Delhi High Court
Industria De Diseno Textile Sa vs Oriental Cuisines Pvt. Ltd. And ... on 19 May, 2015
Author: G.P. Mittal
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Pronounced on: 19th May, 2015
+ CS (OS) No. 1472/ 2013
INDUSTRIA DE DISENO TEXTILE SA ..... Plaintiff
Through Mr. Akhil Sibal, Advocate with
Mr. Sushant Singh, Advocate,
Mr. P.C. Arya, Advocate,
Mr. Nikhil Chawla, Advocate,
Mr. Tejinder Singh, Advocate,
Ms. Anisha Gupta, Advocate and
Ms. Parveen Arya, Advocate.
versus
ORIENTAL CUISINES PVT. LTD. AND ORS. ..... Defendants
Through: Mr. N.K. Kaul, Senior Advocate with
Mr. M.S. Bharath, Advocate and
Ms. Prachi Agarwal, Advocate
CORAM:
HON'BLE MR. JUSTICE G.P.MITTAL
JUDGMENT
G. P. MITTAL, J.
I.A. No. 11760/ 2013 (O. XXXIX Rules 1 and 2 CPC)
1. By virtue of this application under Order XXXIX Rules 1 and 2 read
with Section 151 of the Code of Civil Procedure, 1908 (CPC), the
Plaintiff (Applicant) seeks ad interim injunction restraining
infringement of its trademark/trade name ZARA, passing off, dilution
of its trademark/trade name and delivery up against the Defendants.
2. The case set up by the Plaintiff is that the Plaintiff is an internationally
reputed company engaged in the manufacture, design, sale and
distribution of fashion and related lifestyle products in various classes
of International Classification of Goods and Services. In India, the
Plaintiff carries out commercial operations through its associate
company, Inditex Trent Retail India Private Limited, a joint venture
between the Plaintiff and Trent Limited of well known Tata Group
Company. It is the case of the Plaintiff that the Plaintiff coined,
conceived and adopted ZARA as its trademark in 1975 and opened
first ZARA shop 38 years ago in A Coruna, Spain. The domain name
zara.com was registered by the Plaintiff on 29th May, 1997 and the
same has since been in continuous use of the Plaintiff.
3. It is averred that ZARA stores are located in some of the most
privileged and prominent locations in several major cities around the
world including New York‟s 5th Avenue, Paris‟s Champs Elysees,
London‟s Regent Street and Tokyo‟s Shiyuba Shopping Centre. The
Plaintiff had 1763 ZARA stores, 171 ZARA KIDS stores and 364
ZARA HOME stores in over 86 countries. The products bearing
Plaintiff‟s ZARA marks are manufactured in various countries
including India, which are then exported to the Plaintiff at various
locations. In India, garments and other articles bearing Plaintiff‟s
ZARA mark have been specially manufactured since 1986-87 by
Plaintiff‟s Indian manufacturers.
4. The Plaintiff has been using its trademark ZARA and its derivatives
like ZARA KIDS, ZARA HOME, ZARA FOR MUM, ZARA MAN,
ZARA WOMAN or TEXTURES ZARA on a global scale. The
Plaintiff had turnover of over 3310 million Euros in 2003 which has
risen to 10,541 million Euros in the year 2012. In India, the total sales
of ZARA products in the very first year of operation was ` 120 crores
which rose to over ` 384 crores (annually) within two years i.e. in
2012.
5. It is averred that ZARA trademark is one of its most valuable assets
and the same has featured in top 50 brands among 100 most valued
trademarks in the world as per the Interbrand rankings, with a brand
value exceeding US$ 9.4 billion. The Plaintiff‟s mark has thus,
become a well known mark within the meaning of Section 2 (1) (zg)
of the Trade Marks Act, 1999 (the Act) and thus, the Plaintiff is
entitled to protect its mark ZARA against identical or confusingly
similar marks even in respect of goods and services which are not
same or similar to the goods and services of the Plaintiff. It is averred
that the Plaintiff has been vigilant in protecting its ZARA marks and
has been enforcing its trademark rights against all forms of
infringement and dilution. In a number of oppositions filed by the
Plaintiff against trade mark applications of various parties for the mark
ZARA or other deceptively similar marks, the Applicants have
abandoned their applications. It is pleaded that owing to extensive and
continuous use of the mark in India since 1986-87 and opening of
commercial outlets in the beginning of 2010, the Plaintiff‟s mark
ZARA has acquired tremendous reputation in India.
6. It is averred that in or around April, 2005, the Plaintiff first came
across Defendant no.1‟s trademark application no. 1195357 for ZARA
TAPAS BAR in Class 16, advertised in Trade Mark Journal 1327
(Suppl.) dated 17th January, 2005 (which was made available to the
public on 8th April, 2005). The Plaintiff filed opposition no. MAS-
202722 against the said advertised mark which is pending before the
Trade Mark Registry, Chennai. In the end of 2012 and beginning of
2013, the Plaintiff came across other trademark applications filed by
Defendant no.1 for registration of ZARA TAPAS BAR which is in
violation of the Plaintiff‟s right to the globally known registered
trademark and brand name ZARA. The Plaintiff has filed opposition
against all the trademark applications comprising the expression
ZARA filed by Defendant no.1 which have not been advertised till the
date of filing of the suit. It is averred that in February, 2011, the
Plaintiff‟s Indian trademark attorneys received a letter dated
24.02.2011 from Defendant no.1‟s trademark attorneys, proposing
settlement and co-existence of the marks ZARA and ZARA TAPAS
BAR. Defendant no.1‟s attorneys put forth undertakings on behalf of
their clients pertaining to the mark ZARA TAPAS BAR as under:-
"(a) Not to claim any protection and use in Class 24
and 25 pertaining to textile and textile goods;
(b) to confine only to restaurant services and other
allied and cognate goods and services in relation to
hospitality and provision of foods and drinks falling
under Clauses 16, 30, 32, 33 and 43; and
(c) to use it always in composite form."
