The trademark ZARA was filed by INDUSTRIA DE DISEÑO TEXTIL, S.A. (INDITEX, S.A.), a corporation established under the laws of the Kingdom of Spain (the "Applicant"). The application was published for oppositions on November 16, 1997, and received undefined oppositions.
Opposition Proceedings
There are undefined Oppositions claimed against trademark.
The first opposition filed on February 15, 1998 by Johnson Publishing Company, Inc on (a) Identity of marks and Goods and Services, (b) Likelihood of confusion. the opponent was represented by Lario Rivas, Adela and its proceedings were handled in English The second opposition filed on February 12, 1998 by ZARA ApS on (a) Identity of marks and Goods and Services, (b) Likelihood of confusion. the opponent was represented by BUDDE SCHOU A/S and its proceedings were handled in English The third opposition filed on February 12, 1998 by ara AG on (a) Likelihood of confusion, (b) Earlier sign & right to prohibit use of later TM under national law. the opponent was represented by Kohlmann, Kai and its proceedings were handled in English
The application was filed in Spanish, and Spanish was also language of all opposition proceedings (English was selected as the second language).
Cancellation Proceedings
A total of undefined cancellation proceedings were initiated against the trademark registration in 2001.The first Cancellation was filed by Sandro Zara Albano operante come ditta individuale ZARA ALBANO SANDRO (represented by ???) on March 8, 2009 and Final decision – Request rejected on substance.The second Cancellation was filed by Zainab Ansell (represented by ???) on February 16, 2017 and Final decision – EUTM partially cancelled.The third Cancellation was filed by SUPER RTL Fernsehen GmbH (represented by GÖRG Partnerschaft von Rechtsanwälten mbB) on August 4, 2013 and Final decision on costs – Request withdrawn.The fourth Cancellation was filed by Zahia DEHAR (represented by ???) on July 17, 2018 and Final decision on costs – Request withdrawn.
Two renewals of the trademark were recorded, one on September 24, 2006, and the other one on May 19, 2016.
Change of name and address of the trademark registration was recorded on July 1, 2007. Appointment and Replacement of representative of the trademark registration was recorded on September 2, 2007. Application for revocation or for a declaration of invalidity of the trademark registration was recorded on April 13, 2008. Change of name and professional address of the trademark registration was recorded on August 19, 2010. Appointment and Replacement of representative of the trademark registration was recorded on March 16, 2011. Decisions on applications for revocation or for a declaration of invalidity of the trademark registration was recorded on August 22, 2011. Application for revocation or for a declaration of invalidity of the trademark registration was recorded on November 15, 2011. Appointment and Replacement of representative of the trademark registration was recorded on November 17, 2011. Application for revocation or for a declaration of invalidity of the trademark registration was recorded on April 9, 2012. Application for revocation or for a declaration of invalidity of the trademark registration was recorded on May 23, 2012. Change of name and professional address of the trademark registration was recorded on October 1, 2012. Decisions on applications for revocation or for a declaration of invalidity of the trademark registration was recorded on September 1, 2013. Change of name and professional address of the trademark registration was recorded on November 5, 2013. Change of name and professional address of the trademark registration was recorded on November 14, 2013. Change of name and professional address of the trademark registration was recorded on November 27, 2013. Change of name and professional address of the trademark registration was recorded on December 16, 2013. Application for revocation or for a declaration of invalidity of the trademark registration was recorded on April 24, 2014. Change of name and professional address of the trademark registration was recorded on July 20, 2015. Change of name and professional address of the trademark registration was recorded on September 6, 2016. Decisions on applications for revocation or for a declaration of invalidity of the trademark registration was recorded on February 20, 2017. Declaration under Art.28(8) EUTMR of the trademark registration was recorded on April 26, 2018. Decisions on applications for revocation or for a declaration of invalidity of the trademark registration was recorded on July 23, 2018. Decisions on applications for revocation or for a declaration of invalidity of the trademark registration was recorded on July 30, 2018. Change of name and professional address of the trademark registration was recorded on July 31, 2018. Change of name and professional address of the trademark registration was recorded on December 2, 2020. Change of name and professional address of the trademark registration was recorded on October 7, 2021. Requests for conversion of an EUTM application into a national trade mark application of the trademark registration was recorded on February 7, 2024.
