Zara is in the news after filing a notice of opposition against a UK trade mark application for ‘House of Zana’. But what is a notice of opposition and why would Zara file one?
Let’s start by considering the trade mark application process first. When you submit an application, it gets ‘examined’ by a trade mark examiner. Their job is to consider whether your application is registrable and they might refuse it if they think, for example, that it’s too generic or possibly too descriptive. They’ll also have a look for similar trade marks and, in the UK at least, they’ll flag these similar marks with the applicant and if the applicant decides to proceed, they’ll notify the owners of those similar marks that a similar trade mark is being sought. That brings us on to the publication period, in the UK this is a 2-month period (extendable by 1 month) during which third parties (like Zara) have an opportunity file a formal opposition to a trade mark application.
Opposition grounds can vary but by far the most common ground relates a likelihood of confusion. Essentially the owner of an earlier trade mark will be claiming that (1) their mark is similar to the application, (2) it covers goods/services which are similar the goods/services covered by the application, and (3) there exists a likelihood of confusion (which includes a likelihood of association).
Similarity in respect of trade marks is assessed by looking at the visual, oral and conceptual similarities. Zara, for example, claims that its earlier rights are conceptually identical to the House of Zana application. However, it would not be able to say the same in respect of the visual and oral assessment. Zara may however be pushing its confusion claim because the goods in issue (namely clothing in class 25) are identical to the goods covered by its earlier rights.
Time will tell but it would be my hope that this trade mark opposition ends in a similar way to the majority of oppositions, namely with some form of compromise, often formalised under a ‘co-existence agreement’. This is a form of settlement in which parties seek to establish rules for their future trade and marketing with a view to avoiding real-world confusion going forward. If this can be done, then there’s no reason why two brands can’t peacefully go about their business (in theory!).
In the meantime, if you’re thinking about making your own trade mark application or seeking to oppose a third party’s, why not book a free consultation meeting with Briffa and find out how we can help.
Written by Will Miles – Partner
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