Raenelle Manning is an IPilogue Writer and at 2L J.D Candidate at Osgoode Hall Law School.
The global fashion distributer, ZARA is currently engaged in a trademark dispute with Amber Kotrri, the owner of “House of Zana.” House of Zana is a fashion boutique in Darlington, England that specializes in handmade kimonos and other garments. In April 2022, ZARA submitted a notice of opposition to Kotrri’s trademark application, claiming that brand names were “conceptually identical” for customers. ZARA’s lawyers also urged Kotrri to change her business name and remove all existing branding. Kotrri has refused to comply expressing that it would cause “irreparable harm to her business”. The final tribunal hearing occurred on March 25 2022, where Kotrri defended her business arguing that there is no similarity between the two brands.
Under UK trademark law, third party trademark owners have two months to file a formal opposition after a trademark application is submitted. Generally, an opposition claim will assert that the similarity of the trademark will cause confusion or that the trademark application covers similar goods/services. At the tribunal hearing, ZARA argued that the brands’ oral and visual similarities will lead consumers to “misread, mishear, mispronounce and/or otherwise perceive House of Zana as ZARA.” Further, ZARA alleged that sales could be affected if the average consumer accessed the House of Zana website erroneously when trying to find ZARA. It seems unlikely that people would confuse the popular high-street fashion retailer with a small boutique. Despite the aural likeness of the brand names, the logos are quite dissimilar. The House of Zana logo is written in an italicized font; this is distinct from the bold ZARA logo. ZARA is a globally recognizable brand with 2200 stores in 96 countries, whereas House of Zana has one store location.
Other small businesses have been victims of ZARA’s vigilant trademark enforcement. Last year, ZARA also filed trademark oppositions against 23-year-old Zara McLaughlin, the owner of “Zara Ceramics.” She received a letter from ZARA’s attorneys demanding that she rebrand within a year because the business name undermined ZARA Home. She eventually changed the name to “Zara McLaughlin Studios.”. Tara Nguyen, the owner of a small online fashion retailer, “Tara Sartoria” is also currently fighting back against a trademark opposition from ZARA.
IPilogue Writer Sally Yoon recently discussed the concept of a trademark bully in one of her previous articles on Apple’s numerous trademark opposition filings. To reiterate, a trademark bully is loosely defined as “a larger or well-known company that takes a hyper-aggressive approach to asserting their trademark rights, sometimes to the point of absurdity”. ZARA is an established multi-national business with the legal resources to target these smaller businesses with trademark oppositions and infringement. Small-owned business are not likely to have the means to fight back and may end up financially suffering . For example, Tara Nguyen admitted that responding to ZARA’s letter of opposition cost her business “almost all of their resources”. Fortunately, by publicizing the incident, Amber Kotrri was able to acquire free legal services and significant public support, including over 85,000 signatures on a petition demanding that ZARA withdraw their legal action.
While public empathy tends to lean towards the smaller business in these disputes, the UK Intellectual Property Office encourages trademark owners to actively police potential trademark infringement. Trademarks are important for any sized business to protect their investments from potential exploitation. This raises questions about whether ZARA is a trademark bully or justifiably enforcing their trademark rights. The House of Zana trademark ruling decision is set to be delivered later this year.
