Industria De Diseno Textil, S.A. v. Registrar of Trade Marks & Anr.

High Court of Delhi at New Delhi, Single Judge | Date of Decision: 6th July, 2026 Case Number: C.A.(COMM.IPD-TM) 52/2024, I.A. 33885/2024 Bench: Hon’ble Ms. Justice Jyoti Singh

BACKGROUND

The Appellant, Industria De Diseno Textil, S.A. (“Inditex”), a company incorporated under the laws of Spain in 1963 and a conglomerate of over 400 companies, is the proprietor of the internationally renowned trademark ZARA, conceived and adopted in 1975, under which it sells fashion clothing, home products (bed linen, tablecloths, etc.), bags, footwear, headgear, jewellery, perfumes and related goods through the ZARA and ZARA HOME brands. The Appellant’s global retail network by the relevant periods comprised thousands of stores across dozens of markets, with substantial online sales; in 2020, despite the pandemic, Inditex generated net sales of €20.4 billion. In India, ZARA has reportedly been in use since 1986-87 through contract manufacturers, with Inditex Trent Retail Pvt. Ltd. (a joint venture with the Tata Group formed in 2009) opening the first Indian ZARA stores in Mumbai and Delhi in 2010; the Appellant held 21 Indian stores as of the filing of the appeal. The mark ZARA was registered in India in Class 25 in 1993 and in Classes 16, 24 and 26 in 2003, among other classes. In a prior decision, Industria De Diseno Textile S.A. v. Oriental Cuisines Pvt. Ltd. and Ors. (2015 SCC OnLine Del 9565), this Court had held ZARA to be a well-known mark under Section 2(1)(zg) of the Trade Marks Act, 1999, based on evidence of sales, advertising, reputation and transborder reputation and had restrained use of “ZARA TAPAS BAR” for restaurant/bar services despite dissimilarity of goods.

Respondent No. 2, trading as Aggarwal Bag House, applied on 30.10.2019 (elsewhere stated as filed with a user claim from 03.06.2016) for registration of the mark ZORA in Class 24 for “fabrics including plain, coated, laminated, impregnated and waterproof fabrics” (Application No. 4310686). The application was advertised in the Trade Marks Journal on 30.05.2022 and the Appellant filed an opposition. Both parties led evidence and filed written submissions. By order dated 08.02.2024, Respondent No. 1 (the Registrar of Trade Marks) rejected the Appellant’s opposition, holding that the marks ZARA and ZORA were neither phonetically nor visually similar reasoning that the dissected prefixes “ZA” and “ZO” differed in sound and appearance despite the shared suffix “RA” and that the trade channels and consumer bases for the rival goods were distinct, since Respondent No. 2 supplied raw polyester lining fabric in bulk to bag manufacturers in Sadar Bazar, Delhi, while the Appellant sold finished end-products through its own retail and online channels. The Registrar also rejected the Appellant’s claim under Section 11(2) of the Trade Marks Act on the short ground that the marks were dissimilar and found no evidence of actual public confusion or of dishonest adoption by Respondent No. 2, accepting Respondent No. 2’s explanation that “ZORA” was chosen for its English meaning “dawn,” symbolising a new beginning in using a novel polyester fabric (“Andaras”) for bag linings. A registration certificate for ZORA issued on 09.02.2024. The Appellant filed the present statutory appeal under Section 91 of the Trade Marks Act, 1999, challenging this rejection.

ISSUES FOR DETERMINATION

1. Whether the Registrar erred in comparing the rival marks ZARA and ZORA by dissecting them into their component syllables/prefixes (“ZA” versus “ZO”) rather than assessing them as a whole, contrary to the settled anti-dissection principle and whether, properly compared, the marks are phonetically and visually similar.
2. Whether Section 11(2) of the Trade Marks Act, 1999 requires that the earlier mark be the subject of a prior formal declaration of “well-known” status (whether by a court or by inclusion in the Registrar’s list of well-known marks) before its proprietor can invoke that provision to oppose registration of an identical or similar mark for dissimilar goods or whether it suffices that the mark satisfies the substantive criteria of Section 2(1)(zg) read with Section 11(6).
3. Whether, on the evidence on record, the mark ZARA had in fact acquired well-known status in India as of the relevant date (Respondent No. 2’s claimed user date of 03.06.2016 / application date of 30.10.2019), entitling it to protection under Section 11(2) even against goods found to be dissimilar.
4. Whether the goods for which the rival marks were used/sought to be registered (Respondent No. 2’s raw polyester lining fabric versus the Appellant’s finished fashion and home products) were in fact similar, allied or cognate or connected in the course of trade and whether this issue was material to the outcome given the Court’s findings on Section 11(2).
5. Whether the Registrar erred in requiring proof of “actual confusion” among the public as a precondition for relief under Section 11(2), given that Section 11(2) is concerned with dilution/unfair advantage rather than likelihood of confusion (which is the touchstone of Section 11(1)).
6. Whether Respondent No. 2’s adoption of the mark ZORA was dishonest, having regard to the timing of adoption, the surrounding circumstances and the shifting explanations offered for the mark’s meaning.

