annex 3 - Letters from two travel agencies in Austria dated in 1993 addressed to ‘Zara International Travel Agency’.

- Annex 4 - A copy of the proprietor’s UK trade mark registration of 27/04/2009.

- Annex 5 - Witness statements and exhibits from Andrzej W. and Vivian M.

- Annex 6 - Testimonials posted on the proprietors’ website in 2007, 2008, 2009 and 2010 from customers from the EU and also other countries worldwide.

In reply, the applicant provides its comments in relation to the arguments and evidence of the EUTM proprietors. The applicant maintains its claims that the signs are similar and that the proofs of reputation it filed include periods that pre-date 2009, e.g. rankings, articles and
press notes that refer to the reputation of the mark prior to the application date of the contested EUTM. Notwithstanding that and for sake of completeness, the applicant filed additional documents showing the rankings of its brand in 2007 and 2008 as well as a detailed history thereof. The applicant refutes the EUTM proprietors’ arguments about its trade mark filing habits and mentions that the previous decisions referred to by the proprietors are not relevant to the current proceedings dealing with reputation and Article 8(5) EUTMR. According to the applicant, the reputation of the earlier mark goes beyond the public and it proved a clear extension in the market of the fashion sector to adjacent sectors such as foodstuff, hotel industries, restaurants, leisure, travel and lifestyle in general, which makes it likely that the average consumers could establish a link between the marks in conflict. The applicant provides further explanations as regards the risk of unfair advantage and notes, inter alia, that it has provided sufficient evidence to prove the association of the mark ‘ZARA TOURS’ with the positive qualities - of excellence and reliability, as well as the efficiency of the logistic and distribution system - of the highly similar and reputed earlier mark ‘ZARA’ which could give rise to manifest exploitation or free-riding by the contested mark. According to the applicant, the references and the documents filed by the EUTM proprietors do not demonstrate that they have ‘due cause’ and they refer to a presumed use in Tanzania (Africa) in 1986, whereas the applicant proved in its Annex 2 that the first use of the mark ‘ZARA’ was in 1975 in Spain (European Union). The applicant also refutes the arguments of the EUTM proprietors that there is a peaceful coexistence of the marks and states that the presence in the market of a mark ‘ZARA TOURS’ will allow the consumers to associate it with the ZARA´s family of trade marks, which do all follow an identical structure (ZARA + Descriptive element in English). In conclusion, the applicant requests the invalidity of the contested trade mark.

In their last submissions, the EUTM proprietors maintain their stand that ‘ZARA’ is a very common female forename in the English-speaking territories and that, conceptually, ‘ZARA’ and ‘ZARA TOURS’ are dissimilar. Regarding the reputation of the earlier mark, the EUTM proprietors argue that none of the evidence filed shows that ‘ZARA’ had reputation before 2009 and the rankings referred to by the applicant are merely an indication of the financial standing of the business organization compared to other organisations. The EUTM proprietors reiterate their arguments in relation to the applicant’s filing activity and intentions to monopolise the register and argue that the applicant had not used or had any intention of using its ‘ZARA’ trade marks in relation to Class 39 services. According to the EUTM proprietors the applicant did not prove the reputation of its mark and did not prove that there is a clear extension of the fashion market sector into the other sectors, as claimed in its observations. Regarding the unfair advantage, the applicant’s arguments of unfair advantage are without foundation and the proprietors obtained their own registered rights in the EU dating back 23/04/2009 and established their own reputation and goodwill through use as early as 1988. In relation to due cause, the EUTM proprietors argue that it is clear from the evidence they filed that their use of ‘ZARA TOURS’ predates the date of filing (29/03/1996) of applicant’s mark, on which the invalidity action is based, and that they have due cause to use their mark. According to the proprietors, the ‘family of marks’ argument should also be dismissed. In conclusion, the EUTM proprietors argue that the invalidity action should be dismissed in its entirety and the applicant should be ordered to bear the costs.

 

REPUTATION – ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

 

The applicant claimed that the earlier mark EUTM No 112 755 ‘ ZARA’ has a reputation in the European Union in relation to all the goods in Class 25.

According to Article 60(1)(a) EUTMR, a European Union trade mark will be declared invalid on application to the Office where there is an earlier mark, as referred to in Article 8(2) EUTMR, and the conditions set out in Article 8(1) or (5) EUTMR are fulfilled.

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier registered trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which registration is sought are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds of refusal of Article 8(5) EUTMR are applicable in the context of invalidity proceedings only when the following conditions are met.

 

(a) The signs must be either identical or similar. 

 

(b) The earlier trade mark must have a reputation. The reputation must be prior to the filing of the contested trade mark and must still exist at the time of filing of the invalidity request; it must exist in the territory concerned and for the goods and/or services on which the application for a declaration of invalidity is based. 