7. The terms of settlement in the form proposed by Defendant no.1 were
not acceptable to the Plaintiff, the same were consequently rejected.
8. It is averred that the Defendants are using the Plaintiff‟s trademark
and brand ZARA for their business with the generic extensions
"TAPAS BAR" which is a type of dining concept, or "TAPAS" which
is the name given to appetizers or snacks in Spanish cuisine. It is
pleaded that the independent expression ZARA in isolation does not
inherently provoke a Spanish feel, the expression has no meaning in
Spanish language and is neither a popular nor a common name in
Spain. Thus, any Spanish association of the expression ZARA is
solely attributable to the popularity and goodwill acquired by the
Plaintiff worldwide, being a company originally of Spain. Thus, by
use of the name ZARA TAPAS BAR by the Defendants, there is
strong likelihood of unwarranted association between the Plaintiff and
the Defendants in the minds of the existing and potential consumers. It
is pleaded that adoption of the mark ZARA together with Spanish
expression and concept TAPAS BAR by the Defendants is fraudulent
and is solely to ride on the reputation and goodwill of the Plaintiff‟s
brand name ZARA.
9. It is stated that the Defendants‟ emphasis is on the use of the mark
ZARA and the Defendants are misrepresenting to the public at large
on social media like Facebook and Twitter by addressing themselves
as ZARA, ZARA CHENNAI, ZARA CATHEDRAL, ZARA
KOLAKTA, ZARA AIRPORT, etc. to induce the public to visit their
establishment situated in Chennai and Kolkata. It is pleaded that the
Defendants indiscriminating use of the mark ZARA is irreparably
damaging the reputation and goodwill of the Plaintiff by tarnishing its
most valuable ZARA mark. The Plaintiff thus, seeks the following
injunctions:-
"(a) restraining Defendants by themselves, their
partners, directors, employees, agents and others acting
on their behalf from offering any type of services,
manufacturing, marketing, selling and offering for sale,
products and/or restaurant or hospitality services or any
other allied and cognate products and/or services
bearing the mark "ZARA", "ZARA TAPAS BAR" and
from using the mark ZARA as a trademark, trade name,
corporate name, domain name or in any other manner
whatsoever which may cause infringement of Plaintiff‟s
registered well known trademark ZARA;
(b) restraining Defendants by themselves, their partners,
directors, employees, agents and others acting on their
behalf from manufacturing, marketing, selling and
offering for sale products, offering restaurant services or
any allied or cognate products/services bearing the mark
"ZARA", "ZARA TAPAS BAR" and from using the mark
ZARA as a trademark, trade name, domain name or in
any other manner whatsoever which may cause confusion
and likelihood of association amounting to passing off
their goods and services as that of Plaintiffs;
(c) restraining Defendants by themselves, their partners,
directors, employees, agents and others acting on their
behalf from using the mark ZARA on the website more
specifically on www.zaratapasbar.in or on other social
media websites which may create an impression to the
public at large that the said mark ZARA is the
internationally recognized mark from Spain, which is
seriously detrimental to the interest of Plaintiff and
causes passing off on the Internet; and
(d) restraining Defendants by themselves, their partners,
directors, employees, agents and others acting on their
behalf from using the mark ZARA in relation to
eating/dining establishment or bars/pubs or in any other
way which causes dilution of Plaintiff‟s registered and
well known trademark ZARA, which is seriously
detrimental to its distinctive character and repute."
10. The Defendants have contested the suit and the application by way of
filing the written statement and reply to the injunction application.
11. The Defendants have taken preliminary objections that the Plaintiff
has approached this Court with unclean hands. It has misrepresented
and concealed significant information from the Court. It is averred that
there are multiple parties in India and abroad co-existing with the use
of mark ZARA or ZARA formative marks. The presence of multiple
parties can be seen from the list of registrations granted to third parties
using ZARA which came to be shown listed in the Registrar of
Companies‟ search report. The Plaintiff‟s mark ZARA has itself been
challenged in various jurisdictions including India and Plaintiff‟s
home country EU which fact has not been disclosed by the Plaintiff. It
is averred that the Plaintiff entered into India for the first time only in
2010. The Plaintiff has not shown any use or reputation or goodwill of
its mark ZARA prior to 2002 in India or even in any part of the world,
when the Defendants established their restaurant with the mark ZARA
TAPAS BAR.
12. It is the case of the Defendants that Defendant no.1 is not using the
mark ZARA per se but using the mark earlier adopted as ZARA
TAPAS BAR and later as ZARA, the Tapas Bar and Restaurant.
13. The Defendants have admitted that they wanted to settle the matter
amicably with the Plaintiff by offering to confine Defendant no.1 only
to their own core classes of activity within classes 30, 32 and 43,
which remain unused by the Plaintiff. The Plaintiff, however, has a
tendency to monopolise the mark which is actually used by multiple
parties in India and abroad.
14. In para 7 of the preliminary objections, the Defendants have given the
details and origin of the word ZARA and have denied that it is a
coined or a conceived mark of the Plaintiff. It is the case of the
Defendants that all the applications except the one in classes 25, 3 and
18 had been filed on proposed to be used basis by the Plaintiff at least
two months after the date of application of the Defendants. It is
contended that there is no evidence whatsoever of any goodwill and
reputation of the Plaintiff‟s credit and Plaintiff‟s registration are
totally irrelevant. In para 17 of the preliminary objections, the
Defendants have given the details of the third party registration of the
mark ZARA.
15. It is further averred that there is a major delay in filing of the suit by
the Plaintiff which amounts to acquiescence by the Plaintiff to the
Defendants‟ use of the mark ZARA. The Plaintiff ought to have
known the Defendants‟ use of the mark since the year 2002 as it had
obtained a bar licence by this name in the year 2002. It has given
certain advertisements as well since March 2003 onwards and the
trademark application filed on 28.04.2003 was published on
17.01.2005. The Defendants have challenged the jurisdiction of the
Court to entertain the suit as well and have thus, prayed for dismissal
of the application as well as the suit.
