Delhi High Court: While deciding an appeal under Section 91, Trade Marks Act, 1999 against the Registrar of Trade Marks’ order rejecting the opposition to the registration of the trade mark “ZORA”, a Single Judge Bench of Jyoti Singh, J., held that Section 11(2) does not require an earlier trade mark to be formally declared a “well-known trade mark” before its proprietor can oppose registration of a similar or identical mark. The Court held that the Registrar had erred in dissecting the rival marks “ZARA” and “ZORA” instead of comparing them as a whole, contrary to the settled anti-dissection principle, and further failed to examine whether “ZARA” was entitled to protection as a well-known trade mark on the touchstone of Sections 2(1)(zg), 11(6) and (7) of the Act. Holding that “ZORA” was deceptively similar to “ZARA”, and that its adoption would take unfair advantage of and be detrimental to the distinctive character and repute of the earlier mark, the Court allowed the appeal, set aside the impugned order, cancelled the registration of “ZORA” in Class 24, and directed the Registrar to remove the mark from the Register of Trade Marks within 2 months.
Background
The appeal was filed under Section 91, Trade Marks Act, 1999 against the order dated 8 February 2024 passed by the Registrar of Trade Marks rejecting the appellant’s opposition to the registration of the trade mark “ZORA” in Class 24. The appellant, a Spanish multinational company and proprietor of the globally renowned “ZARA” trade mark, contended that it has used the mark since 1975 and has built an extensive international and Indian reputation through its retail business, including operations in India since the late 1980s and physical stores from 2010 onwards. The appellant further relied on its numerous trade mark registrations across various classes, including Class 24, and on the Delhi High Court’s earlier recognition of ZARA as a well-known trade mark under Section 2(1)(zg), Trade Marks Act, 1999.
The dispute arose after Respondent 2 applied on 30 October 2019 for registration of the mark “ZORA” in Class 24 for fabrics and allied textile goods, claiming use since 3 June 2016. Upon publication of the application in the Trade Marks Journal, the appellant opposed the registration on the ground that ZORA was deceptively similar to its well-known ZARA mark and was likely to cause confusion and dilution of its trade mark rights. Although both parties led evidence and advanced written submissions, the Registrar dismissed the opposition and directed registration of the ZORA mark, following which a registration certificate was issued to Respondent 2 on 9 February 2024. Aggrieved by the Registrar’s decision, the appellant approached the Court by way of the present appeal.
Analysis
The Court held that the Registrar had adopted an erroneous approach in comparing the rival marks by dissecting them into their constituent parts, contrary to the settled anti-dissection principle that competing marks must be compared as a whole to assess their overall visual, phonetic and structural similarity. The Court observed that the Registrar’s finding that ZARA and ZORA were dissimilar merely because of the difference in the vowels “A” and “O” could not be sustained in law.
It further clarified that Section 11(2), Trade Marks Act, 1999 does not require an earlier trade mark to be formally declared a “well-known trade mark” by the Registrar or a Court; it is sufficient if the proprietor establishes, on the touchstone of Sections 2(1)(zg) and 11(6), that the mark is entitled to protection as a well-known trade mark. The Registrar, therefore, erred in failing to examine the appellant’s plea regarding the well-known status of ZARA and its claim of dilution under Section 11(2).
Accordingly, the Court set aside the impugned order dated 8 February 2024 and remanded the matter to the Registrar of Trade Marks for a fresh consideration. The Registrar was directed to reconsider the opposition by applying the correct legal principles governing comparison of trade marks, examining the appellant’s claim that ZARA is entitled to protection as a well-known trade mark under Section 11(2), and thereafter determine afresh whether registration of ZORA is liable to be refused. The Court clarified that it had expressed no final opinion on the merits of the controversy and left all contentions of the parties open for consideration by the Registrar.
Allowing the appeal, the Delhi High Court held that Section 11(2), Trade Marks Act, 1999 does not mandate a prior declaration of an earlier trade mark as a “well-known trade mark” before its proprietor can oppose registration of a similar or identical mark. The Court observed that the legislature has consciously used the expression “mark is a well-known trade mark in India” and not “declared well-known trade mark”. Therefore, the Registrar is required to determine, on the basis of the factors under Sections 11(6) and (7) read with Section 2(1)(zg), whether the earlier mark has acquired such immense reputation as to be entitled to protection as a well-known trade mark. On the evidence placed on record, including ZARA’s extensive global and Indian presence, substantial sales, promotion, registrations and prior judicial recognition, the Court held that ZARA satisfied the statutory requirements of a well-known trade mark and was entitled to protection under Section 11(2).
The Court further held that the Registrar had applied an incorrect test by dissecting the rival marks into their constituent parts instead of comparing them as a whole, contrary to the settled anti-dissection principle. On an overall visual, phonetic and structural assessment, ZARA and ZORA were found to be deceptively similar, the mere substitution of the vowel “A” with “O” being insufficient to distinguish the marks in the perception of a person of average intelligence and imperfect recollection. The Court reiterated that Section 11(2) is not confusion-centric but protects the reputation and distinctiveness of a well-known mark against dilution, even in relation to dissimilar goods. Consequently, the Registrar erred in insisting on evidence of actual confusion and in treating the alleged dissimilarity of goods as determinative.
Decision
The Court found that the adoption of ZORA was without due cause, would take unfair advantage of and be detrimental to the distinctive character and repute of ZARA, and therefore set aside the impugned order, cancelled the registration of the mark ZORA (Registration No. 4310686 in Class 24) and directed the Registrar to remove the mark from the Register of Trade Marks within 2 months.
Also Read: Delhi HC holds “GLASS SKIN” descriptive; cancels trade mark registration
Also Read: Delhi HC on Prestige Ocean Pearl trade mark dispute
[Industria De Diseno Textil, S.A. v. Registrar of Trade Marks, C.A.(COMM.IPD-TM) 52 of 2024, decided on 6-7-2026]
Advocates who appeared in this case:
For the Appellant: Sushant Singh, Sourav Pattanaik and Piyush Kumar, Advocates
For the Respondent: Arun Aggarwal and Pawan Dubey, Advocates
Buy Trade Marks Act, 1999 HERE