 

(c) Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. 

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for declaration of invalidity under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

 

a) Reputation of the earlier trade mark

  

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

 

In invalidity proceedings, an invalidity applicant relying on reputation must prove that its earlier right has acquired reputation by the filing date of the contested EUTM, taking account, where appropriate, of any priority claimed (Article 60(1) EUTMR, second subparagraph).

 

In addition, the reputation of the earlier mark must still exist at the time when the decision on the invalidity request is taken, given that the conditions set out in the first subparagraph of Article 60(1) EUTMR are formulated in the present tense. Therefore, the applicant should also prove the reputation of the earlier mark at the time of filing of the invalidity request, in which case, and unless there is proof to the contrary, the Cancellation Division will assume that it continues to exist at the time when the decision on invalidity is taken.

 

The contested trade mark was filed on 23/04/2009. Therefore, the applicant was required to prove that the trade mark on which the application is based had acquired a reputation in the European Union prior to that date and that it continued to exist at the time of filing of the invalidity request, that is, on 09/07/2018. The evidence must also prove that the reputation was acquired for the goods for which the applicant has claimed reputation, namely:

 

Class 25:     Clothing, footwear, headgear; babies' diapers of textile; babies' napkins of textile; boot uppers; cap peaks; dress shields; fittings of metal for shoes and boots; footwear uppers; hat frames [skeletons]; heelpieces for boots and shoes; heelpieces for stockings; heels; inner soles; iron fittings for boots; iron fittings for shoes; iron fittings for shoes; non-slipping devices for boots and shoes; pockets for clothing; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; studs for football boots [shoes]; tips for footwear; visors [hatmaking]; welts for boots; welts for boots and shoes; welts for shoes.

 

The application is directed against the following services:

Class 39: Travel and tourism services; arrangement of vacations; arranging, provision and conducting of safaris, expeditions, tours and cruises; transfer, transport and escorting of travellers and passengers; sightseeing (tourism); railway, river and air transport; reservation services relating to transport, travel, tourist activities and vacations; rental of vehicles; booking of seats; information services relating to air travel, air transport, timetables, fares, schedules, connecting transport and tourist information; providing information concerning travel and travel-related topics; providing guidebooks, travel maps, city directories and listing for use by travellers available electronically via a global computer network, providing travel information over computer networks and global communication networks.

Class 43: Travel agency services for booking accommodation; hotel services; resort and lodging services; provision of safari, tour and temporary accommodation; restaurant, catering and bar services; provision of food and drink; booking and reservation services for hotel and holiday accommodation; reservation and information services; advice, information and consultancy services relating to all the aforementioned services.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

 

The applicant submitted the following evidence (the entire batch of evidence consisting of Annexes 1 - 29 on a DVD received on 11/07/2018 and Annexes 1 - 6 filed on 12/02/2019):

 

Annex 1: Trade mark list of Zara’s mark worldwide. The annex contains an exhaustive list of the trade marks (around 2700 trade mark registrations of the trade mark ‘ZARA’ or variations of ‘ZARA’ in 194 jurisdictions) registered worldwide.

Annex 2: Screenshots from the webpage of the Group and Story of the trade mark. The annex reports the corporate story, with more than 7,000 shops worldwide (1 345 ‘ZARA’ stores in Europe) and flagship stores in strategical locations such as Madrid, London and Paris, etc. It can also be seen that the first ‘ZARA’ store opened in 1975 in A Coruña, Spain.

Annex 3: Survey of the degree of knowledge of the trade mark ‘ZARA’ in the EU (by GFK, October 2013). The results show, e.g. that 91,2% of the population in Spain reply that the direct meaning of the word ‘ZARA’ is ‘stores/ clothing / fashion /household linen items’. The results for Belgium are 87,0%, Portugal 85,7%, Luxembourg 81,2%, France 69,5%, etc.

Annex 4: Extracts from blogposts and other online sources regarding the logistics system for the expansion of the mark ‘ZARA’ and other marks of the applicant. The annex contains documents 4.1 to 4.15 containing, inter alia, annual reports for 2006, 2007 and 2009 (4.13, 4.14 and 4.15), Publications and press UK (4.12), ZARA supply chain and analysis (4.10 and 4.11), printouts from www.tradegecko.com_blog_zara-supply-chain-its-secret-to, forbes.com and hbswk.hbs.edu_archive_ zara-s-secret-for-fast-fashion (4.1, 4.2 and 4.4), Blog Logistics (4.5), ZARA Retailer of the Year Retail Week Award 2003 (4.9), etc.

