“ZARA” VS “ZARA WINES Z TIGRANI /Trademark battles
The Civil and Administrative Chamber of the Court of Cassation of the Republic of Armenia (hereinafter referred to as the Court of Cassation) referred to the issue of the similarity of the ZARA WINES Z TIGRANI trademark and the ZARA trademark in the administrative case No. VD / 5614/05/15.
The RA Court of Cassation once again affirmed that in the trademarks the object of protection is only the main distinctive element, except that when the additives made to the relevant mark distinctly change that sign thus the main / distinctive/ element loses its individuality and distinctive meaning.
In the case of similarity of trademarks, the RA Court of Cassation has reaffirmed its position that when determining the simulation of the combination of trademarks, they are also compared with the signs (literal, pictorial, etc.) which are incorporated into the relevant combined trademark.
The Court of Cassation of the Republic of Armenia has concluded that, in the comparison of a trademark, the element of distinctive significance shall first be taken into account, regardless of the presence of additional and purely symbolic elements. That is, if the trademark repeats a distinctive element, it can be concluded that it has a confusing degree of similarity.
A comparison should be made the subject of trademarks as a whole; in order to create the same situation as the consumer has, because the latter does not have two signs, in order to be able to find their distinctive features. Based on the fact that the main purpose of a trade mark is to identify the goods and direct potential consumers, in assessing the similarity of trademarks must also take into account the level of development and preparedness of consumers.
Referring to the fact that when comparing the two trademarks the court should take into account the similarities or differences of the trademarks, the RA Court of Cassation has referred to its former position that when comparing trademarks it is necessary to pay attention to the distinctive similarities of those marks) regardless of the presence of additional and insignificant elements. That is, if the product mark repeats a distinctive element, one can conclude that it has a degree of confusion. This kind of approach to the question of the similarity of trademark marks is explained by the fact that when choosing a product, the consumer primarily pays attention to the trademark and when looking to this TM finds the main components of the well-known trademark, may gain false confidence in the manufacturer’s product line without noticing the slight differences which the consumer could only notice when comparing those two trademarks next to each other (see “Yerevan Brandy Company” CJSC against VD / 4241/05/11 of the RA Ministry of Economy’s Intellectual Property Agency’s decision dated 18.07.2014, RA Cassation Court).
As a result, the cassation complaint was satisfied in favor of ZARA and the case was sent to a new investigation, and in spite of the fact that both trademarks are registered in different product categories, registration of the ZARA WINES Z TIGRANI mark is most likely to be deemed as void.