Delhi High Court has granted an interim injunction against a restaurant group, Oriental Cuisines, holding that the group had “dishonestly and fraudulently” adopted Zara Tapas Bar as the name of its Spanish restaurant. Justice JP Mittal said Industria de Diseno Textil, the Spanish multinational that owns Zara, an international clothing chain, had “a good prima facie case” entitling it to protection of its Zara mark even in relation to dissimilar goods and services.
Industria de Diseno Textil was represented by Akhil Sibal, a New Delhi-based lawyer, on instructions from Sushant Singh, managing partner of Sushant M Singh & Associates, a New Delhi-based IP boutique.
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Speaking to India Business Law Journal Singh said: “The acknowledgement from the court that Zara has a trans-border reputation again generates the ray of hope to the foreign proprietors that the trans-border reputation is protectable in India, even if somebody is freeriding on the coat-tails of the proprietor for years.”
Zara Tapas Bar was one of over 100 food outlets operated by Oriental Cuisines across India. Senior advocate NK Kaul appeared for Oriental Cuisines. He was instructed by Anand and Anand partner MS Bharath, who heads the firm’s Chennai office, and New Delhi-based senior associate Prachi Agarwal.
Commenting on whether Oriental Cuisines would challenge the order, Bharath told India Business Law Journal: “We are abiding by what the order says until we decide what next.”
The dispute between Industria de Diseno Textil and Oriental Cuisines had been brewing since 2003, when Oriental Cuisines opened Zara Tapas Bar in Chennai and tried to register the mark. Zara has been registered in India in class 25 (clothing, footwear and headgear) since 1993. The first Zara store opened in India in 2010. Industria de Diseno Textil adopted Zara as its trademark in 1975. It operates in India through a joint venture with Trent, a Tata Group company.
Bharath said that Zara was not a well-known mark even in Spain in 2003. “It may have been a famous mark but it was not well known … the declaration by a court authority came in several years after the Indian party had started using it.” Efforts at settlement soon after Anand and Anand took over the matter in 2010 were not successful.
Stressing that Anand and Anand is “not entirely” a plaintiff’s lawyer, Bharath said: “[Oriental Cuisines] was an existing client of ours who was dragged to a court in Delhi. We are not going to let go of a client just because they have been sued.”
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