Can a restaurant be mistaken for a clothing store? The Delhi high court was faced with this question when a popular Spanish clothing brand — Zara — with outlets across India moved a plea to stop a restaurant from using the same name.
While ordering the eatery to change its name, justice GP Mittal upheld something fashion savvy city slickers say they’ve known for a long time - there is only one Zara. The court acknowledged the Spanish brand’s reputation and well-known mark status while restraining a Chennai-based restaurant called Zara Tapas bar from using the name.
The suit, filed by the retail clothing giant through advocate Sushant Singh, alleged that the restaurant — which said in its defence that it was a Spanish food joint — had appropriated his client’s well known trademark in order to “ride” on its hard-earned goodwill.
The restaurant tried to argue that Zara was a common name, and that since the areas of service were different, the similarity was unlikely to cause any confusion to consumers.
But what nailed the restaurant were its own ads that showed the so-called Tapas bar had no real “Spanish connection” at all. “Come to Zara and try exclusive Mexican menu,” said one of the flyers.
When this failed, the defendants tried to assume a relationship between Zara, and the movie hero Zorro. “There is a town namely ‘Zargoza’ being the name of a province in Northern Spain, Zorro meaning fox is Spanish and is also the secret Identity of Don Diego De La Vega, a Californian nobleman and master living in Spanish Colonial era, which has led to the adoption of the mark Zara in respect of Tapas Bar,” they said.
In the end, the court held this argument to be an “after-thought”.
It added that Zara the clothing brand had acquired a cross-border reputation, and the name had become synonymous with the retailer. It relied on a study that showed Zara the clothing brand was counted among the top 50 brands and among 100 most valued trademarks in the world exceeding brand value of $ 9.4 bn.
HC has given the defendants some time to remove the signage and other promotional materials using the trademark ZARA from its restaurant premises.