The Appeal with reference B R0547/2005-4 was Cancellation rejected according to Article 8(4) CTMR with decision issued on October 16, 2008 by the EUIPO. The Appeal with reference B R1118/2013-2 was EUTM cancelled according to Rule 40 CTMIR with decision issued on May 18, 2014 by the EUIPO. The Appeal with reference B R1508/2019-5 was Other according to Article 139(2)(b) EUTMR with decision issued on November 18, 2019 by the EUIPO. The Appeal with reference B R1508/2019-G was Other according to Article 71(1)(b) EUTMDR with decision issued on October 5, 2020 by the EUIPO. The Appeal with reference B R1508/2019-G was Other according to Article 139(2) EUTMR with decision issued on September 17, 2023 by the EUIPO. The Cancellation with reference B 000000546 was Cancellation rejected according to null with decision issued on March 6, 2005 by the EUIPO. The Cancellation with reference B 000005951 was EUTM partially cancelled according to Article 51(1)(a) CTMR with decision issued on April 29, 2013 by the EUIPO. The null with reference B C-575/15 was Judgment Confirmed according to Article 58(1)(a) EUTMR with decision issued on October 25, 2016 by the EUIPO. The null with reference B T-584/14 was Decision confirmed according to Article 51(1)(a) CTMR with decision issued on September 8, 2015 by the EUIPO.
The application claimed as seniority of the Kingdom of Spain trademark null registered on July 4, 1995 and filed on June 29, 1994 which was accepted by the office.
Goods And Services
The mark was filed in class 3 with following description of goods:
Bleaching preparations and other substances for laundry use
Cleaning, polishing, scouring and abrasive preparations
The mark was filed in class 9 with following description of goods:
Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments
Apparatus for recording, transmission or reproduction of sound or images
Magnetic data carriers, recording discs
Automatic vending machines and mechanisms for coin-operated apparatus
Cash registers, calculating machines, data processing equipment and computers
Fire-extinguishing apparatus
Animated cartoons
Apparatus for changing record player needles
Asbestos clothing for protection against fire
Asbestos gloves for protection against accidents
Bullet-proof vests
Bullet-proof waistcoats
Cabinets for loudspeakers
Cases especially made for photographic apparatus and instruments
Cases fitted with dissecting instruments [microscopy]
Cleaning apparatus for phonograph records
Cleaning apparatus for sound recording discs
Clothing for protection against accidents, irradiation and fire
Computer programmes [programs], recorded
Computer operating programs recorded
Computer operating programs, recorded
Computer peripheral devices
Computer software [recorded]
Containers for contact lenses
Divers' apparatus
Divers' masks
Diving suits
Earplugs for divers
Filters for respiratory masks
Fire beaters
Fire blankets
Fire boats
Fire engines
Fire hose nozzles
Floats for bathing and swimming
Furniture especially made for laboratories
Garments for protection against fire
Gloves for divers
Gloves for protection against accidents
Gloves for protection against X-rays for industrial purposes
Holders for electric coils
Interfaces [for computers]
Juke boxes [for computers]
Knee-pad for workers
Magnets
Masts for wireless aerials
Micrometer screws for optical instruments
Monitors [computer programs]
Motor fire engines
Nets for protection against accidents
Pince-nez chains
Pince-nez cords
Pince-nez cases
Pince-nez mountings
Plotters
Protective helmets
Protective masks
Protective suits for aviators
Protection devices for personal use against accidents
Push button for bells
Reflecting discs, for wear, for the prevention of traffic accidents
Reflecting discs for wear, for the prevention of traffic accidents
Respirators [other than for artificial respiration]
Respirators for filtering air
Respiratory masks [other than for artificial respiration]
Retorts' stands
Road signs, luminous or mechanical
Safety nets
Safety restraints [other than for vehicle seats and sports equipment]
Safety tarpaulins
Signs luminous
Shoes for protection against accidents, irradiation and fire
Solderers' helmets
Spark-guards
Stands for photographic apparatus
Steering apparatus, automatic, for vehicles
Spectacle frames
Spectacle cases
Swimming belts
Swimming jackets
Teeth protectors
Turnstiles, automatic
Tripods for cameras
Water wings
Workmen's protective face-shields.
The mark was filed in class 14 with following description of goods:
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes
Jewellery, precious stones
Horological and chronometric instruments
Agates
Anchors [clock and watch-making]
Barrels [clock and watchmaking]
Clock cases
Clockworks
Coins
Copper tokens
Jet, unwrought or semi-wrought
Key rings [trinkets or fobs]
Medals
Movements for clocks and watches
Objects of imitation gold
Olivine [gems]
Olivine [gems]
Ormolu ware
Ormolu ware
Ornaments of jet
Pearls made of ambroid [pressed amber]
Semi-precious stones
Spinel [precious stones]
Straps for wristwatches
Watch bands
Watch cases
Watch chains
Watch crystals
Watch glasses
Watch springs
Watch straps
Pendulums [clock- and watchmaking]
Dials [clock- and watchmaking]
Clock hands [clock- and watchmaking].
