Raenelle Manning is an IPilogue Writer and at 2L J.D Candidate at Osgoode Hall Law School.

The global fashion distributer, is currently engaged in a trademark dispute with Amber Kotrri, the owner of “House of Zana.” House of Zana is a fashion boutique in Darlington, England that specializes in handmade kimonos and other garments. In April 2022, ZARA submitted a notice of opposition to Kotrri’s trademark application, claiming that brand names were “conceptually identical” for customers. ZARA’s lawyers also urged Kotrri to change her business name and remove all existing branding. Kotrri has refused to comply expressing that it would cause “irreparable harm to her business”. The occurred on March 25 2022, where Kotrri defended her business arguing that there is no similarity between the two brands.

Under third party trademark owners have two months to file a formal opposition after a trademark application is submitted. Generally, an will assert that the similarity of the trademark will cause confusion or that the trademark application covers similar goods/services. At the tribunal hearing, ZARA that the brands’ oral and visual similarities will lead consumers to “misread, mishear, mispronounce and/or otherwise perceive House of Zana as ZARA.” Further, ZARA alleged that sales could be affected if the average consumer accessed the House of Zana website erroneously when trying to find ZARA. It seems unlikely that people would confuse the popular high-street fashion retailer with a small boutique. Despite the aural likeness of the brand names, the logos are quite dissimilar. The House of Zana logo is written in an italicized font; this is distinct from the bold ZARA logo. ZARA is a globally recognizable brand with , whereas House of Zana has one store location. 

Other small businesses have been victims of ZARA’s vigilant trademark enforcement. Last year, ZARA also filed trademark oppositions against 23-year-old , the owner of “Zara Ceramics.” She received a letter from ZARA’s attorneys demanding that she rebrand within a year because the business name undermined ZARA Home. She eventually changed the name to “Zara McLaughlin Studios.”. Tara Nguyen, the owner of a small online fashion retailer, “Tara Sartoria” is also currently fighting back against a trademark opposition from ZARA.

IPilogue Writer Sally Yoon recently discussed the concept of a trademark bully in one of her on Apple’s numerous trademark opposition filings. To reiterate, a is loosely defined as “a larger or well-known company that takes a hyper-aggressive approach to asserting their trademark rights, sometimes to the point of absurdity”. ZARA is an established multi-national business with the legal resources to target these smaller businesses with trademark oppositions and infringement. Small-owned business are not likely to have the means to fight back and may end up financially suffering . For example, admitted that responding to ZARA’s letter of opposition cost her business “almost all of their resources”. Fortunately, by publicizing the incident, Amber Kotrri was able to acquire free legal services and significant public support, including over 85,000 signatures on a demanding that ZARA withdraw their legal action.

While public empathy tends to lean towards the smaller business in these disputes, the encourages trademark owners to actively police potential trademark infringement. Trademarks are important for any sized business to protect their investments from potential exploitation. This raises questions about whether ZARA is a trademark bully or justifiably enforcing their trademark rights.  The House of Zana trademark ruling decision is set to be delivered later this year.

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In order for the turnover of styles and inventory to be profitable for fast-fashion retailers, costs must be cut somewhere. As such, intellectual property (IP) law and labour law issues have become increasingly ubiquitous for fast fashion brands and have drawn condemnation in the court of public opinion. For example, fast-fashion retailers, such as H&M, are increasingly facing scrutiny with respect to their .

Furthermore, international fast fashion retailer, , is no stranger to IP law disputes.

This time, Zara has set its sights on the innovative and contemporary clothing brand ACRONYM and has debatably copied its famous “functional strap” outerwear. Is it fair for Zara to copy a design that costs ACRONYM a significant amount of time and to produce?

As noted by the Toronto-based style law blog , which was co-founded by myself and IPilogue colleague Alessia Monastero, Zara’s repeat offences do not go unnoticed. In fact, two of Zara’s most notable IP disputes involve ACRONYM and .

In this case, ACRONYM founder, , has been selling its impeccably made coats for over 10 years. In fact, it has become known for its high-quality garments that are made to last. These designs feature a “functional strap” on the insides of the coats and contain a label that reads: “Interior crossbody strap allows wearer to carry over their shoulder.”

: ACRONYM, : Zara's Imitation Label

Aside from its creative designs, ACRONYM also uses a unique advertising plan, which markets the brand almost exclusively to fashion enthusiasts. For example, unlike mainstream brands, such as Chanel and Louis Vuitton, ACRONYM does not advertise on television, does not heavily seek out celebrities as ambassadors, nor aggressively use social media for promotion and marketing. Nevertheless, many have slowly started to become aware of the label due to Hugh’s partnerships with Stone Island and Nike.

The aim of copyright law, generally, is the protection of copyright owners to disallow others to copy one’s work without permission. The promise of this protection promotes creativity and the orderly exchange of ideas. However, it seems as though Zara does not entirely care about such protective mechanisms, since it is to copyright infringement. Perhaps, the revenues from selling copied designs en-mass offsets their litigation costs, though this is just speculation.

