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Choosing the right brand name is no easy feat. After all, it takes pride of place on the storefront above the door, is on all marketing collateral and is intrinsically tied to a brand’s identity.

So what happens when a name is challenged with legal action?

 

The background

Darlington businesswoman Amber Kotrri recently found herself in the middle of a legal battle after the trademark application for her clothing brand, House of Zana, was challenged by global fashion giant ZARA.

Representatives for ZARA argued that Kotrri’s business ran the risk that “consumers will misread, mishear, mispronounce and/or otherwise perceive House of Zana as ZARA”.

They also claimed that the name “dilutes the distinctiveness and reputation of the ZARA brand”, despite Kotrri – who represented herself at the hearing – maintaining that her business name and logo bore no similarity to that of the high street stalwart.

ZARA asked that House of Zana – which specialises in handmade kimonos – change its name and remove all branding due to the similarities in the two names’ appearance and sounds.

However, Kotrri argued that House of Zana has made an important impact in the local community and that the name bore important significance as Zana means “fairy” in Albania, where her husband is from and the business was born.

 

The verdict

One year on from when the legal action began, a tribunal judge, Judge Matthew Williams ruled that House of Zana can keep its name.

Judge Matthews stated that differences between the two are “sufficient to rule out the likelihood of direct confusion on the part of the average consumer” and that he found “no cynical motive in the use of the name.”

He added: “Even for those who, based on their perception of the similar component, call to mind the word ZARA, I am not satisfied that the mental link would be more than fleeting.”

 

What do our lawyers say?

Hannah Flowers, a solicitor in our commercial team, has dealt with an extensive number of trademark filings and oppositions in her role at Mincoffs.

“It can often be difficult coming up with a new and original name for your business that differs to what is already out there,” said Hannah.

“As a result, we would always recommend undertaking trademark clearance searches ahead of filing any trademark applications to gauge an understanding of what is already being used out there on the market.

“The results of a trademark clearance search can help you to decide whether to apply to trademark the original mark you had in mind or whether the risk of opposition to that idea is too high and you should come up with something different.

“During the trademark application procedure, the UK Intellectual Property Office will always forewarn proprietors of earlier registered trademarks when they are about to publicise a new trademark application which they believe is similar or identical to the earlier registered mark.

“If the proprietor of a registered trademark application is concerned by the application they can oppose its registration.

“Opposition proceedings can often be lengthy and expensive and can be frustrating for a trademark applicant.

“In some cases, trademark applications can be opposed even in circumstances where the similarities between the earlier mark and the later filed application are tenuous.

“It is therefore worth undertaking trademark clearance searches ahead of filing trademark applications and assessing the level of risk of opposition to the mark before filing the application.

“Our team is experienced in helping business owners to obtain trademark registrations in the UK and overseas and conducting those all-important pre-application trademark clearance searches.

“In the unfortunate event that an application is opposed, we can also help our clients to defend their mark and explore other options with the opponent such as co-existence.”

 

For advice on trademark searches, applications, enforcement or defense, contact partner and Head of Commercial, Antony Hall on ahall@mincoffs.co.uk

 

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