KEY HOLDINGS OF THE COURT

1. On the comparison of the marks, the Court held that the Registrar had erred in law by dissecting ZARA and ZORA into “ZA”/”ZO” and “RA” and comparing only the prefixes, contrary to the settled “anti-dissection rule” requiring marks to be compared as a whole (relying on Corn Products Refining Co. v. Shangrila Food Products Ltd., Encore Electronics Ltd. v. Anchor Electronics & Electricals Pvt. Ltd. and M/s. South India Beverages Pvt. Ltd. v. General Mills Marketing & Anr.). Comparing the marks as whole four-letter words, the Court held that both are pronounced with the same rhythm and terminal sound “RA,” share an identical consonant structure (Z-R-A) and differ only in a single vowel (“A” versus “O”), which to an average consumer with imperfect recollection would not be a meaningful point of distinction (citing, by analogy, Essco Sanitations v. Mascot Industries, Ajanta Pharma Limited v. I-Well Pharma and Sulphur Mills Limited v. Virendra Kumar Saini, each holding single-vowel differences insufficient to avoid deceptive similarity). Accordingly, the Court held ZARA and ZORA to be phonetically and visually deceptively similar.
2. On the interpretation of Section 11(2), the Court held that the provision does not require the earlier mark to have been the subject of a prior formal declaration of well-known status by a court or by inclusion in the Registrar’s list under Rule 124 of the 2017 Rules. The Court reasoned from the statutory text which uses the phrase “is a well-known trade mark in India” (Section 11(2)) and “entitled to protection as a well-known trade mark” (Explanation (b)) rather than “declared” that the enquiry is whether the mark satisfies the substantive criteria of Section 2(1)(zg) read with Section 11(6) and (7), based on evidence led before the Registrar and not whether a prior formal declaration exists. The Court found support for this construction in the Madras High Court’s decision in Lego Juris A/S v. Gurumukh Singh and Another and in Rule 43 of the 2017 Rules, which contemplates opposition “based on an earlier trade mark which is alleged to be a well-known trade mark,” and further reasoned that the legislature’s deliberate use of “well-known” in Section 11(2) as against “determined to be well known” in Section 11(8) supported this distinction.
3. On the well-known status of ZARA, the Court held, on the evidentiary record including the Appellant’s extensive global and Indian retail and online presence, sales and promotional expenditure figures and the prior judicial recognition of ZARA’s well-known status in Industria de Diseno v. Oriental Cuisines (2015) that ZARA had achieved well-known status in India well before Respondent No. 2’s claimed user date of 2016, satisfying the factors under Section 11(6) read with Section 2(1)(zg) and was therefore entitled to protection under Section 11(2) irrespective of any formal declaration.
4. On dissimilarity of goods, the Court held that this issue was, strictly, immaterial to the outcome given that Section 11(2) by its terms protects a well-known mark even against dissimilar goods (relying on Lego Juris and Sanjay Chadha and Another v. Union of India and Another, concerning the EVEREADY mark). Nevertheless, for completeness, the Court also held obiter to the primary holding that the rival goods were not in fact unrelated, since both marks were registered in Class 24 covering textiles/fabrics, the Appellant’s brand exposure extended to manufacturers, traders and suppliers dealing in textiles and fabrics (not merely retail consumers) and Respondent No. 2 supplied polyester rolls to textile dealers as well as bag manufacturers, creating a “connection in the course of trade” (citing Punjab Tractors Ltd. v. Pramod Kumar Garg, which found a trade connection between tractors and diesel oil engines).
5. On the “actual confusion” requirement, the Court held that the Registrar’s insistence on evidence of actual public confusion was a misplaced enquiry under Section 11(2), since that provision’s focus is dilution of or unfair advantage taken from, the distinctive character or repute of the earlier well-known mark not likelihood of confusion, which is the test applicable under Section 11(1) (relying on DLF Limited v. Sohum Shoppe Limited & Ors. and Tata Sons Ltd. v. Manoj Dodia and Others on the doctrine of dilution/blurring).
6. On dishonest adoption, the Court found it relevant, though not separately dispositive, that Respondent No. 2’s sales rose sharply from approximately ₹2,45,75,777 in 2016-2017 to approximately ₹31,34,10,412 by 2023 following adoption of the ZORA mark and noted Respondent No. 2’s inconsistent explanations for the mark’s meaning (a Hindu name meaning “baby”/”dawn” in the counter-statement, versus simply “dawn” in English in later written arguments) as circumstances undermining the claim of honest, coincidental adoption, though the Court’s ultimate ruling rested primarily on the similarity and well-known-mark findings rather than an independent finding of bad faith.
7. Final operative order: The impugned order dated 08.02.2024 was quashed and set aside; the registration of the mark ZORA under Registration No. 4310686 in Class 24 was cancelled, with the Registrar directed to remove the entry from the Register of Trade Marks and rectify the Register within two months. The appeal was allowed and disposed of, along with the pending application (I.A. 33885/2024).