The mark was filed in class 16 with following description of goods:
Paper, cardboard and goods made from these materials, not included in other classes
Printed matter
Bookbinding material
Photographs
Stationery
Adhesives for stationery or household purposes
Artists' materials
Paint brushes
Typewriters and office requisites (except furniture)
Instructional and teaching material (except apparatus)
Plastic materials for packaging (not included in other classes)
Playing cards
Printers' type
Printing blocks
Adhesive tapes for stationery or household purposes
Aquarium hoods
Babies' diaper-pants of paper and cellulose [disposable]
Babies' diapers of paper and cellulose [disposable]
Babies' napkin-pants [diaper-pants] of paper and cellulose [disposable]
Babies' napkin-pants of paper and cellulose [disposable]
Babies' napkins of paper and cellulose [disposable]
Bags for microwave cooking
Balls for ball-point pens
Chaplets
Composing frames [printing]
Composing sticks
Control tokens
Engraving plates
Galley racks [printing]
Garbage bags [of paper or of plastics]
Graining combs
Hand labelling appliances
House painters' rollers
Indoor aquaria
Marking chalk
Packaging material made of starches
Passport holders
Photograph stands
Printers' blankets, not of textile
Printers' reglets
Rosaries
Self-adhesive tapes for stationery or household purposes
Sheets of reclaimed cellulose for wrapping
Steatite [tailor's chalk]
Tailors' chalk
Tanks [indoor aquaria]
Trays for sorting and counting money
Vignetting apparatus
Wristbands for the retention of writing instruments
Architects' models
Indoor terrariums [vivariums]
Holders for checkbooks [cheque books].
The mark was filed in class 24 with following description of goods:
Textiles and textile goods, not included in other classes
Bed and table covers
Banners
Bunting
Curtains of textile or plastic
Flags [not of paper]
Furniture coverings of plastic
Plastic material [substitute for fabrics].
The mark was filed in class 25 with following description of goods:
Clothing, footwear, headgear
Babies' diapers of textile
Babies' napkins of textile
Boot uppers
Cap peaks
Dress shields
Fittings of metal for shoes and boots
Footwear uppers
Hat frames [skeletons]
Heelpieces for boots and shoes
Heelpieces for stockings
Heels
Inner soles
Iron fittings for boots
Iron fittings for shoes
Iron fittings for shoes
Non-slipping devices for boots and shoes
Pockets for clothing
Ready-made linings [parts of clothing]
Shirt fronts
Shirt yokes
Soles for footwear
Studs for football boots [shoes]
Tips for footwear
Visors [hatmaking]
Welts for boots
Welts for boots and shoes
Welts for shoes.
The mark was filed in class 28 with following description of goods:
Games and playthings
Gymnastic and sporting articles not included in other classes
Decorations for Christmas trees
Artificial fishing bait
Billiard cue tips
Billiard markers
Billiard table cushions
Bite indicators [fishing tackle]
Bite sensors [fishing tackle]
Bladders of balls for games
Chalk for billiard cues
Christmas tree stands
Christmas trees of synthetic material
Cricket bags
Edges of skis
Fairground ride apparatus
Fish hooks
Floats for fishing
Golf bags, with or without wheels
Gut for fishing
Gut for rackets
Kite reels
Lines for fishing
Novelties for parties, dances [party favors, favours]
Protective paddings [parts of sports suits]
Rollers for stationary exercise bicycles
Scrapers for skis
Seal skins [coverings for skis]
Ski bindings
Strings for rackets
Wax for skis
Sole coverings for skis.
The mark was filed in class 37 with Mending clothing, shoe repair, washing, laundering, leather and fur care, cleaning and repair, cleaning of clothing, dry cleaning, pressing of clothing, linen ironing, renovation and repair of clothing, fulling of cloth, shoe repair.
The mark was filed in class 40 with Services in relation to treatment of materials. Applying finishes to textiles, bleaching embroidered fabric, shoe staining and cloth dyeing, planing, custom fashioning of fur, cloth cutting, dressmaking, leather staining and leather working, tanning, quilting, cloth pre-shrinking, fabric waterproofing and fireproofing, crease-resistant treatment for clothing, wool treating, fur glossing, fur satining and dyeing, fur conditioning, clothing alteration, cloth edging, tailoring, textile treating, cloth cutting and dyeing, textile and fur mothproofing.
The mark was filed in class 42 with following description of goods:
Medical, hygienic and beauty care
Veterinary and agricultural services
Legal services
Scientific and industrial research
Computer programming
Services that cannot be placed in other classes
Rental of evening dress, uniforms and clothing, industrial design, dress designing, design of interior decor, knitting machine rental, fashion information, technical and chemical research, textile testing.