Risk of Confusion Exists Between ZARA and ZHARA

On February 13, 2024, the Industrial Intellectual Property Appeal Board overturned the decision of the Icelandic Intellectual Property Office (ISIPO) in opposition case No. 3/2021, as detailed in case No. 5/2021.

The owner of the ZARA trademark (word and figurative mark) No. V0037264 had previously contested the registration of the ZHARA trademark (also a word and figurative mark), with the international registration No. 1406893. The ISIPO had initially found no risk of confusion between the two trademarks, citing their distinct overall appearances and limited similarity in services offered.

However, the Appeal Board's review, focusing on the potential for confusion, noted that the ZARA trademark, despite being a minimally stylized word mark, had been registered domestically for nearly 24 years. The pronounced similarity between ZARA and ZHARA, coupled with demonstrated extensive use of the ZARA mark in Iceland, established its recognition as well-known according to paragraph 2 of article 4 of the Trademark Act No. 45/1997. Consequently, the ZARA mark was deemed to warrant broader protection beyond its registered goods and services, leading the Board to determine that the average consumer could believe both marks to share the same commercial origin. As a result, the registration of the ZHARA mark is to be invalidated.

The full decision is available here (in Icelandic)