ACRONYM is protected by its , which was filed and published in 2003. Under this , ACRONYM “has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.” Zara’s functional strap certainly meets all of these criteria.

The United States Court of Appeals in , stated, “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

Since the primary difference between the ACRONYM and Zara products is the quality of the material, an “ordinary observer” can very easily mistake the two labels since a reasonable shopper normally does not spend a lot of time examining the nuances of product quality. In essence, the products appear “substantially the same”.

Zara’s defence relies on a “sufficient distinction” between the two products. However, as seen in , the threshold for this is quite high. What constitutes as “sufficiently distinct” is often an additional part to the product or a substantial difference in the overall look. Given that Zara’s imitation does not, in fact, make a significant change to the original ACRONYM design, it is unlikely that a court will view it as being “sufficiency distinct”. Even if the court does find a distinction, it may decide to look at the prior art to ensure that no confusion will take place with respect to the product.

It nevertheless seems unfair that Zara is able to provide its consumers with a product that looks very similar to one that is being sold for almost 6 times its price point. However, since the onus remains on the party alleging the infringement to bring the issue forward, some labels may think that the cost of litigation –both time and effort– does not present a valuable trade-off.

Take ACRONYM, for example, with designs that are incredibly well made. While ACRONYM takes a detail-oriented approach to the quality, style, and longevity of their products, Zara’s research mostly consists of the latest trends and looking at the designs of other labels. As such, Hugh is not bothered by the copycats that have set their sights on the label, especially the fast fashion retailers that focus solely on style and very little, if at all, on quality. This is because Hugh does not feel as though he is losing the customers who prefer to purchase Zara’s cheaper imitation for the look as opposed to the quality. In fact, when asked his opinion on Zara’s imitation of the signature jacket, Hugh reportedly  with a simple: “LOL.”

Well played.

Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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The case that has gotten the most publicity is that of Los Angeles-based illustrator , though others have come forward citing similar suspicions of copying, including of Toronto and of New 91��ɫ. Kurtz created to consolidate the comparisons of the artists’ work and Zara’s alleged copies. His site shows the artist’s designs and the Zara version, much as Bassen did in an Instagram .

According to Bassen’s Instagram account, having been alerted to the similarities between her pieces and Zara’s, Bassen reached out to Zara’s parent company Inditex to seek compensation for the use of her designs. The retailer denied that there had been any copying and stated that her worked sufficient to be associated with her, noting that their websites’ traffic was very large and that Bassen was an independent artist who few would recognize. As Bassen , she is taking legal action against Zara, and is willing to go to trial if necessary. Nevertheless, she that for an independent artist to take on a retailer of that size, the costs alone can be prohibitive, regardless of the legal merit of the case.

But what of the legal merit? Any claim made by Bassen and other artists will rely on their work having copyright and on Zara having infringed on its rights by copying a substantial part of their work. They will also have to overcome possible objections, including Zara’s assertion of indistinctiveness and lack of recognition (though the latter as we will see is fairly irrelevant).

Based on the company’s response, as posted on Bassen’s , Zara does not appear to fully the copyright issue in its exchange with Bassen. Indeed, it seems to associate distinctiveness and recognisability with ownership rather than delving into what actually has copyright. Assuming Bassen’s and other artists’ works are not themselves copied, they certainly look like they are artistic works created with a degree of (the Canadian originality standard). Assuming this is the case, their fame has nothing to do with their copyrightability. A second issue is whether Zara infringed copyright by copying a of the works. A cursory glance of some of the demonstrates at least some level literal copying and thus prima facie infringement.

The analysis cannot stop there. The case is very much being tried in the and conclusions are being drawn based solely on the similarities between the artists’ and Zara’s pieces. This ignores the complexities of copyright.

Zara’s arguments (at least as presented thus far) are not helpful in coming to a legal conclusion, though the distinctiveness issue must be considered. As points out, whether the public can associate the works with the artist is a matter of trademark law, not copyright law. Zara cannot make use of the argument that people do not know who Bassen is, and to make such an argument is disingenuous. The tactic seems to be more one of discouraging legal action than one of proper legal argument.

Here, however, the artists are not seeking a monopoly over a simple image or common artistic element. At least some of the are and by and large do not represent the only way to portray something. Furthermore, where the designs also contain phrases and other added characteristics (such as Bassen’s eraser with “Erase You”), it is even more difficult to suggest that you were merely employing a common image. For example, the silhouette of palm trees might be common stock, but the same silhouette with “” superimposed is considerably more original. In order to succeed on these grounds, Zara would have to show that giving the works copyright would monopolize the depiction of certain subject matter. Looking at for instance, though, it is easy to imagine many other ways in which Zara could have chosen to depict their version.

