Chanel is not the only brand going after similarly named (and seemingly harmless) businesses. Zara has threatened to sue the owner of a small Barnard Castle, UK-based business named Zara Countrywear. According to Donna Dobson, who opened her shop in 2007, naming it after her newborn daughter, the Spanish fast fashion giant has threatened to file a trademark-based lawsuit against her if she does not take drastic measures to rebrand her business immediately.
Dobson, whose business is located roughly four hours north of London, where Zara maintains a number of stores, has seemingly taken steps to avoid the threatened legal ramifications. After receiving upwards of 40 pages of legal documents from Zara demanding she change the name, take down her website and Facebook page and destroy everything bearing the name, from bags to business cards, Dobson has begun rebranding her business as Fox & Field, complete with new signage and branding at her brick and mortar location and online.
If Dobson didn’t take action, Zara’s counsel threatened to have a court disgorge her of a significant portion of her profits from the store. Moreover, Zara’s counsel subsequently sent Dobson a bill for £800 (nearly $1200) to cover its legal costs in connection with the matter thus far.
Speaking to the Daily Mail, Dobson said: “As distraught and upset as I was about the injustice of it, I had no choice. I’m a small, sole trader and if I tried to fight the case and didn’t win I could have lost not only my business but also my farm.” She continued on to state: “After getting over the shock, I’m being positive now and see it as an opportunity. Friends and customers have been really supportive and everyone likes the new Fox & Field brand. Although I’ve rarely had anyone confuse us with Zara, I hope we might actually attract some new customers who could have been put off thinking we were connected with them. I’ve heard of cases before where these big multinational corporates bully small businesses into submission and giving up everything they’ve worked for. I still don’t understand why corporate giants can be allowed to stamp on the kind of local enterprises that this country was built on. I would like to warn anyone else thinking of naming a business. For us, we will not just carry on under a new name but we’ll become even better.”
This matter comes on the heels of Chanel’s 2014 lawsuit against Chanel Jones, the owner of a Merrillville, Indiana-based spa and beauty salon, called Chanel’s Salon. According to the Paris-based design house’s complaint, Jones’ salon infringed at least nine of its federally registered trademarks and was benefiting from the established reputation of the fashion company’s name, which is derived from the founding designer’s name, Gabrielle Bonheur Chanel.
And Chanel actually prevailed in its suit. Pursuant to a judgment from the U.S. District Court for the Northern District of Indiana, Jones is prohibited from using CHANEL in the name of her salon or “otherwise to identify any businesses, services or products and to refrain from all use of CHANEL in the promotion of her business, including as any part of an Internet keyword or search term, meta tag, keyword or source code.” While Jones claimed in her answer that she “in no way” named the salon CHANEL to gain popularity in connection with the appeal of the famed design house, she has agreed to change the name of the salon.