ESHA PANDEY

B18083
INDITEX VS. ORIENTAL CUISINES PVT LTD

Brief Facts:
The case at hand has Industria De Diseno Textile Sa, more famously known as Inditex, who
is the owner of ZARA trademark. The company established in Spain today operates internationally in
the domain of designing, manufacturing and sale of fashion and lifestyle products. The plaintiff
sought an ad interim injunction against the defendants, Oriental Cuisines Pvt Ltd and Ors, to restrain
them from using plaintiff’s well known trademark ZARA as a part of the defendant’s mark, ZARA
TAPAS BAR. The defendant was a leading chain of restaurants that ran a Spanish restaurant by the
name of ZARA TAPAS BAR in Chennai and Kolkata in 2003. By that time Zara had already opened its
stores in 44 countries. The plaintiff did not want the defendant to dilute their trademark by freely
trading on the reputation of Zara.

Plaintiff:
The first instance when the plaintiff got to know about the defendant’s trademark application for
registration of ZARA TAPAS BAR under class 16 and filed an opposition before its registry in Chennai,
a case that is still pending. The plaintiff discovered more applications in 2012 and filed opposition
against all of them.

The contention that Zara had was that the word “TAPAS”, attributed to snacks in Spanish cuisine ,
bore no connection to the use of ZARA because the latter itself had nothing to do with Spanish
culture. They said that the defendants used the word ‘ZARA’ with generic extensions only to trade on
the popularity of plaintiff’s trademark.

The plaintiff prayed for 4 injunctions aimed at curbing the use of word ZARA by restraining
defendants by themselves, their partners, directors, employees, agents and others acting on their
behalf from offering any kind of product or services bearing the trademark ZARA/ZARA TAPAS BAR
and from using the word ZARA as trademark, trade name, corporate name, domain name or in any
other manner that may cause infringement, confusion and likelihood of association amounting to
selling own goods as that of Plaintiff’s well-known brand which is seriously detrimental to their
distinctive character and repute.

Defendant:
The defendant on the other hand contented that the plaintiff had concealed the fact the there were
several parties in India and abroad that were using the trademark ZARA and ZARA formative marks
and that the plaintiff’s trademark had been challenged several times under EU.

The defendant also went on to say that the plaintiff had delayed the process of filing a suit against
them which amounted to acquiescence. They said that the plaintiff should have filed the suit much
earlier as they had obtained a bar licence in 2002 and had started to put advertisements from 2003
and application of trademark had been published in 2005.

Issues:
1) Deceptive Similarity between ZARA and ZARA TAPAS BAR
www.zaratapasbas.com could have been projected as a retail outlet that was offering
Spanish styled products and services under the name ZARA. Even though the defendants
asserted that they were using ZARA TAPAS BAR instead of just ZARA for a completely
 ESHA PANDEY
B18083
INDITEX VS. ORIENTAL CUISINES PVT LTD

different category of good which by itself differentiated from the Plaintiff’s brand. However,
it was found that the defendants were trying to make the word ZARA come out prominently
in al their advertisements by making its font size at least 10 times bigger than the other
words like TAPAS BAR.

2) The other many uses of the word ZARA

The defendant in their desperate attempt to prove the independent existence and relevance
of the word ZARA tried to link its meaning to Hindi and Urdu meanings of the word which
means “little” in those languages. They also slyly tried to establish connection between
North African Islamic culture and Spanish culture to justify its claim of the linkage of the
word to Spain. The defendant also tried to establish that the trademark was being used by
many other parties as well.
What bought the case to its knees was the court’s reference to a press article brought to
notice by the plaintiff stating, “Thanks to Mahadevan, who came across the concept in Paris,
Chennai has India’s first Tapas bar ZARA Tapas Bar…”

3) Delay in filing the suit amounting to acquiescence

The court established that even though the case was filed in 2013, discussions to reach a
friendly solution between the two parties had been going on since 2011. The three year
delay cannot amount to acquiescence.

4) Concealment of facts by plaintiff

The plaintiff had stated that they had got to know about the defendant’s activities through a
letter addressed to them in 2011 but as per an affidavit by Mr. Antonio in 2008, they already
knew about the infringement.

Court’s Ruling:
The court established that Zara was deemed as well-known and distinguishable trademark as per
Section 2(1)(zb) of the Trademarks Act, 1999, and was registered under Class 25 since 1993.

The court emphasized the defendant’s bad intent which the court said was evident from the
defendant’s website advertising the trademark wherein the word ZARA was 10 times bigger than rest
of the words which established that the defendants wanted to ride on ZARA’s well known reputation.

As far as the generic nature of the trademark is concerned, the defendants could not establish the
same. The 46 registrations that for the mark that the defendant had relied on was actually
misconceived, as the words HAZARA, KEWDA,LOZAR-A etc. were sought to be similar to the word
ZARA.

The court also said that mere delay in filing suit or misstatement of certain fact, unless mala fide,
does not invalidate plaintiff’s right to seek injunction.

Finally, while granting ad interim injunction, court observed that the plaintiff had a prima facie case
and balance of convenience lied in their favour.
My take:
 ESHA PANDEY
B18083
INDITEX VS. ORIENTAL CUISINES PVT LTD

The decision given by the court is justified as ZARA had established itself as a well known brand and
by enlarging the word ZARA, the defendants were trying to ride on their brand success.
The decision is a good news for foreign brand owners trying to protect their trademark in India.