Annex 5: Rankings of the most worldwide valuable marks. In particular:

5.1. Printout from www.rankingthebrands.com showing rankings for ‘ZARA’ in the entire period 2007 to 2018. It can be seen from the data that ‘Zara’ is listed in many rankings worldwide such as “Best Global Brands” by Interbrand, “BrandZ Top 100 Most Valuable Global Brands” by Millward Brown and “The World's Most Valuable Brands” by Forbes.

5.2. The World's Most Valuable Brands - 2018 (Forbes), Ranking The Brands. ‘ZARA’ is placed in 46th position in 2018.

5.3. Global Powers of Retailing 2018 by Deloitte. These identify the 250 largest retailers around the world based on publicly available data for FY2016 (fiscal years ended through June 2017), and analyze their performance across geographies and product sectors. In this ranking, ‘Zara’ is mentioned as one of the few retailers which have grown sales at a double-digit annual pace, on average, during the last five years. According to the report, ‘ZARA’ is placed in 38th position being the first retail company focused in apparel business.

5.4. The World's Most Valuable Brands, in One Chart from https://howmuch.net/articles/top-100-most-valuable-brands-2018.

5.5. Mapping the World’s Most Valuable brands of 2018 (by Nations) from www.valuewalk.com. ‘Zara’ ranked first in 2018 in relation to the Spanish territory.

5.6. Top e-commerces in fashion from http://wwd.com/business-news/ titled ‘H&M, Asos and Zara Top List of Most Visited E-commerce Sites’ and dated in 2018.

5.7. The 100 most mentioned brands on Twitter (2009) from www.rankingthebrands.com. This ranking was prepared by Brand Republic News and the applicant’s mark appears in the ranking as 57th.

5.8. Top 100 Instagram Profiles by Followers - Socialblade Instagram Stats/Instagram Statistics from https://socialblade.com/instagram/top/100/followers. Zara ranks as number 60 of the most followed Instagram accounts, with more than 26 million followers.

5.9. Highlights from the Interbrand global reports, mentioning, inter alia, that during the years from 2013 - 2015 ‘Zara’ reached positions 36^th (2013 y 2014), 30^th (2015) and 27^th (2016).

Annex 6: ‘ZARA’ and its financial dates. The annex contains several documents showing the financial dates and the financial value of the mark ‘ZARA’.

6.1. Brand Finance article on the value of ‘Zara’ as a trade mark. According to the Brand Strength Index (BSI), ‘Zara’ appears to be number one on the list.

6.2. Financial data and sales figures from 2009 to 2017.

Annex 7: ‘ZARA’ and its domain name ZARA.COM. It can be seen that the domain name was registered in 1997.

Annex 8: ‘ZARA’ and the traffic and interaction of consumers with its website. Analytics of the website of the applicant showing an interaction of more than 40 million visits a month in 2018.

Annex 9: Social Blade data on social media interaction of the applicant’s trade mark ‘ZARA’. It can be seen that the applicant’s ‘ZARA’ profile on Instagram has almost 30 million followers, almost 1,5 million in Twitter and the YouTube official channel has more than 12 million views. Page 6 of the annex shows the statistics for the most popular apparel brands on Facebook, where ‘Zara’ ranks 3^rd and page 9, shows the ranking of the leading fashion brands on Instagram as of December 2017, where Zara ranks 6^th.

Annex 10: ‘ZARA’ and Advertisement.

10.1. Investment on advertisement. Advertisement in social media.

10.2. Advertisement through Brochures (1996-7, 1998-99, 2003-04, 2006, 2007-08).

10.3. Advertisement & Spots in other formats and channels.

Annex 11: ‘ZARA’ and the Press.

11.1. “Zara conquista el mundo” in Spanish dated 2008 by ‘El Pais’.

11.2. “The strength of European brands lies in their anatomy Growth” by Interbrand.

11.3. “Zara, a Spanish success story” by CNN.com dated 2001.

11.4. “The most innovative and devastating retailer in the world” by the New Yorker dated in 2000.

11.5. “Zara Case: Fast Fashion from Savvy Systems” from www.gallaugher.com dated in 2008.

Annex 12: Case law.

- Judgement of the Spanish Supreme Court of 2 June 2014 (Case ZARA vs. VIAJES ZARATOURS VACACIONES Y OCIO) where the Spanish Court recognized the reputation of the mark ZARA and rejected the registration of a latter commercial name in Class 39.

- Opposition Decision of 18 May 2007 of the Hungarian Patent Office rejecting the marks ZARA HOTELS in Class 43 due to the similarity and reputation of the earlier mark ZARA.

- Judgement of the Budapest Appellate Court issued on 13 October 2011, confirming the Judgement of 10 June 2011 of the Budapest Metropolitan Court acting as Community Trademark Court of first instance stating that the use of the names ZARA HOTEL and “ZORa”

for services in Class 43 infringes Inditex’s rights for the reputed mark ZARA.

