Representing our client Inditex S.A. (“Inditex”), owner of the famous fashion brand “ZARA,” Lee International obtained a favorable decision in its invalidation action against the registered mark “THEZARA” for motel and hotel services.
Lee International filed an invalidation action against the registered mark “THEZARA” for “motel, hotel,” etc., on behalf of Inditex. The invalidation action argued that the mark “THEZARA” was filed in bad faith to take advantage of the fame of Inditex’s mark “ZARA,” which is well-known as a specific source indicator to the general public, both within and outside of Korea.
Courts in Korea typically consider both the similarity of the marks and the commercial/industry relationship between the compared goods/services as a major factor in determining whether a mark was filed in bad faith. Based on the foregoing, the Intellectual Property Trial and Appeal Board (IPTAB), the tribunal of first instance, ruled that the invalidation action against the registered mark “THEZARA” was without merit. This ruling was based on the fact that even though Inditex’s mark “ZARA” is well-known, the compared marks themselves are dissimilar and the goods/services associated with them are dissimilar. Therefore, the mark “THEZARA” would not cause confusion and it could not be deemed to be filed in bad faith.
Lee International filed an appeal of the IPTAB decision with the Korean Patent Court. In the appeal, we argued that registration of the mark “THEZARA” should be invalidated for a variety of reasons. These included: (1) the registrant was currently using the mark “THEZARA” by dividing the elements “THE” and “ZARA” with a space between the two words (THE ZARA); (2) globally-famous fashion houses have extended their business lines to include hotel and leisure services; (3) Inditex also has operated ZARA HOME stores in Korea to distribute bedding items and other interior decoration items under the “ZARA HOME” brand; and (4) the registrant is currently using the mark “THE ZARA” (with a space between the words) for bedding items at the hotel it is operating.
The Korean Patent Court agreed with Inditex’s position. It also observed that because the element “THE” is used as an article in the registered mark, the mark would primarily be perceived and pronounced using its major element “ZARA,” which is identical to Inditex’s mark “ZARA.” Consequently, the Korean Patent Court reversed the decision of the IPTAB and invalidated registration of the mark “THEZARA.” The Korean Supreme Court has affirmed the decision of the Patent Court..
This decision represents useful and authoritative precedent that even if goods and services associated with the compared marks are dissimilar, if there is evidence of an unfair purpose in registering the mark in light of all the facts and circumstances, the mark still can be deemed to have been registered in bad faith and invalidated.