I.A. No. 11760/ 2013 (O. XXXIX Rules 1 and 2 CPC)

1. By virtue of this application under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (CPC), the Plaintiff (Applicant) seeks ad interim injunction restraining infringement of its trademark/trade name ZARA, passing off, dilution of its trademark/trade name and delivery up against the Defendants.

2. The case set up by the Plaintiff is that the Plaintiff is an internationally reputed company engaged in the manufacture, design, sale and distribution of fashion and related lifestyle products in various classes of International Classification of Goods and Services. In India, the Plaintiff carries out commercial operations through its associate company, Inditex Trent Retail India Private Limited, a joint venture between the Plaintiff and Trent Limited of well known Tata Group Company. It is the case of the Plaintiff that the Plaintiff coined, conceived and adopted ZARA as its trademark in 1975 and opened first ZARA shop 38 years ago in A Coruna, Spain. The domain name zara.com was registered by the Plaintiff on 29th May, 1997 and the same has since been in continuous use of the Plaintiff.

3. It is averred that ZARA stores are located in some of the most privileged and prominent locations in several major cities around the world including New York’s 5th Avenue, Paris’s Champs Elysees, London’s Regent Street and Tokyo’s Shiyuba Shopping Centre. The Plaintiff had 1763 ZARA stores, 171 ZARA KIDS stores and 364 ZARA HOME stores in over 86 countries. The products bearing Plaintiff’s ZARA marks are manufactured in various countries including India, which are then exported to the Plaintiff at various locations. In India, garments and other articles bearing Plaintiff’s ZARA mark have been specially manufactured since 1986-87 by Plaintiff’s Indian manufacturers.

4. The Plaintiff has been using its trademark ZARA and its derivatives like ZARA KIDS, ZARA HOME, ZARA FOR MUM, ZARA MAN, ZARA WOMAN or TEXTURES ZARA on a global scale. The Plaintiff had turnover of over 3310 million Euros in 2003 which has risen to 10,541 million Euros in the year 2012. In India, the total sales of ZARA products in the very first year of operation was Rs. 120 crores which rose to over Rs. 384 crores (annually) within two years i.e. in 2012.

5. It is averred that ZARA trademark is one of its most valuable assets and the same has featured in top 50 brands among 100 most valued trademarks in the world as per the Interbrand rankings, with a brand value exceeding US$ 9.4 billion. The Plaintiff’s mark has thus, become a well known mark within the meaning of Section 2 (1) (zg) of the Trade Marks Act, 1999 (the Act) and thus, the Plaintiff is entitled to protect its mark ZARA against identical or confusingly similar marks even in respect of goods and services which are not same or similar to the goods and services of the Plaintiff. It is averred that the Plaintiff has been vigilant in protecting its ZARA marks and has been enforcing its trademark rights against all forms of infringement and dilution. In a number of oppositions filed by the Plaintiff against trade mark applications of various parties for the mark ZARA or other deceptively similar marks, the Applicants have abandoned their applications. It is pleaded that owing to extensive and continuous use of the mark in India since 1986-87 and opening of commercial outlets in the beginning of 2010, the Plaintiff’s mark ZARA has acquired tremendous reputation in India.

6. It is averred that in or around April, 2005, the Plaintiff first came across Defendant no.1’s trademark application no. 1195357 for ZARA TAPAS BAR in Class 16, advertised in Trade Mark Journal 1327 (Suppl.) dated 17th January, 2005 (which was made available to the public on 8th April, 2005). The Plaintiff filed opposition no. MAS-202722 against the said advertised mark which is pending before the Trade Mark Registry, Chennai. In the end of 2012 and beginning of 2013,