- Judgement of the Regional Court in Warsaw (Poland) of 29 June 2015, acting as Court for the Community Trade Marks and Community Designs, stating that the use of the name ZARA BIN for transport services in Class 39 infringes Inditex’s rights for the reputed mark ZARA.

- Judgement of the High Court of Delhi at New Delhi (India) of 19^th May 2015 that grants the interim injunction requested by Inditex, S.A. against the use of the name ZARA TAPAS BAR or ZARA, the Tapas Bar in relation to the hotel and hospitality business.

Annex 13: Plans of ‘ZARA’ stores in Meir 58, Antwerp, Belgium.

Annex 14: Article on social media influencers.

Annex 15: Influencers publishing fashion content in their travelling posts.

Annex 16: Stories and Edits published by ‘ZARA’ and other brands of the same company related to travelling. Excerpts from ‘ZARA’ and other brand’s catalogs from previous years inspired in emblematic cities and places.

Annex 17: (17.1) ‘Trademark dilution under the EU Law’ by INTA and (17.2) Information about an alliance between ‘IBERIA EXPRESS’ & ‘PULL & BEAR’.

Annex 18: Catalogue ‘Zara Home Autumn Winter 2014’.

Annex 19: ‘ZARA’ stores and their architecture.

Annex 20: The Top 10 Paris Shopping & Fashion Tours.

Annex 21: Publications such as “Zara travel clothes”, ”What to buy from Zara for vacation”, “What to wear on a Cruise”.

Annex 22: Judgement of the General Court of 5 June 2018, PRADA v THE RICH PRADA T-111/16.

Annex 23: Judgement of the CJUE of May 30th, 2018 in relation to the KENZO v KENZO ESTATE case C-85/16 P and C-86/16 P.

Annex 24: Documents concerning fashion business and its relation with restauration and hotels business.

Annex 25: Information about an alliance between ‘IBERIA EXPRESS’ & ‘PULL & BEAR’ to offer combined travels to the ‘Pull & Bear’ headquarters to clients and providers.

Annex 26: Registration details of the EUTM registrations ‘ZARA HOME’, ‘ZARA BASIC’ and ‘ZARA KIDS’.

Annex 27, 28 and 29: Evidence of use of ‘ZARA HOME’, ‘ZARA BASIC’ and ‘ZARA KIDS’.

Evidence of 12/02/2019:

Annex 1: A chart from the UK government statistics about the Historic lists of top 100 names for baby boys and girls for 1904 to 1994 where ‘Zara’ is not mentioned at all. An extract from the same department for 2009 indicating that the name ‘ZARA’ was in position 75 among the female names selected by parents for their children. A chart from the Spanish Instituto Nacional de Estadística according to which there are currently (2017) only 824 people named ‘ZARA’ in Spain, which represent 0.035 of the women population.

Annex 2: Printout from www.rankingthebrands.com (the same as Annex 5.1 above) showing rankings for ‘ZARA’ in the entire period 2007 to 2018. In addition, the present annex includes additional detailed information from www.rankingthebrands.com in relation to ‘ZARA’’s ranking in 2007 and 2008. Information (already submitted as part of Annex 2 above) showing a detailed history of the birth, growth, success and popularity of the mark ‘ZARA’.

Annex 3: News article from ‘El Pais’ of 2015 in relation to the dispute between the parties.

Annex 4: Decision of the national office of China together with a notarized translation of a case between the same parties and the same marks (ZARA v. ZARA TOURS) where the administrative Board declared the invalidity of national registration in China No. 14 552 640 “ZARA TOURS” for services in Classes 39 and 43 on the basis of reputation of the earlier mark “ZARA” in Class 25.

Annex 5: Interbrand rankings reports, namely:

- Interbrand, Best Global Brands 2011: ‘ZARA’ is featured in 44^th position.

- Interbrand, Best Global Brands 2012: ‘ZARA’ is featured in 37^th position.

- Interbrand, Best Global Brands 2013: ‘ZARA’ is featured in 36^th position.

Annex 6: List of EUTM registration containing ‘ZARA’.

It should be mentioned, for the sake of completeness, that the applicant has submitted, inter alia, some evidence relating to the United Kingdom with a view to demonstrating the reputation of the earlier EUTM. However, it follows from Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, worded in the present tense, that the conditions for applying it must also be fulfilled at the time of taking the decision. As the UK is no longer a member of the EU, the evidence relating to its territory cannot and will not be taken into account to prove reputation ‘in the EU’.

It is clear from the remaining evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. Contrary to the arguments of the EUTM proprietors, the evidence contains sufficient indications and demonstrates that the applicant’s trade mark had acquired a reputation prior to 23/04/2009 and this reputation continued to exist at the time of filing of the invalidity request, that is, on 09/07/2018. The independent brand rankings, sales figures, market share shown by the evidence and the various references to its success in the press all unequivocally prove that the mark enjoys a high degree of recognition and reputation among the relevant public – a fact confirmed through the years in numerous global rankings and also in various decisions of courts and administrative bodies.

