The Delhi High Court has set aside the registration of the trademark "ZORA", holding that it was deceptively similar to the globally recognized "ZARA" trademark. In a significant ruling on trademark protection, the Court clarified that an earlier trademark owner does not need a prior formal declaration as a "well-known trademark" to seek protection under Section 11(2) of the Trade Marks Act, 1999, if it can establish its reputation through evidence.
Background of the Case
Industria De Diseno Textil, S.A., the owner of the ZARA brand, challenged an order of the Registrar of Trade Marks that had rejected its opposition and allowed registration of the mark "ZORA" in Class 24 for fabrics.
The company argued that ZARA has enjoyed extensive international and Indian reputation for decades and that registration of ZORA would dilute the distinctive character of its well-known trademark. It also relied on its long-standing registrations in India and previous judicial recognition of ZARA's reputation.
On the other hand, the respondent maintained that ZORA was independently adopted, was visually and phonetically different from ZARA, and was used for a different line of products.
Court's Observations
Justice Jyoti Singh held that the Registrar had adopted an incorrect approach by splitting the competing marks into separate parts instead of comparing them as a whole.
The Court observed:
"The marks have to be considered as a whole."
Applying that principle, the Court found that ZARA and ZORA were visually, structurally and phonetically similar despite the change of a single vowel. It noted that an average consumer with imperfect recollection could associate the later mark with the earlier one.
The Court also rejected the argument that a trademark must first be formally declared a "well-known trademark" before its proprietor can invoke Section 11(2) of the Trade Marks Act.
According to the judgment, the statute only requires the earlier mark to be well known in fact, which can be established through evidence such as the duration of use, extent of promotion, market recognition, registrations and enforcement history.
After examining the material placed on record, the Court concluded that ZARA had acquired extensive reputation in India and internationally and was entitled to protection as a well-known trademark under the Act.
The Court further observed that the enquiry under Section 11(2) is not centred on proof of actual consumer confusion. Instead, the provision protects the reputation and distinctiveness of a well-known trademark from dilution and unfair advantage.
Decision
Allowing the appeal, the Delhi High Court quashed the Registrar's order dated 8 February 2024.
It cancelled the registration of the ZORA trademark in Class 24 and directed the Trade Marks Registry to remove the mark from the Register within two months to maintain the purity of the Register.
Case Details
Case Title: Industria De Diseno Textil, S.A. v. Registrar of Trade Marks & Anr.
Case Number: C.A.(COMM.IPD-TM) 52/2024
Judge: Justice Jyoti Singh
Decision Date: 6 July 2026
