Trademark enforcement lessons: ZANA, Zara and PR

Stop the Press!  'HOUSE OF ZANA' has been found to be different from 'ZARA'.  To many, this will not have come as a surprise.  When trademark applications are opposed, applicants (and/or their representatives) are familiar with the argument “the marks only differ by one letter”.  Increasingly, that argument does not bear much weight at the UK IPO Tribunal Section.

Average consumers are not 'morons in a hurry'.  The fact two trademarks share some (or even many) letters does not necessarily mean a likelihood of confusion exists.  The legal concept of Register Dilution also does not exist in the UK. 

One takeaway from our recent Smart IP webinar was a warning on watching services, and how when these become so streamlined, they can leave rights holders open to an expensive whack-a-mole trademark enforcement practice.  Automated standard letters associated with such practices can even leave IP owners open to unjustified threats, acquiescence estoppel, and even (successful) counterattack. 

Whether linked to such streamlined practices or not, another real risk is negative PR, as has been truly the case for fashion brand Zara.  The decision in the HOUSE OF ZANA case made national UK television and radio news bulletins spanning many days.  The UK public is interested in news of IP disputes, and even more so in supporting (who they deem) to be the underdog, especially when a situation looks patently unfair.  Such actions really can harm brands, attracting very negative PR and public allegations of bullying.

IP rights holders have every right to legitimately enforce their rights – but highly subjective, or opaque arguments such as “the marks start and end the same”, do not always win the day at the UK IPO Tribunal Section.  Just because a trademark is found in a watching service does not mean a likelihood of confusion exists. 

The HOUSE OF ZANA case (and many, many other examples, such as the fall-out last year from the Hugo Boss vs Boss Brewing saga) demonstrate how adverse PR risk must be included in the assessment of whether opposition (and the costs associated therewith) are commercially worth it.  That is particularly the case when the marks are actually different: that then becomes embarrassing for the opponent when the decision makes the news, and indeed may start to become increasingly embarrassing for the IP profession in general. 

For more information on our recent Smart IP webinar, or our truly commercially-focused view on effective trademark enforcement, please reach out to your Novagraaf UK trademark attorney.

Luke Portnow is a Trademark Attorney at Novagraaf in the UK.