 

On the basis of the above, the Cancellation Division concludes that the earlier trade mark has a reputation in the European Union for the goods ‘clothing, footwear, headgear’ in Class 25. Moreover, based on the evidence provided and the analysis thereof, the Cancellation Division also concludes that the strength of the reputation of the trade mark ‘ZARA’ is outstanding.

The applicant failed, however, to prove reputation for the remaining goods, for which reputation has been claimed in Class 25, namely babies' diapers of textile; babies' napkins of textile; boot uppers; cap peaks; dress shields; fittings of metal for shoes and boots; footwear uppers; hat frames [skeletons]; heelpieces for boots and shoes; heelpieces for stockings; heels; inner soles; iron fittings for boots; iron fittings for shoes; iron fittings for shoes; non-slipping devices for boots and shoes; pockets for clothing; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; studs for football boots [shoes]; tips for footwear; visors [hatmaking]; welts for boots; welts for boots and shoes; welts for shoes. There is no reference to these goods in any of the evidence filed.

 

b) The signs

 

ZARA	Zara Tours
Earlier trade mark	Contested sign

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

In the present case, the Cancellation Division finds it appropriate to focus the analysis below on the Spanish public. This is for economy of proceedings and because the strength of reputation of the applicant’s trade mark in Spain, as shown in the evidence, is particularly high and strong.

Both marks are word marks and as such they have no element(s) that could be considered clearly more dominant than other elements.

The element ‘TOURS’ of the contested mark will be understood by the relevant consumers, as the word ‘tour’ exists in Spanish (with the same meaning as in English, see ‘Diccionario de la lengua española’ online at https://dle.rae.es/tour?m=form). In relation to the relevant services, this element will be perceived as a descriptive indication relating to their characteristics, such as their nature, purpose and/or subject matter. Therefore, this element is non-distinctive.

The word ‘ZARA’ contained in both marks may be perceived as a woman’s name by a small part of the relevant public, whereas for the majority of the public the word as such has no meaning. Whether understood or not, the verbal element ’ZARA’ has no descriptive, non-distinctive or otherwise weak meaning in relation to the relevant goods and services and it is considered that its inherent distinctiveness is normal.

Visually and aurally, the signs coincide in the (sound of the) inherently distinctive verbal element ‘ZARA’, which constitutes the only element of the earlier mark and is entirely contained in the beginning of the contested sign, as its most distinctive verbal element. The signs differ only in the second non-distinctive verbal element of the contested sign. The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the signs are visually and aurally similar to a high degree.

The concepts of the signs have been defined above. As mentioned, the verbal element ‘ZARA’ of the signs has the same meaning, for a small part of the public, or will not be associated with any meaning by the remaining public. The signs differ in the additional concept of ‘TOURS’ of the contested sign. Therefore, the signs are conceptually highly similar for a part of the relevant public. As regards the majority of the relevant public for which the coinciding ‘ZARA’ is meaningless, the signs differ in the concept of ‘TOURS’ and the signs are not conceptually similar. Nevertheless, as explained above, this element is non-distinctive and its impact as a conceptual difference is fairly limited, as the attention of the relevant consumers will be attracted by the fanciful distinctive word ‘ZARA’ that will be perceived as the main trade identifier in the contested sign and is the only element of the earlier mark.

 

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

  

c) The ‘link’ between the signs

 

As seen above, the earlier mark is reputed and the signs are similar.  In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

 

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

 

 the degree of similarity between the signs;

 

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 

 the strength of the earlier mark’s reputation;

 

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 

 the existence of likelihood of confusion on the part of the public.

 

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

 

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

 

According to the Court of Justice of the European Union,

 

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

 

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

 

The Court of Justice has also noted,

 

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

 

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51-52.)

 

As indicated above in sections a) and b) of this decision, the signs are similar and the reputation of the earlier trade mark in relation to clothing, footwear, headgear is outstanding. The contested sign seeks protection for a number of services in Classes 39 and 43. In the present case, the goods of the earlier trade mark target the public at large, in particular the average consumer of clothing, headgear and footwear. Since the contested services are aimed at both the general public and at professionals, the general public paying an average level of attention is to be taken into account (11/04/2019, T-655/17, Zara Tanzania Adventures/Zara et al., EU:T:2019:241, § 19). Therefore, there is an overlap between the relevant sections of the public for the trade marks in dispute.

