BACKGROUND TO THE DISPUTE

In March 2010, INDITEX filed an application for registration of an EU trademark with the European Union Intellectual Property Office (EUIPO). Registration as a mark was sought for the word sign ZARA, under which he intends to move on to other articles related to the food market. But a few months later, in September, an Italian company (FFAUF ITALIA SPA) filed a notice of opposition. They claim that they already have the LE DELIZIE ZARA trademark on the market, under which they sell dried, preserved, frozen and prepared fresh pasta, all of Italian origin.

In 2013, INDITEX requested proof of genuine use of the Italian trademarks. And, after filing the appropriate papers, the EUIPO partially upheld the opposition of the firm specialising in the sale of pasta. The applicant and the intervener, respectively, filed notices of appeal with EUIPO in 2015.

In 2018, the EU Intellectual Property Office decided to dismiss the INDITEX’s appeal. Not only did it confirm what had been determined in the previous decision, but it also did not allow them to use it for catering services, self-service restaurants and cafeterias.

In 2019 INDITEX went to the General Court. The Court annulled the EUIPO decision on the grounds that it did not comply with the obligation to state reasons and referred the case back to the Office.

A year later, in 2020, the EUIPO partially upheld the Italians’ appeal and declared that there was a likelihood of confusion between all the goods designated by the trademarks of both companies, except in the case of fresh vegetables and fruit juices, which were different from all the goods designated by the Italian company’s earlier trademarks. In other words, Inditex could register the Zara trademark to market only those products. But they were not satisfied either. They appealed again to the General Court.

DECISION OF THE GENERAL COURT

The Court upheld the European Office’s assessment and confirms that the goods and services covered by INDITEX and the goods protected by the earlier Italian marks are identical or similar. Furthermore, it considers that the conflicting marks have a high degree of similarity and that the likelihood of confusion has been demonstrated. INDITEX will therefore not be able to use the ZARA trade mark to sell foodstuffs.