The legal doctrine of passing off is based on the principle that “No one is to sell their own goods under the pretence that they are the goods of another”.
Zara v House of Zana
Retail giant Zara recently launched legal action against an independent fashion boutique, House of Zana, over the “identical” branding of the two companies. Zara objected to the boutique’s trademark application, claiming the name of the brand is “conceptually identical” and was of the view that the average consumer is likely to confuse the two.
However, the boutique firm stated there was “no risk of confusing the brand” with that of the high street giant Zara.
3 Stage Test
To establish passing off, there is a 3 stage test:
- The Claimant’s goods or services have acquired goodwill or reputation in the marketplace that distinguishes such goods or services from competitors;
- The Defendant misrepresents their goods or services, either intentionally or unintentionally, so that the public may have the impression that the offered goods or services are those of the Claimant; and
- The Claimant may suffer damages because of the misrepresentation.
In Zara v Zana the Judge stated: “I am satisfied that the differences between the (trade) marks…are sufficient to rule out the likelihood of direct confusion on the part of the average consumer”.
He added: “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”.
The Judge was satisfied any “mental link” made by customers between House of Zana and Zara would be “too insubstantial and fleeting” to result in an “exploitation” of Zara’s reputation.
This case highlights the challenges of successfully establishing passing off.
Zara’s passing off claim focused on the ways in which The House of Zana had likened its branding to the Claimant’s branding. However, the judgment made it clear that an act of passing off will not succeed unless it also creates confusion in the minds of consumers. The test for passing off is focused on obtaining evidence of consumer confusion, rather than the way in which a business markets its brand, allowing the Defendant to “ride on the coat-tails” of another brand.