In the present case, the signs differ only in an element that is not distinctive for the respective services. Indeed, while the relevant section of the public for the goods and services covered by the conflicting marks may be the same and at least overlaps, those goods and services are not similar. The contested services in Classes 39 and 43 are in the fields of travel and tourism, transport, rental of vehicles, hotel, restaurant and temporary accommodation, provision of food and drink and related information and consultancy services, and are dissimilar to the earlier ‘clothing, footwear, headgear’ in Class 25. They have no point of similarity as they have different natures, purposes and methods of use. They are not in competition or complementary. They are usually offered by different companies in different sectors of activity.

According to the EUTM proprietors the relevant consumers would not establish a mental link between the marks in view of the huge differences between the applicant’s goods and the services of the contested mark as to their respective nature, purpose, method of used, service provider, manufacturer and marketing means.

However, as argued by the applicant and as confirmed by the Court in 11/04/2019, T-655/17, Zara Tanzania Adventures / Zara et al., EU:T:2019:241, § 51, as regards the differences between the goods and services covered by the marks at issue, it must be must be held that there is currently a trend for trade marks present in the fashion market to evolve towards other markets and business sectors. For that reason, it cannot be ruled out that, in spite of the differences between those goods and services, the mark applied for might bring the earlier mark to the mind of the relevant public, particularly because the goods and services covered by the marks at issue are intended for, inter alia, the general public.

The applicant argues and submitted evidence thereof that the current trends with regard to marks that are present on the fashion market, which are evolving outside of the market on which they are normally present, is towards adjacent markets, such as those in respect of foodstuffs, restaurant services and hotel and temporary accommodation. According to the applicant, on account of that trend, even though the contested services in Classes 39 and 43 may not be considered to be strictly similar to the goods for which the reputation of the earlier mark has been established, they are still linked to the relevant commercial sector. The applicant claims that it is not unusual for fashion magazines to combine fashion articles and articles on travel trends. It submits that, on social media it is also very usual for bloggers and influencers travelling worldwide to comment both on the clothing and accessories that they wear during their trips and on the trip itself, including destinations, hotels and restaurants.

The applicant maintains that, on account of these factors and of the strength of the earlier mark’s reputation, the public will establish a link between the goods/services and the respective marks.

Bearing in mind the overlap between the relevant sections of the public for the trade marks in dispute, the high degree of similarity between the signs, the trends and connections between the relevant markets, as well as the outstanding reputation of the earlier trade mark being a unique fanciful term for the majority of the examined relevant public, it is highly likely that the public will make a connection between the conflicting marks.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Cancellation Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

 

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

 

Although detriment or unfair advantage may be only potential in invalidity proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

 

It follows that the applicant must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the applicant should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

 

The applicant claims that use of the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark. 

 

Unfair advantage (free-riding)

 

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

 

The applicant bases its claim on the following:

-There is unfair advantage taken of the distinctiveness of the applicant’s sign. The EUTM proprietors will benefit from the attractiveness of the earlier mark “ZARA” by affixing on their services a sign which is widely known in the market, thus misappropriating its power of attractiveness and advertising value. Such a misappropriation of the distinctiveness of the earlier mark results in an association between the marks, which may transfer, in some way, attractiveness to the contested sign. An association of this kind is more likely to occur where there is a special connection between the goods/services, which allows for some of the qualities of the applicant’s goods/services to be attributed to those of the proprietors. This is particularly so in the case of neighboring markets, where a ‘brand extension’ seems more natural. That is the case here, since the proprietors’ mark is registered in a field, which fits within the natural evolution trend of the earlier mark, and where the applicant is already present.

- There is unfair advantage taken of the reputation of the applicant’s sign. The challenged EUTM may profit from the renown of the earlier brand by unduly exploiting its prestige and its image of efficiency and reliability. Such a risk will be particularly high where the earlier mark has acquired not only a high degree of recognition amongst consumers, but also a ‘good’ or ‘special’ reputation, in the sense that it reflects an image of excellence, reliability or quality. That is the case here, since the applicant’s trade mark is considered as one of the most famous trade marks in the fashion industry. Besides, it cannot be ignored that ZARA is more than a fashion and lifestyle brand, ZARA is also well known as a retail and distribution brand due to the efficiency of its distribution system consequence of the continuous investments and efforts made by Inditex.

- It is likely that the public that enjoys of the services in Classes 39 and 43 and uses an hypothetic travel agency named ZARA TOURS would be the same that usually goes shopping to ZARA’s stores and packs the bag with ZARA clothes to go on vacation. Similarly, the guests that book a room in a hypothetic hotel called ZARA TOURS (see the decision ‘ZARA HOTEL’ in Hungary submitted in Annex 12) or enjoy some food and drinks in a bar or restaurant called ZARA TOURS would associate these establishments with the ZARA stores.

-Therefore, it is likely the link between the marks ZARA / ZARA TOURS in the mind of the same clients that overlap, and to this extent the misappropriation of the reputed trademark ZARA by the younger mark.

