JUDGMENT

Edwin Paramjothy Michael Muniandy JC:

[1] Plaintiff filed two applications via WA-24IP-5-01/2025 and WA-24IP-6-01/2025, to this court, seeking to appeal against the decision made by the learned Registrar of Trademarks on December 16, 2024 in dismissing Plaintiff's Notice of Opposition against the registration of Defendant's Trademark Application under Class 35 and Trademark Application under Class 16.

Background Facts

[2] Plaintiff is a company established and incorporated in Spain since 1985. It operates as a global entity comprising over 100 companies engaged in the design, manufacture, and distribution of textiles.

[3] Plaintiff is in the business of selling and manufacturing clothing, accessories for men, women and children. It is the registered owner of the "" and "" trademarks under class 35 and class 16 ("Plaintiff's Zara Trademarks").

[4] The plaintiff's first 'ZARA' retail store, specializing in clothing and other apparel was launched in July 1975 in A Coruña, Spain, by Plaintiff's founder. Since then, the 'ZARA' chain of retail outlets has experienced exponential growth, becoming a prominent name in the trade of clothing, textiles, and household goods both within Spain and internationally.

[5] Since the year 2000, Plaintiff has been involved in the manufacture of clothing articles bearing the 'ZARA' trademark for export purposes. This has been facilitated through various factories and sourcing arrangements within Malaysia.

[6] On or around May 30, 2003, Plaintiff, through its franchisee Gagan (Malaysia) Sdn Bhd., opened its first ZARA retail outlet in Malaysia. Following this, other ZARA outlets were launched across Kuala Lumpur, Malaysia.

Plaintiff's Class 35 Trademarks

[7] In Class 35, Plaintiff owns the registered 'ZARA' trademarks as early as year 1998, which are enlisted below as follows:

[8] The plaintiff's Class 35 trademarks cover a comprehensive range of business and commercial services, including advertising, marketing, retail and wholesale operations (both physical and online), business management and administration, office functions, and promotional activities such as trade fairs, exhibitions, and sales promotions. They also extend to import-export agency services, procurement, data management, database compilation, public relations, document reproduction, and various forms of advertising across media platforms (radio, television, online, and mail order). In essence, these registrations encompass the full spectrum of services relating to the management, promotion, and administration of commercial enterprises and marketing activities.

Plaintiff's Class 16 Trademarks

[9] Specifically in Class 16, Plaintiff owns registered 'ZARA' trademarks which are enlisted below as follows:

[10] The plaintiff's Class 16 trademarks cover a broad range of paper-based and printed goods, including stationery, printed publications, photographs, and bookbinding materials, as well as office and artistic supplies such as adhesives, paintbrushes, inks, and canvases. They also include packaging and disposable paper products like wrapping paper, napkins, and hand towels, along with printed promotional and decorative materials such as posters, catalogues, calendars, and picture cards. In essence, these registrations encompass materials and products commonly used for printing, writing, packaging, advertising, and everyday office or household purposes, all falling under Class 16.

Defendant's Trademarks

[11] Defendant is in the business of textiles and wholesaling & distribution of home furnishing fabrics. Defendant owns the "" and "" trademarks ("Defendant's Trademarks").

[12] On 30 December 2011, Defendant filed for registration of the "" trademark in Class 35 under Malaysian Trademark Application No 2011023054 in Malaysia.

[13] The defendant's trademark was applied for in respect of a broad range of services falling within Class 35, including "the bringing together, for the benefit of others, of a variety of goods, enabling customers to conve