Clients enter a Zara clothes shop in Paris on May 11, 2020.
As famed bard William Shakespeare once mused, “What’s in a name?” In the legal and business world, it means a great deal. Just last month, entrepreneur Amber Kotrri scored a major legal victory over retail giant Zara, which tried to block Kotrri’s trademark application for her sustainable clothing brand House of Zana, arguing the brands were too similar.
Kotrri, who launched House of Zana online in 2018, and opened her first brick-and-mortar store in Darlington, England just a year later, registered to trademark her company in December 2020. When attempting to register the name House of Zana, Kotrri received a notice of opposition followed by a letter from attorneys representing mass retailer Zara, accusing Kotrri’s brand of being identical to theirs and confusingly similar to its customers. Kotrri told outlets that the opposition was soon followed by legal correspondence suggesting the names were too similar and giving her a deadline of 3 months to stop using the name House of Zana for her company.
Kotrri was also strongly advised to rename the business and remove all existing branding under the “Zana” moniker. After internally weighing the decision and garnering significant support after sharing her story on social media, Kotrri made the decision to not sign the proposed agreement and instead keep fighting for her brand. Rather than rename her business after years of hard work and dedication, Kotrri responded that the two brands would not be confused and continued her pursuit to register the mark for the name.
In turn, Zara specified that they were not suing or seeking financial compensation, but were aiming to find an “amicable settlement” with Kotrri from the very beginning. Zara opposed Kotrri’s trademark application on two main grounds: 1) that the names Zana and Zara were too similar and 2) such similarities were likely to cause confusion among their customers. Eventually, the hearing for the dispute was held on May 24, 2022, after both parties submitted arguments, witness statements, and other related materials to plead their case to the court.
For her part, Kotrri submitted witness statements and exhibits discussing the meaning of the word “zana” in Albanian, the lack of her intention to mislead customers, and the difference between the names Zara and Zana, as well as contrasting business focuses and ethos. Conversely, Zara’s legal counsel Julia King submitted materials to show how the prefix “House of” is a commonly used term in fashion and that would not necessarily differentiate the two brands, the uniqueness of the name Zara, and the way earlier tribunals have acknowledged Zara’s longstanding reputation as a leading brand in the business and fashion world.
During the hearing, King argued the name Zana was just “one small brush mark” away from her client’s and that Kotrri’s business was not distinctive enough. King seemed to argue a domino effect of sorts, positioning that Kotrri’s brand could pose a “serious threat” to Zara, especially if the fashion market began to become infiltrated with brands that sounded substantially similar. In response, Kotrri, who represented herself at the tribunal, argued that there was no likelihood of confusion for the two brands.
Ultimately, Judge Matthew Williams ruled that any potential link customers would make between Zara and House of Zana would be too insubstantial to result in the chain retailer’s reputation and business’s standing becoming diluted. Specifically, in a 29-page opinion issued on August 8, 2022, Judge Williams set out the various differences between the two brands, which he ultimately ruled deemed them not likely to confuse customers: “I am satisfied that the differences between the marks, on which I have previously set out my analysis are sufficient to rule out the likelihood of direct confusion on the part of the average consumer.”
He acknowledged some of King’s points, including the fact that “Zara is undoubtedly a renowned mark.” Nevertheless, the judge said, the “reputation of a mark does not give grounds for presuming a likelihood of confusion.”
Further, the judicial opinion drafted by Judge Williams stated that the specific contrasts between the two brands were enough to prevent an opposition to Kotrri’s trademark application. Several of the differences he noted were that Kotrri’s brand included the full name House of Zana, whereas Zara’s name was just a four-letter word: “In the present case the marks differ visually in that the Contested Mark involves eleven letters whereas the Opponent’s mark has just four letters. The additional words ‘House of’ at the beginning of the Contested Mark give rise to a significant visual difference.’”
Further, he noted that even though the names Zana and Zara appear to be similar, he stated that most customers could discern that they do not refer to the same company, writing: “… the average consumer is well able to recognise the difference between the letters r and n.”
Thirdly, the judge also pointed to the lack of malicious intent on behalf of Kotrri and stated there was no evidence that Kotrri purposefully lifted a version of Zara’s name for profit: “I accept that the choice of name is prompted by Ms Kotrri’s Albanian heritage and the idea of clothes manufactured with the magical delicacy of fairies, and I find no cynical motive in the use of the name.”
While Judge Williams conceded certain similarities existed between Zara and House of Zana, including the fact that both brands sold similar goods (clothing and accessories) and the uniqueness of both names, they were not enough to demonstrate either a direct or indirect likelihood of confusion. Therefore, he deemed Zara’s opposition as unsuccessful.
While this decision was undoubtedly welcomed by Kotrri and her team, it could also have a wider impact as well. Other small business owners in Kotrri’s position may have been intimidated by the efforts that Zara undertook to initiate this action. Zara is owned by Spanish fashion group Inditex and has over 3,000 stores in 96 countries around the world, earning millions of dollars in revenue each year. Yet, Kotrri was determined not to give up on her dream to grow her business, which sells sustainable clothing and locally sourced artisan products.
Despite feeling daunted by Zara’s approach, Kotrri, a mother of three, told another outlet: “I want to fight this as I don’t want to tell my children that I built something up from nothing and then let it get taken away,” she said. “What would that teach them?”
It is clear that for Kotrri, this decision to protect her brand is just as much personal as it is good business practice. You might say it even hits close to home.
The word “zana” means fairy in her husband’s native country of Albania, which is the location of the company’s sustainable manufacturing studio and where a majority of the apparel is made. For Kotrri, the company’s name is not just a smart marketing tool, but something she and her colleagues also keep close to the heart, saying: “We chose the name ‘House of Zana’ as it’s as if our beautiful clothes are made by the fairies. Our name is very meaningful and personal to us,” she indicated on Change.org, the website containing the initial petition circulated to gain the support of followers in Kotrri’s bid to preserve the name.
The recent trademark success of House of Zana not only allows Kotrri to continue growing her business, but it might also have an effect on the line of similar remaining trademark battles Zara has taken up. Zara contacted UK-based ceramics maker Zara McLaughlin and the owners of the Iranian inspired spice business Zaravand, in efforts to try and preserve their usage of the brand name. Kotrri told BBC that for anyone in a similar position to her, she would say to “…keep fighting,” as it “it’ll be worth it in the end.”
“You know your business the most, you know the meaning behind any name, and if you’ve built it up then fight for it, I couldn’t tell my children that I closed down my business because someone bigger told me to,” she reportedly said.
While trademark battles among fashion brands is hardly novel, many in the legal and business worlds will be sure to keep watching as these fights continue to unfold in the near future.
Law&Crime reached out to the parties for comment.
Read the decision below:
[Image via THOMAS COEX/AFP via Getty Images]