 

-The applicant’s trade mark could be perceived as the object of the process of what is nowadays called “brand expansion” which is the natural expansion of well-known trade marks to other sectors of business, expanding its reach to other industries. The clear example of this is, for example, the earlier trade mark “EL CORTE INGLÉS”, which started as a wholesale business, and then moved to other sectors like Travel agency, banking and so forth. A second example of all this may be the other well-known trade mark “VIRGIN”, which has moved to sectors like banking, airline carrier, radio broadcasting, gym franchising, among others. Lastly, the well-known trademark “Amazon”, which has moved from online bookselling to selling all type of products, offering music streaming subscription, video platform, cloud storage, just to mention some of them.

-Since the applicant has already invested significantly in the expansion of the trade mark base of this invalidation and since the trade mark has a “super” reputation, there is a high risk that the general public of the consumers may believe that the expansion of said mark has reached also the sector of travelling, when confronted with both trade marks. Precisely this aspect (brand expansion) is to be highlighted to this regard.

- Since the services are connected and target the same public, the link which consumers may establish between the signs may result in consumers being unduly more attracted by the services covered by the contested EUTM.

-The earlier mark has acquired a high level of awareness among consumers and, in addition, has also acquired a ‘good reputation’ and a ‘particular reputation’ in the segment of fashion, in which the mark enjoys an image of fashion, trend, functionality, efficiency, reliability and custom service, along with other messages that can positively influence a consumer’s choice regarding the services, such as the ethical character of the proprietor of the ZARA mark.

-The applicant has provided sufficient evidence to prove the association of the mark ‘ZARA TOURS’ with the positive qualities - of excellence and reliability, as well as the efficiency of the logistic and distribution system - of the highly similar and reputed earlier mark ‘ZARA’ which could give rise to manifest exploitation or free-riding by the mark applied for. Some ideas of the impact of the image of the mark ZARA in the consumers’ minds are well explained in the reports of the Interbrand rankings (Annex 5).

-It is not infrequent for successful fashion houses to extend the use of their brand towards adjacent markets. As stated above, the degree of similarity between the marks at issue is sufficient for the public to be able to make a connection between the two marks; on the other hand, the possible contiguity of the contested services with the applicant’s reputed goods may give rise to the risk that a transfer of the repute and of the distinctive character of the earlier mark takes place.

-Thus, it would result in a transfer of the attractiveness of the earlier reputed mark ZARA in favour of the proprietors’ trade mark. Based on that connection, it is very likely that by using the contested mark ZARA TOURS, the proprietors will take unfair advantage of the earlier mark’s distinctive character, repute and the consistent selling power, which are the results of the activities, efforts and investments undertaken by the applicant. Indeed, it is plausible that the proprietors may take unfair advantage of the situation that the public in the relevant territory

knows the applicant’s trade mark ZARA in order to introduce their own trade mark without incurring in any great risk or costs of introducing a new trade mark into the market. It should be per se sufficient to verify a future risk, which is not hypothetical, of the taking of unfair advantage by the proprietors of the distinctiveness and reputation of the earlier trade mark ZARA.

On the basis of the above, the Cancellation Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

The arguments provided by the applicant are sound insofar as there is high degree of similarity between the signs, relationship between the goods/service that leads to a link to the extent that consumers may believe that the marks are connected in some way. The applicant has described how consumers will associate the marks and it is clear that this is a feasible conclusion.

Bearing in mind the strong and long-standing reputation of the ‘ZARA’ trade mark and the fact that this verbal element represents a significant and the most distinctive part of the contested sign, it is very likely that the contested trade mark will immediately bring to mind and allude to the applicant’s ‘ZARA’, especially taking into account that this term is unique and fanciful as regards the majority the relevant public under analysis.

The applicant has focused on the strong reputation built up by the brand over the years and its image of stylishness, design that follows latest trends, efficiency and quality at affordable prices, as well as at privileged locations. It argues that the ensuing image transfer would facilitate the sale of the contested services and that the contested mark will take unfair advantage of the applicant’s sign.

Taking into account the circumstances of the case, including the outstanding reputation of the earlier mark, the Cancellation Division finds that it is indeed inevitable that the image of the earlier mark ‘ZARA’ and the characteristics that it projects as described above will be transferred to the proprietors’ services in Classes 39 and 43, with the result that the proprietors’ trade mark will be unfairly ‘boosted’ by virtue of being associated with the earlier mark.