16. It may be noted that by an ex-parte ad interim order dated 29.07.2013,
the Defendants were restrained from using the mark ZARA as a
trademark, trade name, corporate name, domain name or in any other
manner whatsoever. Subsequently, on an application under Order
XXXIX Rule 4 CPC by the Defendants, the injunction order was
modified and the Defendants were permitted to use the composite
trademark ZARA TABAS BAR only till further orders. Paras 32 to 34
of the order dated 25.04.2014 are extracted hereunder:-
"32. Hence, the ex parte order was passed keeping in
view the averments made by the Plaintiff as elaborated in
paras 21 and 22 of the plaint, namely that it was only in
March 2013 that the Plaintiff received evidence which
show that Defendant No.1 has started using the
expression ZARA per se and not as part of ZARA TAPAS
BAR i.e. in the form of composite label. Same is the
thrust of the averment in para 22 of the plaint. Factually
this appears incorrect inasmuch as in its Affidavit filed
on 14.01.2008 before the Trade Mark Registry of Mr.
Antonio Abril Abadin there are categorical averments
made by the Plaintiff that the Defendants are using the
mark ZARA per se. As this averment was made in 2008,
knowledge of use of this mark could not be attributed to
be in March 2013 as averred in para 21 of the plaint.
33. In view of the incorrect facts stated in the plaint
based on which exparte order dated 29.07.2013 was
passed in IA No.11760/2013, it would be in the fitness of
things and in the interest of justice that the ex parte
interim orders passed by this Court on 29.07.2013 are
modified and the Defendants are permitted to use the
composite trade mark ZARA TAPAS BAR only till further
orders in IA No.11760/2013. Keeping in view the facts of
this case, the Defendants will not use the mark ZARA per
se. The Defendants will continue to be bound by the
order dated 29.07.2013 pertaining to the use of the mark
"ZARA‟ per se.
34. It is however, clarified that the present modification
of order dated 29.7.2013 is being made in view of the
facts as narrated above and not on the merits of the
matter. Nothing said herein would in any way affect the
contentions of the parties on the merits of the matter
while arguing IA No. 11760/2013 which application the
Plaintiff is free to press and seek all orders and relief as
permissible in law."
17. I have heard Mr. Akhil Sibal, Advocate assisted by Mr. Sushant Singh
and Mr. Nikhil Chawla, Advocates and Mr. Neeraj Kishan Kaul,
Senior Advocate assisted by Ms. Prachi Aggarwal, Advocate.
18. In order to decide this application, the following points fall for
consideration before this Court:-
(i) Whether there is any deceptive similarity between mark ZARA
of the Plaintiff and ZARA TAPAS BAR of the Defendants;
(ii) Whether the adoption of the mark ZARA TAPAS BAR was
dishonest or fraudulent or it is an honest adoption and
Defendant no.1 is entitled to concurrent user of the mark;
(iii) Whether the mark ZARA is used by many entities and has
become publici juris;
(iv) Whether there is a great delay in filing the suit and whether it
amounts to acquiescence on the part of the Plaintiff;
(v) Whether there is suppression/concealment of material facts so
as to disentitle the Plaintiff to the discretionary relief of
injunction; and
(vi) Whether the Plaintiff‟s mark ZARA is a well known trademark
and had trans-border reputation or in the alternative the
Defendants are entitled to use the mark ZARA TAPAS BAR in
relation to class 25 or for that matter hospitality restaurant
business co-extensive with the Plaintiff.
SIMILARITY DECEPTIVE OR OTHERWISE BETWEEN MARK
'ZARA' AND 'ZARA TAPAS BAR'
19. The case of the Plaintiff is that the Defendants are using the mark
ZARA per se as also as ZARA TAPAS BAR. The way the mark
ZARA is being used by the Defendants, there is huge prominence of
the word ZARA and it is sought to be conveyed as if the Defendants
own the trademark ZARA and have relation with the Plaintiff.
20. On the other hand, the case of the Defendants is that they are not using
the mark ZARA per se. They are merely using the mark ZARA
TAPAS BAR or ZARA, the Tapas Bar and Restaurant in relation to
goods and services different from those of the Plaintiff and thus, there
is no similarity between the two marks.
21. Before answering the question posed, it shall be appropriate to refer to
para 22 of the plaint and the written statement. In Para 22, the Plaintiff
alleged that the Defendants were operating a website
www.zaratapasbar.in wherein Defendant no.1 is trying to project itself
as a retail outlet offering Spain-styled products and services under the
name ZARA.
22. Images of few screen shots from the Facebook account of Defendant
no.1 were extracted in Para 22 which are reproduced hereunder:-
23. In the first screenshot on the left side, only the word ZARA is readable
before the words TAPAS BAR. Similarly at the bottom, only the word
ZARA is prominent whereas the words the TAPAS BAR AND
RESTAURANT are hardly readable. Similarly, in the second
screenshot on the right top, again the word ZARA has been
highlighted. In the middle screenshot, the Defendants advertise the
complimentary cocktail in the words "Do all that and more over
complimentary cocktail at ZARA, so don‟t forget to drop in."
24. On the second page (Page 31 of the Plaint) of the screenshot at the top,
Defendant no.1 describes itself happening every Monday at ZARA,
offering one drink free for one. It reads as "Buy one drink & get one
free. Now, every Monday at Zara..." In the second middle and the
bottom screen shots, again the restaurant is described as ZARA.
25. It is therefore, evident that wherever the Defendants have used
TAPAS BAR along with ZARA or TAPAS BAR AND
RESTAURANT or TAPAS, the Bar and Restaurant, the word ZARA
is almost ten times bigger than the other words used in the
advertisement/screenshots. At the same time, at so many other places,
the words BAR AND RESTAURANT have not been used at all with
the word ZARA and the word ZARA per se has been used. Thus,
there is no manner of doubt that there is deceptive similarity between
the mark ZARA of the Plaintiff and the mark ZARA TAPAS BAR,
the way it is being used by the Defendants.