STATUTORY PROVISIONS INVOLVED

Section 11 of the Trade Marks Act, 1999, “Relative grounds for refusal of registration,” was the central provision in the appeal. Sub-section (1), addressed to identical/similar marks for identical/similar goods where there is likelihood of confusion, was discussed as the confusion-centric counterpart to sub-section (2). Sub-section (2), addressed to identical/similar marks for dissimilar goods where the earlier mark is well-known in India and use without due cause would take unfair advantage of or be detrimental to its distinctive character or repute, was the provision principally construed and applied by the Court, which held it did not require prior formal declaration of well-known status and that dilution/unfair advantage, not consumer confusion, was the relevant test. Sub-section (5), providing that a mark shall not be refused registration on grounds under sub-sections (2)/(3) unless raised in opposition by the proprietor of the “earlier trade mark” (without qualifying “declared” well-known status), was relied upon as textual support for this construction. The Explanation to Section 11, defining “earlier trade mark” to include a mark “entitled to protection as a well-known trade mark,” was likewise central to the Court’s reasoning that entitlement, not formal declaration, was the statutory touchstone.

Section 2(1)(zg) of the Trade Marks Act, 1999, defining “well-known trade mark,” and Section 11(6)/(7), setting out the factors relevant to determining well-known status (duration/extent of use, promotion, recognition among relevant public, record of enforcement, etc.), were applied by the Court in assessing, on the evidentiary record, that ZARA satisfied these criteria as of the relevant date.

Rule 43 of the Trade Marks Rules, 2017, governing the contents of a Notice of Opposition where based on an earlier mark “alleged to be” well-known within Section 11(2), was cited as further support for the Court’s construction that formal declaration is not a precondition to invoking Section 11(2).

Section 91 of the Trade Marks Act, 1999, under which the statutory appeal was filed, was the jurisdictional basis for the appeal but was not itself the subject of substantive interpretation.

REASONING OF THE COURT

The Court’s reasoning proceeded along two principal, largely independent tracks, either of which the Court treated as sufficient to dispose of the appeal in the Appellant’s favour. On the comparison of marks, the Court reasoned from first principles of trademark comparison that marks must be judged by their overall impression on a person of average intelligence and imperfect recollection, not by artificially isolating and comparing individual syllables and applied a substantial body of precedent (Corn Products, Amritdhara Pharmacy, Kaviraj Pandit Durga Dutt Sharma, Cadila Health, Encore Electronics, Essco Sanitations, Ajanta Pharma, Sulphur Mills) establishing that single-vowel or similarly minor phonetic differences between otherwise structurally identical marks do not defeat a finding of deceptive similarity, particularly given that Indian consumers pronouncing foreign-origin words may not reliably distinguish subtle vowel variations. The Court reasoned that the Registrar’s approach dissecting the marks into prefix and suffix and comparing only the prefixes in isolation was a direct violation of the anti-dissection rule articulated by the Division Bench in South India Beverages and that this methodological error was the root cause of the Registrar’s erroneous conclusion on similarity, which in turn improperly foreclosed consideration of the Appellant’s Section 11(2) claim.

On the statutory construction of Section 11(2), the Court’s reasoning was primarily textual and purposive: examining the specific words chosen by the legislature (“is a well-known trade mark” and “entitled to protection as a well-known trade mark,” as opposed to “declared” or “determined to be well known,” the latter phrase appearing in Section 11(8)), the Court reasoned that had the legislature intended to condition Section 11(2) protection on prior formal declaration, it would have said so expressly and that reading such a requirement into the provision would render Explanation (b), Section 11(5) and Rule 43 largely otiose. The Court reinforced this textual reading with the persuasive authority of the Madras High Court’s decision in Lego Juris, which had reached the same conclusion on materially similar facts (an undeclared but internationally well-known mark seeking protection against a similar mark for dissimilar goods). Having established that formal declaration was unnecessary, the Court then applied the Section 11(6)/2(1)(zg) factors to the extensive evidentiary record placed before the Registrar sales figures, store counts, advertising expenditure, market presence and this Court’s own prior finding of well-known status in the 2015 Oriental Cuisines litigation to conclude that ZARA independently satisfied the substantive threshold for well-known status as of the relevant date and that the Registrar had simply failed to engage with this evidence at all, having short-circuited the enquiry on the (erroneous) basis that the marks were dissimilar.