As found by the Board of Appeal (12/05/2020, R 1624/2019-4, ZARA TANZANIA ADVENTURES (fig.) / ZARA et al, § 47), these characteristics are desired for the contested services as stylish design following the latest trends, moderate and affordable prices and privileged location are closely associated with all the contested services in Class 43, namely hotel, temporary accommodation, provision of food and drink, restaurant and bar services. As regards the contested services in Class 39, namely travel and tourism services and associated transport, rental of vehicles, reservation and information services are also linked to the notion of style, latest trends and affordable prices. By using the earlier ‘ZARA’ mark as the most distinctive element of their sign, the proprietors benefit from the power of attraction, the reputation and the image of the earlier mark and exploit the applicant’s extensive marketing efforts it expended in order to create and maintain the earlier mark’s reputation. The image transfer would enable the proprietors to introduce their own trade mark on the Spanish market without incurring any great risk and associated advertising costs of launching a new trade mark (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 72-73). This creates an advantage taken unfairly of the distinctive character or the repute of the earlier mark.

On the basis of the above, it is concluded that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

 

Other types of injury

The applicant also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

 

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an invalidity request to be well founded in this respect, it is sufficient that only one of these types is found to exist. As seen above, the Cancellation Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types of injury also apply.

 

e) Due cause

 

As seen above, the requirements of identity or similarity of the signs, reputation of the earlier mark, and a risk of injury have all been met. However, fulfilment of all the abovementioned conditions may not be sufficient. The application may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

 

The EUTM proprietors claim to have due cause for using the contested mark and that there is a peaceful coexistence of the marks. According to the EUTM proprietors, ‘ZARA’ is a combination of the first letters of the names of the proprietors. It has been established in case-law that the EUTMR does not provide any unconditional right to register one’s own name as an EUTM (02/12/2015, T-522/13, Kenzo Estate / Kenzo, EU:T:2015:922, § 59). Neither is the use of an acronym a convincing reason to justify due cause (10/05/2007, T-47/06, Nasdaq, EU:T:2007:131, § 63-64). Consequently, the fact that the element ‘ZARA’ was based on the proprietors initials is not enough to constitute due cause for the use of the contested sign for the purposes of Article 8(5) EUTMR.

The EUTM proprietors further submitted evidence of use of the company Zara International Travel Agency since 1987 as a travel agency, certified by IATA and a copy of a book from 1996, which refers to the company Zara International, both companies based in Moshi, Tanzania. They filed written statements by UK and Austrian travel agencies which allegedly have been working together since the 1990s and comments dating back to 2007 by clients of the agency from different EU countries (e.g. Sweden, Denmark, Finland and Germany).

Notwithstanding the above, the EUTM proprietors have not provided any evidence that they have been running their business in Spain, the territory under analysis and in which the significant reputation of the earlier ‘ZARA’ mark has been proven, before the date of filing of reputed mark (06/02/2014, C-65/12, Leidseplein Beheer and de Vries, EU:C:2014:49, § 60).

As found by the Boards of Appeal, as to the cooperation between the proprietors and European Union travel agencies, the written statements by third parties with a ‘clear’ link to the proprietors cannot in themselves be sufficient, particularly where their similar content unavoidably reveals that they have been prepared and drafted at the request and under the supervision of the proprietors (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 44; 16/07/2014, T-498/13, Nammu, EU:T:2014:1065, § 38). It has not been demonstrated by any objective evidence that the contested sign has been used before the reputed mark was filed and in any case, the written statements imply that the proprietors provided their services only in Tanzania as a tourist destination for safaris, treks and tours. No use whatsoever has been proven within the European Union (12/05/2020, R 1624/2019-4, ZARA TANZANIA ADVENTURES (fig.) / ZARA et al., § 52).

It follows that the EUTM proprietors have not put forward any convincing arguments to warrant the conclusion that their use of the contested sign ‘ZARA TOURS’ would be founded on due cause within the meaning of Article 8(5) EUTMR. In those circumstances, there is no due cause for the use of the contested sign by the proprietors.

In relation to the EUTM proprietors’ arguments that the applicant has the habit of registering trade marks in several classes with the purpose of monopolising the register and preventing third parties from registering marks for goods and services unrelated to its activities, it is stated herewith that each case has to be dealt with separately and with regard to its particularities and the Cancellation Division’s examination is restricted to the grounds and rights invoked in the present proceedings. In addition, the present case is based only on one earlier trade mark and on goods in Class 25, which, as demonstrated by the evidence on file, are the goods that constitute the main business activity of the applicant.

f) Conclusion

 

Considering all the above, the application is well founded under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR. Therefore, the contested trade mark must be declared invalid for all the contested services.

 

Given that the application is entirely successful under Article 8(5) EUTMR on the basis of the examined relevant territory, it is not necessary to examine the remaining territories or the applicant’s claim that it has a family of marks.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietors are the losing party, they must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Cancellation Division

 

María Belén IBARRA DE DIEGO

Liliya YORDANOVA

Oana-Alina STURZA

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.