ADOPTION OF THE MARK 'ZARA TAPAS BAR'
26. The Plaintiff urges that adoption of the mark ZARA TAPAS BAR is
dishonest and fraudulent whereas the same is claimed to be honest
adoption of the mark by the Defendants which is now being used for
over a decade.
27. According to the Plaintiff, the Plaintiff coined, conceived and adopted
ZARA as its trademark in 1975 and the first ZARA shop was opened
38 years ago in A Coruna, Spain. The domain name zara.com was
registered by the Plaintiff on 29th May, 1997. It is not in dispute that
the Plaintiff used ZARA initially in Spain and then it opened its stores
in various countries. In the year 2003, when the Defendants claimed to
have opened ZARA TAPAS BAR, the Plaintiff had already opened its
stores in 44 countries and the Plaintiff was having annual turnover of
over 3 billion Euros by that time.
28. Defendants on the other hand, have stated that the word ZARA is an
Italian, Portuguese and Spanish variation of the English, French and
German name Sarah. The relevant averments in this regard from para
7 of the written statement read as under:-
"7........The word ZARA also has a meaning in common
Hindi parlance connoting "some or little". In Urdu, the
word means dawn, morning and is a popular and
common Muslim feminine name. From Arabic roots, its
meaning is blossoming flower; splendor; dawn. In this
context, the word ZARA can be used in the Arabic,
English, and Hebrew languages to connote „zahrah‟ for
blossoming flower as „zahr‟ meaning flower. The name is
derived from the Arabic „zahrah‟ (blossoming flower),
but it has sometimes also been used as a form of Sarah.
The Moorish influence in Spain perhaps evokes an
association of Arabic terms with Spanish culture thereby
making ZARA a popular Spanish name. Historically
there is an undeniable link between Spanish culture and
North African Islamic culture which unknowingly draws
an association with a name like ZARA. A copy of the
news report that appeared in Economic Times in August
2013 has been filed in the present proceedings that states
that anyone tracing the historical links between these
regions cannot also fail to see the connection between the
Arabic, Mediterranean and the Tapas that may after all
have come about in Southern Spain during its long
Moorish period. Infact, the name ZARAGOZA is the
name of a province in Northern Spain whose capital city
is also called ZARAGOZA. Additionally, it is name of a
place in Columbia, Mexico, El Salvador, Phillipines all
of which are Hispanic countries. "Zorro" is also
Spanish for "fox" and is also a popular fictional
character which was created in 1919. The character has
been featured in numerous books, films, television series,
and other media. Zorro is the secret identity of Don
Diego de la Vega, a California nobleman and master
living in the Spanish colonial era. Therefore while ZARA
TAPAS BAR provokes Spanish feel, it does not signify in
any respect an association with the retail and fashion
business of the Plaintiffs. Internet extracts indicate that
the word ZARA has various connotations in different
languages and in different cultures. In Islam, the word
ZARA refers to radiance or flower and has etymological
origin from the Biblical name Sarah, the daughter of
Abraham (also referred to in Islam as Ibrahim). The
Biblical character Sara is cited as having been a very
strong swarthy woman of Indian ancestry, being a patron
of gypsies. Internet extracts of meanings of the word
ZARA in different languages and cultures are being filed
in the present proceedings...."
29. It is urged that Defendant no.1 adopted and used its mark in India in
2003 and acquired tremendous distinctiveness within a very short span
of time.
30. It is urged by the learned counsel for the Plaintiff that the explanation
given by the Defendants for adoption of the mark is an afterthought in
as much as earlier while replying to a letter sent by the Plaintiff, the
Defendants had stated that "ZARA is a commonly used dictionary
word in various languages especially Arabic, Urdu, Hebrew and
Hindi to name a few. The word Zara denotes a blooming flower and is
a widely used name for girls in many countries including the Arab
world and east Europe".
31. It is contended that initially there was not even a whisper that the word
ZARA is a Spanish word or a word of Spanish origin. The learned
counsel for the Plaintiff has also referred to the press article filed by
the Defendants which says"Thanks to Mahadevan, who came across
the concept in Paris, Chennai has India‟s first Tapas bar ZARA Tapas
Bar (launched in March 2003)".
32. Thus, it is urged that the mark ZARA or „ZARA, the Tapas Bar‟ is
fraudulently adopted by Defendant no.1 to infringe the Plaintiff‟s
registered mark and to pass on and to make people believe that
somehow the goods and services offered by the Defendants have some
connection with the Plaintiff.
33. I have gone through the pleadings of the parties. It is too much to say
that the word ZARA is a dictionary word or that the word ZARA was
adopted by the Plaintiff from the name of the city ZARAGOZA. In the
press article itself (relied upon by the Defendants), it has been stated
that Defendant no.2 came across the concept in Paris. Admittedly,
there were 40 ZARA stores in Paris by the year 2003. The word
ZARA is neither generic nor descriptive nor a dictionary word (as far
as Spain is concerned). The Defendants have not given any plausible
explanation for adoption of the mark ZARA. Thus, in all probability,
the mark ZARA TAPAS BAR was adopted by the Defendants from
the mark ZARA of the Plaintiff. Stores by this name were already
opened in over 44 countries by the Plaintiff. In my view, it cannot be
said to be an honest adoption entitling Defendant no.1 to its concurrent
user. If the Defendants did not want to ride on the Plaintiff‟s
reputation, they would have not used the word ZARA prominently in
the words ZARA TAPAS BAR or ZARA, the Bar and Restaurant.
34. In this connection, a reference may be made to the judgment of this
Court in M/s. Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery
Products Co. & Anr., AIR 1999 Delhi 19. In the said case, the
Plaintiffs were owner of registered trademark Nataraj. The Defendants
also used the said trademark and got it registered with the same
spelling of the word having identical dancing figure of Natraj. It was
held that adoption of the mark was clearly fraudulent and in spite of
the long delay, injunction was granted. Of course, in the instant case
there is difference with regard to the goods and services offered by the
Plaintiff and the Defendants, yet, as discussed earlier, the Defendants
adopted the mark just to ride on the reputation of the globally
established mark ZARA.