On the “actual confusion” question, the Court reasoned by distinguishing the differing statutory objects of Section 11(1) (confusion as to source, relevant to similar goods) and Section 11(2) (dilution of distinctiveness/reputation, relevant to dissimilar goods), holding that requiring proof of actual confusion under Section 11(2) imported a test foreign to that provision’s purpose, which is protective of the earlier mark’s distinctive character and commercial value rather than dependent on demonstrated consumer deception. The Court supported this with the dilution-by-blurring analysis previously articulated in DLF Limited v. Sohum Shoppe and Tata Sons v. Manoj Dodia. Finally, though holding the goods-similarity question strictly unnecessary to decide given the Section 11(2) findings, the Court nonetheless engaged with it for completeness, reasoning that the Appellant’s trade connections extended beyond retail consumers to manufacturers and traders dealing in textiles and fabrics and that Respondent No. 2’s supply of branded polyester rolls to textile dealers (not solely to bag manufacturers) created a sufficient “connection in the course of trade” by analogy to the tractors/diesel-engines connection recognised in Punjab Tractors.

DOCTRINAL SIGNIFICANCE

Within the bounds of what was actually decided, this judgment makes two contributions of note to Indian trade mark jurisprudence. First, it firmly applies and extends the anti-dissection principle to opposition/registration proceedings before the Registrar of Trade Marks (as distinct from its more commonly litigated context in infringement/passing-off suits), holding that dissecting rival marks into prefix and suffix components for separate comparison is an impermissible methodology even at the registration stage. Second and more significantly, the judgment addresses apparently for the first time squarely in this Court, drawing on and endorsing the Madras High Court’s reasoning in Lego Juris the question of whether Section 11(2) protection for well-known marks requires a prior formal declaration of well-known status, holding decisively that it does not and that the Registrar (or a court) must independently assess well-known status on the evidence in each case where the ground is invoked, applying the Section 11(6)/2(1)(zg) factors. This holding has practical significance for trademark proprietors seeking to oppose registrations under Section 11(2) without having first obtained (or in the absence of) a formal declaration of well-known status via Rule 124 proceedings or prior litigation and clarifies the evidentiary threshold and analytical approach the Registrar must adopt. The judgment also reinforces, without altering, the settled position that “actual confusion” evidence is not a precondition for relief under Section 11(2), which is dilution-focused rather than confusion-focused. The Court’s observations on goods-similarity/trade-connection, while included for completeness, were expressly treated as non-essential to the outcome and should be read as reinforcing rather than independently establishing the result. The decision does not purport to establish any new test for phonetic or visual similarity beyond reaffirming existing anti-dissection and overall-impression principles and its result is closely tied to the specific evidentiary record concerning ZARA’s established international and Indian reputation.

Frequently Asked Questions:

1. What was the outcome of Inditex v. Registrar of Trade Marks?
   The Delhi High Court quashed the Registrar’s order, cancelled the ZORA trademark registration in Class 24, and directed the Registrar to remove the entry from the Trade Marks Register within two months, holding ZARA and ZORA to be deceptively similar and ZARA to be a well-known mark entitled to protection under Section 11(2).
2. Are ZARA and ZORA deceptively similar trademarks?
   Yes – the Court held that comparing the marks as a whole, both share an identical consonant structure (Z-R-A), the same rhythm and terminal sound, and differ only in a single vowel, which would not meaningfully distinguish them to an average consumer with imperfect recollection.
3. Does Section 11(2) of the Trade Marks Act require a prior formal declaration of well-known status?
   No – the Delhi High Court held that Section 11(2) requires only that the mark satisfy the substantive criteria under Section 2(1)(zg) read with Section 11(6) on the basis of evidence led before the Registrar, and does not require a prior formal declaration by a court or inclusion in the Registrar’s list under Rule 124.
4. Is proof of actual consumer confusion required under Section 11(2)?
   No – the Court held that Section 11(2) is dilution-focused, protecting the distinctive character and repute of a well-known mark against unfair advantage or detriment, and that requiring proof of actual confusion imports a test applicable only under Section 11(1) for similar goods.
5. What is the anti-dissection rule in trademark opposition proceedings?
   The anti-dissection rule requires that rival marks be compared as a whole for their overall impression on an average consumer, rather than broken down into component syllables or prefixes for separate comparison — a principle the Court held applies equally at the Registrar level in opposition proceedings, not only in infringement suits.

Articles Case Laws Copyright Article Landmark Judgements on Copyrights Landmark Judgements on Patents Landmark Judgements on Trademarks Patent Article Recent Judgements on Patents Recent Judgements on Trademarks Trademark Article