The trademark landscape is often marked by disputes as established brands expand into new industries. One such case, which attracts attention, involves Inditex, Zara’s parent company, and the Sicilian coffee roaster Zicaffe. The conflict arose after Zara filed an application for registration of the ZACAFFE trademark with the European Union Intellectual Property Office (EUIPO), prompting Zicaffe to file an opposition based on similarity and possible consumer confusion.
Context of the dispute
On October 7, 2024, Inditex filed a trademark application with the name ZACAFFE with the EUIPO, signaling its entry into the coffee industry. This expansion aligns with Inditex’s broader strategy to blend retail with lifestyle, exemplified by the introduction of in-store coffee areas in cities such as Paris, Lisbon and Madrid. The first Zacaffe café was opened in a Zara Man store in Madrid, further reinforcing this change.
However, ZICAFFE, which has held a registered trademark since 2010, filed the opposition on December 25, 2024. The company claims that ZACAFFE closely resembles its own ZICAFFE brand visually, phonetically and conceptually, creating a high risk of confusion among consumers.
In terms of visual and phonetic similarity, both ZICAFFE and ZACAFFE have an identical structure and length, as well as the descriptive term ‘caffe’, directly related to the coffee industry. The differences between the prefixes “Day” and “Za” are minimal. Moreover, in European languages such as Italian, where the pronunciation is uniform, the phonetic similarity is particularly strong.
Conceptually, the word “coffees” inherently associates both brands with the coffee industry. Although the “ZI” in ZICAFFE may suggest a connection to Sicily in certain Italian dialects, this nuance is lost on the general consumer. Similarly, the ‘ZA’ in ZACAFFE, which alludes to Zara, would not be immediately recognised by the public unfamiliar with Inditex’s brand strategy.
Relevant case law
Previous cases at the EUIPO suggest that minor differences between trade marks do not necessarily eliminate the likelihood of confusion. Key decisions include:
- SABEL v. Puma (C-251/95): The assessment of the likelihood of confusion by the public depends on numerous factors and, in particular, on the recognition of the earlier mark on the market, on the association that can be made with the registered mark, on the degree of similarity between the marks and between the goods or services identified. It must be assessed globally, taking into account all the factors relevant to the circumstances of the case. This global analysis also applies in this case, as ZICAFFE is a well-established brand in the coffee industry, and the phonetic and visual similarity to ZACAFFE increases the risk that the public will associate them.
- Canon v. MGM (C-39/97): Highlighted the fact that consumer attention in the case of consumer goods, such as coffee, is relatively low, increasing the risk of misidentification.
Why is this case important?
This dispute goes beyond the simple infringement of a trademark; highlights broader issues related to brand identity, market expansion and the limits of diversification. As fashion giants like Inditex explore new business areas, the challenge is to maintain brand distinctiveness without infringing on the rights of already established entities in those sectors.
The case underlines an essential principle in trademark law: the protection of a trademark extends only to the classes of goods and services for which it has been registered. Thus, if a company wants to enter a new field, a new trademark application is required. However, before application, it must be checked whether there are no similar or identical trademarks already in that new field.
The EUIPO’s decision will be closely watched as it will not only affect ZICAFFE and ZACAFFE, but will also shape the strategies of global brands looking to diversify their portfolios.
If you intend to register a trademark or expand into new areas of activity, the TAS agency is ready to provide you with professional advice and assist you in the registration process. Contact us to protect and develop your brand in domestic and international markets. You can find us at the e-mail address: office@agentiatas.ro or by phone +40745160163.