MARK ZARA USED BY MANY ENTITIES
35. It is urged by the learned senior counsel for the Defendants that the
mark ZARA is used by many entities and has, therefore, become
publici juris. In support of his contention, the learned senior counsel
for the Defendants refers to the case of Hearst Communications, Inc.
v. Dinesh Varyani & Anr., ILR (2009) 4 Del. 799. In the said case, the
Plaintiff filed a suit for injunction and passing off of their magazine
Cosmopolitan against Defendants publishing their magazine
Cosmowoman. In the said case, it was held that the word Cosmo is a
dictionary word and is also publici juris. A common English word
cannot be made the basis for passing off action to claim monopoly
rights unless right to exclusivity is established due to long and durable
association of the word with the Plaintiff.
36. The Plaintiff has filed a long list of cases where the Plaintiff‟s mark
ZARA was protected in Hungary, European Union, Japan, Turkey,
Czech Republic, Portugal, Uruguay, Spain and Colombia.
37. The Defendants on the other hand, relied on third party registrations
comprising the word ZARA. It is very unfortunate that the words
HAZARA KEWDA, ZARATOR, LOZAR-A, etc. are sought to be
claimed similar to the word ZARA by the Defendants. The Defendants
have given a list of 46 registrations alleged to be containing the mark
ZARA which is misconceived. Falsity of the Defendants‟ claim can be
demonstrated by extracting the alleged registered marks similar to
ZARA from para 17 of the written statement hereunder:-
S.No. Mark Application No. Class
1. HAZARA KEWDA 1206797 3
3. LOZAR-A 1062760 5
4. ZARASA 1140628 5
5. BANZARA (DEVICE) 1314899 5
6. ZARAL (LABEL) 1169367 6
11. NAZARA GAMES CLUB 1849442 9
12. ZARAFA 1776312 9
13. ZARA NACHKE DIKHA 1716814(99) 9
14. ZERA 1992391 9
15. ZOLTA ZARANG 1092887 11
17. AMIZARA 1068031 14
19. BAZAR AAZ (LABEL) 1283288 99 (16)
20. HAZARA FURNITURE 1498889 20
HOUSE
ANDAAZ ZARA HAT KE!
WITH LABEL
22. ZIAARA 266592 24
23. ZIAARA 276062 24
24. ZOHRA 411088 24
25. BANZARA 523791 25
26. BANZARA 558544 25
27. AZZARA (LABEL) 1043189 25
ANDAAZ ZARA HAT KE!
WITH LABEL
29. SILLOL HAZARAS 302197 29
30. ZARASA 530122 29
31. NAZARANA 519818 30
32. NAZARANA 522130 30
33. ZARA SI CHAI ASRA 1005147 30
DIKHAYE (DEVICE)
34. ZARANA 1100347 30
LADY)
36. NAZARANA 930397 30
37. ALCAZAR A20 VODKA 1314104 33
(LABEL)
38. VEER ZARA 1365576 34
40. BAZAR AAZ (LABEL) 1283288 99(41)
(DEVICE)
38. In the case of Pankaj Goel v. Dabur India Limited, (2008) 38 PTC 49
(Del.) DB, it was held that the Plaintiff is not expected to sue all types
of infringers who may not be affecting his business. So-called
concurrent use, if any, cannot be a ground to refuse interim injunction.
39. The Defendants have failed to show that the mark ZARA is used by a
large number of persons, yet even if it is used by any other person, it
will not disentitle the Plaintiff to seek relief against the Defendants if
it is otherwise entitled to the same.
DELAY AND ACQUIESCENCE
40. It is urged by the learned senior counsel for the Defendants that the
Defendants entered into Restaurant and Bar business in India several
years before the Plaintiff even contemplated entering into the Indian
market. There were various news papers, articles, advertisements and
widespread write-ups in the press from March, 2003. The Defendants
obtained a bar licence in the name of ZARA TAPAS BAR in the year
2002. Defendant no.1‟s first trademark application under no. 1195357
was published in Journal No. 1327 (Suppl. III) dated 17.01.2005. On
19.12.2007, Defendant no.1 filed its Affidavit in support of its
application and the Plaintiff also filed an opposition to the registration.
It is thus, contended by the learned senior counsel for the Defendants
that the Plaintiff chose to wait for 8½ years from 17.01.2005 to
29.07.2013 to file the instant suit. On account of long delay, there is
acquiescence on the part of the Plaintiff. The Plaintiff is, therefore,
disentitled to the relief of ad interim injunction. In support of his
contention, the learned counsel for the Defendants have referred to the
reports in Honda Motor Company Ltd. v. Kewal Bros. & Anr., (2002),
25 PTC 763 (Cal.) and Hearst Communications, Inc. v. Dinesh
Varyani & Anr., ILR (2009) 4 Del. 799.
41. It is not in dispute that as soon as Defendant no.1‟s first trademark
application was published by the Trade Mark Journal, Chennai in the
year 2007, the Plaintiff filed an opposition to the registration. It is also
borne out from the record that in the Affidavit dated 14.01.2008 of
Mr. Antonio Abril Abadin, there was an admission of the Defendants
doing restaurant business in the name of ZARA TAPAS BAR. At the
same time, simply because the Defendants obtained a bar licence in
the name of ZARA TAPAS BAR in the year 2002 or that they started
their restaurant and hospitality business in the year 2003, the
Plaintiff‟s knowledge cannot be attributed to that date. Admittedly, the
instant suit was filed in the year 2013. The parties were in
correspondence for amicable resolution of the dispute with regard to
use of the name ZARA since at least February, 2011. In my view,
once the Plaintiff had filed opposition to the Defendants‟ application
for registration, this delay of three years will neither amount to
acquiescence nor this delay will disentitle the Plaintiff to the relief of
ad interim injunction if it is able to make out a case on merits.
