News & Insights

In the world of intellectual property, trade mark opposition proceedings are becoming more common than ever before, and a small boutique, House of Zana, based in Darlington in England was recently subject to opposition proceedings against the international leading high street fashion retailer, Zara.

Zara claimed that House of Zana is conceptually similar to Zara, and that there was a high degree of visual and oral similarities between the two brands which would ultimately lead to customer confusion. The owner of House of Zana however argued that there was “no likelihood” of confusing the brands, meaning there was no infringement. After one year of submitting evidence, the tribunal ruled in favour of House of Zana that there was not any “mental link” made by customers between House of Zana and Zara and would be “too insubstantial and fleeting” to result in an “exploitation” of Zara’s reputation. House of Zana therefore continues to operate as a small boutique store as before.

House of Zana was able to successfully defend Zara’s claim by showing how its brand is not visually and orally similar to Zara and that there is no likelihood of confusion. Whilst we do not ever want you to find yourself in a similar situation; being able to distinguish your brand from another is vital for a successful trade mark application and to successfully defend any claims like these.

We have recently seen speculation and controversy at the idea that big businesses are taking on smaller businesses in order to dominate the marketplace. In 2020, comedian Joe Lycett, made this point and as part of a swipe at the fashion brand, Hugo Boss, changed his name by deed poll to “Hugo Boss” after discovering they had taken strong legal action against a small brewery business in Swansea called Boss Brewing forcing them to rebrand, as well as charities that used the word “Boss” in their name. Whatever the intentions of these leading successful brands, the risk of being pursued by an existing company for the use of the same or a similar business name or logo is something small businesses, in particular, should be mindful of when starting their business and creating their brand (or developing new brands, such as the names of products or product lines).

What can you do to ensure your brand is unique and avoids someone coming knocking on your door?

It is becoming increasing difficult to create a brand that is truly unique and bears no resemblance at all to the millions of brands that are already in existence, but you could reduce the risk of being approached by an existing brand by taking certain steps to attempt to get it right from the very beginning and making sure your intended brand is available before you even start to invest money in marketing it. Laceys can help you to assess whether you have come up with the right type of intellectual property, adding value to the business and conduct searches which can vastly reduce the risk of that dreaded solicitor’s letter falling on your door.

No matter how big or small your business is, if you do find yourself in this position, taking the steps above will help you avoid a claim – even if you are able to defend it like House of Zana was able to against Zara there are still costs involved in dealing with these claims. If you do need any legal advice, and if you are in this position, we strongly recommend you seek legal advice, Laceys have the specialism and expertise to guide you through the process.

Contact us

If you would like to discuss how to protect your brand further or require additional information, please contact one of our Intellectual Property experts.

This article is for general information only and does not constitute legal or professional advice. Please note that the law may have changed since this article was published.