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Zara loses its fight before European justice: it will not be able to use its brand to market food

The General Court of the European Union has endorsed the refusal of the European Union Intellectual Property Office (EUIPO), based in Alicante, to register the "ZARA" trademark, requested by the company Inditex, for several related products and services with food, catering and food sales.

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The General Court, based in Luxembourg, considers that the EUIPO did not commit any error in declaring that there was a likelihood of confusion between the opposing marks.

The case dates back to March 2010, when Inditex applied for the registration of the "ZARA" sign as a European trademark for the aforementioned products and services.

In September of that same year, the Italian company Ffauf Italia opposed the registration, due to the risk of confusion with the Italian brand and the international brand "LE DELIZIE ZARA", registered for fresh, dry, preserved, frozen and prepared pasta.

Inditex later requested that the effective use of those earlier marks be proven, which the Italian company did, after which the EUIPO partially upheld the opposition.

In 2015, both companies appealed to the EUIPO, not having been satisfied with the resolution.

Three years later, in 2018, the EU Intellectual Property Office dismissed the appeal of the Inditex group and annulled the resolution in the part related to catering services (food), self-service restaurants and cafeterias.

The Inditex Group appealed this new resolution of the EUIPO before the General Court. The General Court in May 2019 annulled the EUIPO decision, considering that it did not comply with the obligation to state reasons and remanded the matter to that office.

Partial annulment of the resolution

In 2020, the office partially upheld the appeal and declared that there was a likelihood of confusion between all the products designated by the brands of both companies, except in the case of fresh vegetables and fruit juices, which were different from the set of products designated by the earlier brands of the Italian company.

In this way, it partially annulled the previous resolution and authorized the registration of the Inditex Group brand for those products.

Dissatisfied with the result, the Inditex Group appealed again to the General Court, which issued a ruling corroborating the assessment of the European office and confirming that the different products and services designated by Inditex and the products protected by the previous Italian trademarks are identical or similar. .

It also considers that the conflicting trademarks (...) have a high degree of similarity and that the likelihood of confusion has been demonstrated.

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