42. In Honda Motor Company Ltd. v. Kewal Bros. & Anr., (2002) 25 PTC
763 (Cal.) relied upon on behalf of the Defendants, there was a delay
of 28 years in taking action and there was no evidence on trans-border
reputation in the year 1970 when the mark was adopted. Thus, the
injunction was refused on the ground of delay of 28 years as also on
the plea that the adoption of the mark by the Defendants was bona
fide.
43. Similarly, in Hearst Communications, Inc. v. Dinesh Varyani & Anr.,
ILR (2009) 4 Del. 799, there was not only a delay of four years in
taking action by the Plaintiff, but there was also no evidence of trans-
border reputation. In the instant case, I have already held that adoption
of the mark ZARA with the words TAPAS BAR by the Defendants
was not bona fide but was fraudulent.
44. In N.R. Dongre & Ors. v. Whirlpool Corp. & Anr., AIR 1995 Delhi
300 which was upheld by the Supreme Court in (1996) 5 SCC 714, it
was held that delay without prejudice is not a good defence. Mere
delay does not amount to acquiescence. In the absence of satisfactory
explanation given by the Appellant for adopting the mark Whirlpool
(although it was registered by the Appellant in India under this name),
the order of injunction granted in favour of the Plaintiff was upheld.
45. In Midas Hygiene Industries (Pvt.) Ltd. v. Sudhir Bhatia and Ors,.
(2004) 3 SCC 90; M/s. Hindustan Pencils Pvt. Ltd. v. M/s. India
Stationery Products Co. & Anr., AIR 1999 Del. 19; Alfred Dunhill Ltd.
v. Kartar Singh Makkar & Ors., (1999) II AD (Del) 789 and in Chanel
Ltd. v. Sunder Chemicals Agarbati Works (Pvt.) Ltd. and Anr., (2003)
26 PTC 52 (Del.), it was held that mere delay which is not coupled
with acquiescence is of no consequence and injunction cannot be
refused merely on the ground of delay.
46. Thus, the Plaintiff cannot be denied the relief of interim injunction if it
is otherwise entitled to the same.
SUPPRESSION/CONCEALMENT OF MATERIAL FACTS
47. It is urged by the learned senior counsel for the Defendants that the
Plaintiff‟s averment about its knowledge of Defendant no.1 carrying
on business in the name of ZARA TAPAS BAR only on the basis of
the letter dated 25.02.2011 is contradictory to the averments made in
the Affidavit dated 14.01.2008 of Mr. Antonio Abril Abadin. It is
urged that part disclosure of the proceedings without relevant details
tantamounts to material suppression and concealment disentitling the
Plaintiff to the discretionary relief of interim or permanent injunction.
48. I have already discussed this argument while dealing with the question
of delay and acquiescence. It may be noted that a party seeking ex-
parte ad interim injunction is expected to make full disclosure but
when the matter is heard on merits, both the parties are before the
Court. The mis-statement of some facts unless it is mala fide will not
disentitle the Plaintiff to the relief of injunction.
49. It is true that statement with regard to the Defendants‟ activities
coming to the notice of the Plaintiff for the first time in 2011 is not
correct but at the same time, there is a mention of an Affidavit being
filed in opposition to the Defendant‟s application for registration in the
year 2008.
50. I have already held above that delay of a few years in filing the suit is
not very material in the circumstances of this case. I think that the
Plaintiff‟s statement that it came to know about the Defendants‟
activities sometime in the year 2011 cannot be said to be a statement
to non-suit the Plaintiff. I have considered the judgments in S.P.
Chengalvaraya Naidu v. Jagannath (Dead) by LRs. and Ors., (1994) 1
SCC 1; Satish Khosla v. M/s. Eli Lilly Ranbaxy Ltd. & Anr., 71 (1998)
DLT 1; Kishore Samrite v. State of U.P. and Ors., (2013) 2 SCC 398;
The Gillette Company and Ors. v. A.K. Stationery and Ors., Suit
No.2732 of 1999 decided on 03.08.2001; Warner Bros. Entertainment
Inc. v. Harinder Kohli & Ors. (DHC), CS (OS) No. 1607 of 2008
decided on 22.09.2008; Smithkline Beecham Consumer Healthcare
GMBH and Ors. v. GD Rathore and Ors., (2002) 25 PTC 243 (Delhi);
Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd. (2006) 32 PTC 307
(Del.); Rubaljit Singh v. M/s. Kanz Overseas and Anr. (DHC), CS
(OS) No. 213/2009 decided on 20.11.2009; Eveready Industries India
Ltd. v. Sanjay Chadha & Anr., (2011) 45 PTC 22 (Del.) and Toyota
Jidosha Kabushiki Kaisha v. Deepak Mangal & Ors. (DHC), CS (OS)
No. 2490/2009 decided on 19.03.2010 relied upon by the learned
senior counsel for the Defendants. The same are not applicable to the
facts of the instant case.
WHETHER ZARA HAS TRANS-BORDER REPUTATION
51. On the basis of the averments made in the plaint and the documents
placed on record, it is prima facie established that the mark ZARA
was adopted by the Plaintiff in the year 1975; that the domain name
zara.com was registered by the Plaintiff in the year 1997; that the
Plaintiff had opened stores in over 44 countries by the year 2003 and
had annual turnover of 3 billion Euros by the year 2003 when the
Defendants claimed to have opened a Bar and Restaurant under the
name of ZARA TAPAS BAR. It is also established that by the year
2013, the Plaintiff had 1763 ZARA stores, 171 ZARA KIDS stores
and 364 ZARA HOME STORES. It is also established that the
Plaintiff got registered the mark ZARA (word) on proposed to be used
basis in India in Class 25 in the year 1993.
52. It is urged by the learned senior counsel for the Defendants that since
the Defendants have prima facie established opening of Tapas Bar and
Restaurant with the name of ZARA TAPAS BAR in the year 2003,
Plaintiff‟s ZARA‟s reputation and goodwill on the date of filing of the
suit is irrelevant and its trans-border reputation as on the date of
adoption of the name ZARA TAPAS BAR by the Defendants in the
year 2003 will be required to be proved by Plaintiff.
