By Zainal Amshah

In a trademark opposition case in Malaysia that mirrored the classic David vs. Goliath narrative, Aset Juara Holdings Sdn Bhd (the Applicant), championing the mark “ZAYA”, faced off against the industry giant Industria De Diseno Textil, S.A. (Inditex, S.A.) and their iconic “ZARA” brand (the Opponent). The decision, delivered by the Learned Assistant Registrar of Trademarks, unfolded a compelling legal saga revolving around the clash of these distinctive marks in the realm of Class 25 goods.

The Legal Battleground

The crux of the opposition centered on the distinctiveness of the marks, echoing the sentiments of the legal precedent set in Tan Hap @ Tan Hwa Ho & Anor v. Liang Ann Hock (1989) 2 CLJ 552. The Assistant Registrar emphasized the need to view trademarks holistically, highlighting the totality of impression to discern any likelihood of confusion or deception, a principle echoed in Re William Bailey’s Application (1935) 52 RPC 136.

Drawing inspiration from the case law of McCurry Restaurant (KL) Sdn Bhd v McDonald’s Corporation [2009] 3 CLJ 540, the decision underscored the discerning nature of modern consumers in the Class 25 industry particularly in relation to clothing, footwear and headgear. Consumers meticulously evaluate factors like branding, price, and quality, showcasing their ability to differentiate between marks in a competitive marketplace. This modern perspective was crucial in assessing the likelihood of confusion between “ZAYA” and “ZARA”. Here the Assistant Registrar observed and concluded that because the goods sold by the Opponent bearing the “ZARA” marks were expensive and sold in high end shopping malls and retail outlets as compared to the Applicant’s goods, consumers of the Opponent’s goods were unlikely to be deceived by the goods bearing the Applicant’s mark.

Proprietorship and Prior Usage

The narrative of proprietorship unfolded against the backdrop of Rysta Ltd’s Application (1943) 60 RPC 87, emphasizing the significance of authorship or prior usage in establishing ownership rights. The evidence presented by the Applicant demonstrated genuine use and application for registration, solidifying their claim as the rightful proprietor of the mark “ZAYA” in Malaysia for Class 25 goods. This aspect was pivotal in strengthening ZAYA’s position against the opposition.

The Opponent’s Claims and Evidence

The battle also touched upon the Opponent’s claim of a well-known mark under Section 14(1)(d) and/or (e) and Section 70B of the Trade Marks Act 1976, invoking the criteria outlined in Regulation 13B of the Trademarks Regulations 1997. However, the evidence fell short of meeting the stringent requirements to declare the Opponent’s mark as well-known in Malaysia, as per the case law standards. The decision noted that while “ZARA” is globally recognized, the local evidence was insufficient to conclusively establish its well-known status under the Malaysian law.

The Decision

In this tale of trademark warfare, the underdog “ZAYA” mark emerged victorious, showcasing resilience and distinctiveness in the face of the industry giant “ZARA”. Through a meticulous analysis of legal principles and case law, the decision illuminated the complexities of trademark disputes and the pivotal role of distinctiveness in shaping the outcome of such battles.

The Assistant Registrar’s decision emphasized that the overall impression created by “ZAYA” was sufficiently distinct from “ZARA”, considering the visual, phonetic, and conceptual differences between the marks. This holistic approach, along with the modern understanding of consumer behavior, played a critical role in determining the lack of confusion between the two marks.

Implications for the Future

The decision issued by the Assistant Registrar was made under the (now repealed) Trade Marks Act 1976 as the Opposition was filed before the new Trademarks Act 2019, came into force. Nevertheless, the legal principles applied by the Assistant Registrar and the factors taken into account in the assessment of the evidence tendered by both parties are still relevant under the new law. By emphasizing the importance of distinctiveness, holistic assessment of trademarks, and the discerning nature of modern consumers, the decision sets a precedent for future trademark disputes. Brands will need to focus on establishing unique and distinguishable marks to navigate the competitive marketplace successfully.

The case serves as a reminder of the significance of brand identity and the legal principles that govern the protection of intellectual property in the ever-evolving world of commerce. It reinforces the idea that even in a marketplace dominated by giants, there is room for new and innovative brands to carve out their own space, provided they can demonstrate distinctiveness and genuine use.

Conclusion

The ZAYA vs. ZARA case stands as a testament to the dynamic nature of trademark law and the ongoing battle between established brands and new entrants. It underscores the necessity for brands to maintain a unique identity and the critical role of legal frameworks in ensuring fair competition. As the marketplace continues to evolve, so too will the strategies and legal arguments employed in the protection of intellectual property, shaping the future of branding and consumer choice.

N.B. The Applicant in this opposition case was represented by KASS International and we are proud in successfully defending the mark.

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