“SARACARES” and “ZARA” trademarks are similar due to their similarity in the initial part

The trademark “SARACARES” and the “ZARA” series trademarks constitute similar trademarks due to similarity between their initial foreign-language portions

The plaintiff applied for registration of their trademark “SARACARES”, and the Intervener raised an opposition to it, asserting that the trademark is similar to the Intervener’s “ZARA” series trademarks. The Court determined that the disputed trademark and the trademarks which the opposition was based on, the attention-drawing initial portions of the Plaintiff’s and the Intervener’s trademarks, are highly similar in appearance and pronunciation, and that grounds for refusal of registration as set forth in the Trademark Act exist in respect of the disputed trademark.

Facts

The Plaintiff applied for registration of the trademark “SARACARES”, which designated goods in Class 16 and Services in Class 35 and Class 36. The Defendant, i.e., the Intellectual Property Office, approved the application and assigned the Registration No. 01876420 to it (hereinafter referred to as the disputed trademark). The intervener, i.e., INDUSTRIA DE DISENO TEXTIL, S.A. (INDITEX, S.A.) of Spain, raised an opposition on the grounds that the disputed trademark satisfies the conditions set forth in Subparagraphs 10, 11, and 12 of Paragraph 1, Article 30 of the Trademark Act. After examination, the Defendant determined that the registration of the disputed trademark which designated the goods in Class 16 and services in Class 35 violated the regulation set forth in Subparagraph 10 of Paragraph 1, Article 30 of the Trademark Act. The Defendant, therefore, revoked some of the goods in class 16 and some of the services in class 35 from its registered list of goods and services. The Plaintiff was not satisfied with the ruling and lodged an appeal, and conducted this litigation.

Reasons for the judgment

The disputed trademark is composed of the unstylized capital letters “SARACARES”, in which “CARES” is a foreign-language word commonly used by the people of Taiwan, meaning to feel concern or affection for someone, and which give the visual impression of being a blend word formed by “SARA” and “CARES”. The trademarks on which the opposition was based, namely the trademark “ZARA”, the trademark “ZARA HOME” and the trademark “ZARA FOR MUM”, are respectively composed of the unstylized foreign-language capital letters “ZARA”, “ZARA HOME”, and “ZARA FOR MUM”, in which “HOME” and “MUM” mean “home” and “mother” respectively and are also well known to the people of Taiwan. A comparison of the Plaintiff’s and the Intervener’s trademarks reveals that both are combinations of unstylized English letters, and that the visual-impression-creating initial foreign-language characters “SARA” and “ZARA” are extremely similar in appearance and pronunciation and therefore cannot be easily distinguished from each other by consumers with common knowledge and experience when observed as a whole at a distance at different times or different locations or when voiced in a continuous manner in actual transactions. Accordingly, the Plaintiff’s and the Intervener’s trademarks shall be regarded as constituting similar trademarks of not a low degree of similarity.

While a reproduction of a trademark is shown as a whole, it is the relatively prominent portion of the trademark that draws consumers’ attention, and this relatively prominent portion is the major portion. The major portion affects the overall impression given by the trademark to a consumer. The attention-drawing initial portions of the disputed trademark and of the trademarks on which the opposition was based are “SARA” and “ZARA” respectively, and the foreign-language words that are respectively combined with those initial portions, i.e., “CARES”, “HOME”, and “FOR MUM”, are not clearly distinctive. The Court, therefore, determined that the Plaintiff’s and the Intervener’s trademarks constitute trademarks having not a low degree of similarity, and that the grounds for refusal of registration as set forth in Subparagraph 10 of Paragraph 1, Article 30 of the Trademark Act exist in respect of the registration of the disputed trademark which designated the goods in Class 16 and  services in Class 35.