Where Zara does appear to make a valid copyright argument is in charging indistinctiveness. Firstly, if there is insufficient originality in the pieces, there is no copyright to begin with. Alternatively, if the works are such that the idea they express (say, a ) can only be expressed in one or a small number of ways, the merger doctrine can prevent the article from gaining copyright protection. In , it was held that a jeweled bee pin could only be bejeweled in so many ways, and so it would not have copyright. The idea of course is that an artist cannot have an unfair monopoly over pins that look like bees. Zara is certainly not prevented from selling a pin shaped like a cloud.

An interesting question remains open as well: whether jewelry is a useful article. This is important because, per , the aesthetic features of the design (or the visual configuration) of a useful article (“an article that has a utilitarian function”) is not protected where the article is produced in a quantity of more than 50. Therefore, if Bassen’s pins were produced in such a quantity, and they are found to be a useful article, the only protection would come from registration under the .

In the most recent decision in Canada, Pyrrha Design Inc. v. 23735 Saskatchewan Ltd.,[1] the motions judge found jewelry to be “clearly” a useful article in deciding if there was a genuine issue to be tried. However, the Federal Court of Appeal found that determination not to be correct in law and ordered that the case proceed to trial for adjudication on the merits. The case was later settled, so there has been no judicial determination as yet as to whether jewelry would fall under the Industrial Design Act. While it is clear that articles to be worn are useful, policy must prevent such an argument being used to appropriate artists’ creativity merely because their medium happens to be “useful” in some ways. While basic clothing certainly serves a utilitarian function, it would not make sense to extend that definition to almost exclusively artistic wearables like jewelry (admittedly, items like watches present more of a definitional challenge). To do so would undervalue the artistic value of artists who work in wearable mediums compared to those who, say, paint on canvas.

It is not uncommon for companies like Zara and Forever 21 to face . In 2011, it was estimated that for stealing and passing off other artists’ work (many were much more famous than small independent artists, such as Diane von Furstenberg). It had lost none of those cases. Given the financial resources of companies like these, it is easier for them to out of court, which often means they do not have to admit guilt. Combined with the complexities of applying copyright (or any other intellectual property laws) to fashion, it is not surprising that rip-offs by big retailers exist.

Whether a case like this goes to trial is hard to predict, though the imbalance in financial resources means going to court would be very burdensome for the plaintiffs. Were it to get that far, however, Zara would be hard-pressed to show that it did not copy some of its designs from independent artists. Being faced with having to make actual legal arguments, a copyright analysis demonstrates that Zara would find it challenging to assert the absence of copyright in the original works or the applicability of the merger doctrine (or, for that matter, that trade-mark principles apply to a copyright case).

Sebastian Beck-Watt is the IPilogue’s Content Editor and a JD Candidate at Osgoode Hall Law School.

[1] Pyrrha Design Inc v 623735 Saskatchewan Ltd (cob SpareParts), 2004 FCA 423, [2004] FCJ No 2084.

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I have Christian Louboutin’s dispute with Yves Saint Laurent in the US, with respect to YSL’s use of the red-soled shoes.  Christian Louboutin suffered a blow when he a preliminary injunction against YSL’s use of the red-soled shoes.  The decision went a step further and called into question the registrability of Christian Louboutin’s trade-mark or whether any color can be registered in the fashion industry.  (This decision is currently being appealed).  Needless to say, some parties were less than delighted with the decision and we saw Tiffany and INTA put in their two cents.

Malheuresement, Christian Louboutin has suffered another blow.  Christian Louboutin took the high-street store Zara to court over its use of red-soled shoes in France.  Although Christian Louboutin initially won, Zara appealed on the basis that Christian Louboutin’s trade-mark registration was too vague (i.e. the registration did not include a Pantone color claim).  Christian Louboutin was unsuccessful in appealing Zara’s victory.  The French court of appeal recently issued its decision in favour of Zara.  Adding insult to injury, Christian Louboutin was also required to pay some of Zara’s legal costs as compensation.  This decision does not extend beyond France.  In the meantime, Christian Louboutin is attempting to mitigate any further damage to its brand by filing a new trade-mark application that has a narrower and more specific color claim.

Christian Louboutin’s struggle to maintain its brand monopoly has piqued a lot of interest from lawyers, consumers and the media.  I have had the opportunity to discuss this on many occasions and I am always fascinated at how polarizing the debate is.  Whereas some believe Christian Louboutin’s position to be ridiculous (generally, these are not trade-mark professionals or fashionistas), others strongly believe that Christian Louboutin is “famous” for its red-soled shoes and should reap the benefits.  To a large extent, this goes back to the age-old debate:  Is fashion art?  Or is fashion innately functional?  In an industry where trends are a central concept, is infringement acceptable?  If one shoe is sold at the $1,000 starting point, can there really be confusion with a similar shoe that is sold at the $50 starting point?  If the function of intellectual property laws is to reward ingenuity, why is fashion design piracy more acceptable?

Ashlee Froese is a branding and fashion lawyer at Gilbert’s LLP and runs the fashion law website . Follow her on twitter .

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