53. In Smithkline Beecham Consumer Healthcare GMBH & Ors. v. GD
Rathore & Ors., (2002) 25 PTC 243 (Delhi) which related to the
infringement and passing off of design of toothbrushes, it was held
that in the absence of any goodwill or reputation, it cannot be
presumed that there is any cross-border reputation. It was held that
mere publication in dental journals is not efficient evidence of
reputation as such journals only provide information to a specific class
of people.
54. Similarly, in Sakalain Meghjee v. B.M. House (India) Ltd., (2002) 24
PTC 207 (Delhi), it was held by the Delhi High Court that in the
absence of any reliable and credible evidence, it cannot be said that
the Plaintiff has acquired any trans-border goodwill or reputation in
India.
55. Also, in Hearst Communications, Inc. v. Dinesh Varyani & Anr., ILR
(2009) 4 Del. 799, the Delhi High Court held that injunction should be
granted only when reputation is established in India or there is
evidence of trans-border reputation. To the same effect are the
observations of the Delhi High Court in Allianz Aktiengesells Chaft
Holding v. Allianz Capital and Management Services Limited, (2002)
24PTC 177 (Del.).
56. The Plaintiff has placed on record host of documents to show that
ZARA was a well known mark and had trans-border reputation. I shall
confine myself to such documents upto the year 2003 and prior thereto
as reputation and goodwill post 2003 may not be of much
consequence as the Defendants are prima facie shown to have started
their ZARA TAPAS BAR AND RESTAURANT in the year 2003.
57. There is an article „ZARA, a Spanish Success Story‟ of June 15, 2001
by CNN.com Europe/Business. It states that ZARA is possibly the
most innovative and devastating retailer in the world. It talks about
ZARA‟s least expenses on advertisement. It talks about the shoppers‟
addiction to ZARA brand being aware of the new stocks coming up
every week and the customers also having direct input into what the
shops sell as their feedback is sent back to the designers too. The
portion regarding the Plaintiff‟s being free from advertisements reads
as:-
"No advertising
The other trend-bucking aspect of the company‟s
business model is its approach to advertising.
Fashion retails spend on average 3.5% of revenue on
advertising their products, while Zara‟s parent company
Inditex spends just 0.3%.
Have you ever seen a Zara commercial on a billboard or
on TV?
The company‟s founder, Amancio Ortega, believes
advertising is a pointless distraction. Once when a
famous Spanish actress asked to do a photo shoot in one
of his shops, Ortega said no and scolded the newly
appointed executive who suggested it would be good for
the firm. "You haven‟t got the idea yet have you," he
said.
The company believes that its shop windows, the contents
of which are also decided in La Coruna, are all the
advertising it needs."
58. There is an article „The reign of Spain‟ dated 28.10.2002 in The
Guardian on the site www.theguardian.com. The article says, "Zara
doesn‟t advertise its clothes - it doesn‟t have to. Word of mouth alone
has made its Spanish owner a billionaire."
59. The article highlights that although the people are not aware of the
ZARA headquarters but everyone knows that brand. It further
highlighted that in the year 2002, ZARA had reached 44th country, i.e.
Russia. Two of its paragraphs read as :-
"Many in the industry couldn‟t tell you where Zara has
its headquarters (Arteixo-La Coruna is hardly fashion
central, after all), though everyone knows the brand.
There are no press offices outside Spain, and even the
communications department in Arteixo does anything
but. The company doesn‟t lend clothing samples for
editorial fashion shoots. It does no advertising
(marketing accounts for 0.4% to Zara‟s total spend).
Yesterday, Zara HQ revealed that it had secured its first
premises in Russia - the 44th country to get a taste of its
cut-price chic. Two weeks ago, Zara‟s largest European
store - a 3,000 sq m temple to consumption - opened on
the corner of Oxford Street and Bond Street, its location
rather conveniently summing up Zara‟s knack for
offering high-style clothes at high-street prices. In
typical Ortega fashion, until it opened on Friday
morning, the building was completely concealed beneath
hoardings with no indication of who was about to launch
themselves into the Oxford Street melee. Rumours
abounded. By the time the store was ready, the Zara
faithful had spread the word."
60. Then, there are two articles by an Indian Devangshu Dutta by the
name „Retail @ the Speed of Fashion‟ on the site
www.thirdeyesight.in in the years 2002 and 2003. They talk about
ZARA keeping up with fashion, its profit, control and production.
Four critical information-related areas which the author concluded
were given in a chart as under:-
"Close watch on trends and buying behaviour Quick decisions
Inventory Control Distribution."
61. The article gave a timeline since 1975 when ZARA began its activity
with the opening of a store in A Coruna (Spain) to 2001, when Inditex
went public and was listed on the Spanish Stock market. The article
gave the timeline as under:-
"Timeline
ZARA begins its activity with the opening in A Coruna
(Spain) of its first store, although the origins of the
Group date back to 1963, the year in which Amancio
Ortega Gaona, Chairman and founder, begins his
business activity.
GOASM is founded by the owner of the ZARA stores and
continues with the opening of the first stores in Spain.
The creation of INDITEX as head of the corporate group.
The opening of the first ZARA store outside Spain occurs
in December, 1988 in Oporto (Portugal).
1989-1990
The United States and France are the next markets in
which the Group begins its activity with the opening of
outlets in New York (1989) and Paris (1990).
The birth of the PULL&BEAR chain and the purchase of
65 per cent of the MASSIMO DUTTI Group.
1992-1994
INDTEX continues to open new international markets:
Mexico in 1992, Greece in 1993 and Belgium and
Sweden in 1994.
INDITEX acquires the whole of the share capital of
MASSIMO DUTTI. This year also sees the opening of the
first store of the Group in Malta and in the following
year in Cyprus.
