Around the same time as when Zara had struck out against similarly named brand, Zara Countrywear, the Spanish fast fashion giant was embroiled in another trademark battle with New York-based brand, Terez, formerly known as Zara Terez (“ZT”). Launched in 2008 by childhood friends Zara Terez Tisch and Amanda Schabes, ZT was slapped with a trademark infringement lawsuit by Zara’s parent company, Inditex, in July 2015.
According to Inditex’s complaint, “ZT’s trademark is likely to create, and has created, confusion in the marketplace as to the affiliation between the parties and is likely to dilute, and has diluted, the Zara trademarks.” Inditex goes on to further allege that “ZT’s actions are causing irreparable harm by creating consumer confusion, trading on Zara’s fame and goodwill, and damaging and diluting the valuable trademark rights that Zara has spent decades developing and protecting.”
To bolster its argument, Inditex pointed to the fact that the U.S. Patent and Trademark Office previously refused to register ZT’s “Zara Terez” mark due to the likelihood that consumers would be confused as to the source of the ZT mark and whether it was connected to Inditex’s already-registered trademarks covering the Zara name. Moreover, it asserted that the existence of a disclaimer on the ZT website that stated that ZT “is in no way connected to or associated with Zara International Inc.” indicated that ZT had already encountered consumer confusion in connection with the Zara brand.
Although Inditex alleges that it contacted ZT on more than one occasion, objecting to its use of the Zara trademark and demanding that ZT discontinue its use of the word “Zara,” such attempts proved futile. Inditex noted in its complaint that ZT’s counsel responded to one such letter, asserting the brand’s right to use the word “Zara,” as it stems from one of the co-founders’ personal names. This prompted Zara to file suit, claiming that ZT’s use of its trademark was “causing irreparable harm by creating consumer confusion, trading on Zara's fame and goodwill, and damaging and diluting the valuable trademark rights that Zara has spent decades developing and protecting.”
While the parties ultimately settled the matter out of court, Inditex seems to have come out victorious in connection with the parties’ settlement agreement, as ZT officially began rebranding as Terez in March. Unsurprisingly, given that most settlement agreements are confidential in nature, a spokesman from Zara chose not to comment, and Terez noted that the lawsuit and settlement is not something the brand is “able to discuss.”
Zara is not the first brand to take an arguably aggressive stance regarding third party uses of its trademark. You may recall that Christian Dior threatened to file suit against Australian photographer, Sirous Dior (yes, that’s his name) if he kept using his name in connection with his business.
Notoriously protective Paris-based design house, Chanel, has periodically run full page “ads” in trade publication, Women’s Wear Daily, asking industry insiders to stop describing non-Chanel items as “Chanel-esque” or “Chanel-like” for trademark reasons. More recently, the Karl Lagerfeld-helmed brand filed and won a trademark action against Merrillville, Indiana salon owner, Chanel Jones. In its suit, Chanel alleged that Chanel’s Salon, a spa and beauty salon, infringes at least nine of its federally registered trademarks and is benefiting from the established reputation of the fashion company’s name, which is derived from the founding designer's name, Gabrielle Bonheur Chanel.
Ever the vigilant defender of its name, Chanel also initiated internal intellectual property proceedings with Instagram earlier this year against Chanel Bonin, a 20-year old woman from Vancouver, Canada, who has the “@Chanel” Instagram account. In this instance, Chanel did not have much luck. While it was able to get Instagram to remove images from Bonin’s account that included its logos, it was unable to claim the account for itself.