Norway and Israel join the list of countries in which
INDITEX is present.
The BERSHKA chain, targeting the younger female
market, commences its activity in a year which also sees
the opening of stores in new countries; Argentina, Japan,
United Kingdom, Venezuela, Lebanon, United Arab
Emirates, Kuwait and Turkey.
The acquisition of STRADIVARIUS makes it the fifth
chain of the Group and stores are also opened in new
countries; the Netherlands, Germany, Poland, Saudi
Arabia, Bahrain, Canada, Brazil, Chile and Uruguay.
The opening of stores in four new countries takes place
in 2000: Austria, Denmark, Qatar and Andorra.
INDITEX installs its headquarters in a new building
located in Arteixo (A Coruna, Spain).
On 23rd May 2001 Inditex goes public and is listed on the
Spanish Stock Market. During this year the group begins
its activity in the following markets: Puerto Rico, Jordan,
Ireland, Iceland, Luxemburg, Czech Republic and Italy.
Source: Company‟s Website."
62. In N.R. Dongre & Ors. v. Whirlpool Corp. & Anr., AIR 1995 Delhi
300, a Division Bench of this Court held that awareness of a
trademark in respect of goods of a trader is not necessarily restricted
only to the people of the country where such goods are freely available
but the knowledge and awareness reaches even shores of those
countries where the goods are not available. In para 15, the Division
Bench held as under:-
"15. The knowledge and awareness of a trade mark in
respect of the goods of a trader is not necessarily
restricted only to the people of the country where such
goods are freely available but the knowledge. &
awareness of the same reaches even the shores of those
countries where the goods have not been marketed. When
a product is launched and hits the market in one country,
the cognizance of the same is also taken by the people in
other countries almost at the same time by getting
acquainted with it through advertisements in newspapers,
magazines, television, video films, cinema etc. even
though there may not be availability of the product in
those countries because of import restrictions or other
factors. In today's world it cannot be said that a product
and the trade mark under which it is sold abroad, does
not have a reputation or goodwill in countries where it is
not available. The knowledge and awareness of it and its
critical evaluation & appraisal travels beyond the
confines of the, geographical area in which it is sold.
This has been made possible by development of
communication systems which transmit & disseminate
the information as soon as it is sent or beamed from one
place to another. Satellite Television is a major
contributor of the information explosion. Dissemination
of knowledge of a trade mark in respect of a product
through advertisement in media amounts to use of the
trade mark whether or not the advertisement is coupled
with the actual existence of the product in the market."
63. In Milmet Oftho Industries & Ors. v. Allergan Inc., (2004) 12 SCC
624, it was held as under:-
8...........It must also be remembered that nowadays
goods are widely advertised in newspapers, periodicals,
magazines and other media which is available in the
country. This results in a product acquiring a worldwide
reputation. Thus, if a mark in respect of a drug is
associated with the respondents worldwide it would lead
to an anomalous situation if an identical mark in respect
of a similar drug is allowed to be sold in India. However,
one note of caution must be expressed. Multinational
corporations, which have no intention of coming to India
or introducing their product in India should not be
allowed to throttle an Indian company by not permitting
it to sell a product in India, if the Indian company has
genuinely adopted the mark and developed the product
and is first in the market. Thus the ultimate test should
be, who is first in the market.
9. In the present case, the marks are the same. They
are in respect of pharmaceutical products. The mere fact
that the respondents have not been using the mark in
India would be irrelevant if they were first in the world
market. The Division Bench had relied upon material
which prima facie shows that the Respondents' product
was advertised before the Appellants entered the field.
On the basis of that material the Division Bench has
concluded that the Respondents were first to adopt the
mark. If that be so, then no fault can be found with the
conclusion drawn by the Division Bench."
64. In the instant case, although there was no ZARA store in India opened
prior to 2010 but the mark ZARA (word) was registered in Class 25
since 1993. The Plaintiff has placed on record a number of documents
to show that it was getting the fabrication done from various exporters
in India. Some of the documents, particularly at pages 219, 259, 260,
262, 263 and 266 of the Plaintiff Documents reveal that the clothes
with mark ZARA were being got fabricated in India by Inditex.
65. We are living in the 21st century. At least since the beginning of this
century, there is widespread dissemination of information through the
internet and television. ZARA was catering to the middle class and
higher middle class. Consumers in India cannot be unaware of the
Plaintiff‟s company and its product.
66. To sum up, the Defendants‟ adoption of the mark ZARA TAPAS
BAR and ZARA, the Restaurant and Bar has been found to be adopted
dishonestly and fraudulently. The explanation as to the manner of
adoption of the name and that it has a dictionary meaning is found to
be not convincing. The mark ZARA (word) is being used prominently
with very small words "TAPAS BAR" which indicates the
Defendants‟ intention to ride on the Plaintiff‟s reputation as ZARA
was a well known mark even in the year 2003 having its presence in
over 44 countries and annual turnover of 3 million Euros. Thus, the
Plaintiff, in my considered opinion, has a good prima facie case
entitling it to protection of the mark even in relation to dissimilar
goods and services. The balance of convenience also lies in favour of
the Plaintiff in view of the fact that the mark was not only well known
worldwide but was also registered in India in Class 25 in the year
1993.
67. All the more, the Plaintiff filed an Affidavit in opposition to the
Defendants‟ application for registration immediately on publication of
the application. I am satisfied that the Plaintiff shall suffer irreparable
loss and injury in case its mark is not protected and the Defendants are
permitted to carry on their business with the name ZARA TAPAS
BAR or ZARA, the Tapas Bar and Restaurant even in relation to the
hotel and hospitality business. Accordingly, I grant ad interim
injunction in terms of prayer clauses (a) to (d) of the application for
injunction, which have been earlier extracted in para 9 of this order.
68. The application is allowed in above terms.
CS (OS) No. 1472/ 2013
69. List before the Joint Registrar for admission/denial of documents on
6th July, 2015.
(G.P. MITTAL)
JUDGE
MAY 19, 2015
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