The recent ‘Zara’ versus ‘Zara’ case involves the well-known Spanish fashion company Inditex, owner of the famous clothing brand, and Ffauf Italia S.p.A., a company operating in the food sector, renowned for the production of dried pasta under the “Pasta Zara” brand.
The Case
Inditex, owner of the ZARA trademark, registered in 2001 for numerous products and services in classes 3, 9, 14, 16, 24, 25, 28, 37, and 40, filed a lawsuit against Ffauf Italia seeking a declaration of nullity of the latter’s national figurative trademark. This trademark represented a rebranding of the old Pasta Zara sign, which, however, eliminated the word “pasta” and the characteristic red oval.
Now, despite the Court initially ruling in favor of Ffauf, the Court of Appeal, overturning the decision of the lower court judge, held that the company in question had modified its trademark in such a way as to make it (too) similar to ZARA, especially from a graphic point of view.
This behavior was interpreted as an attempt to exploit the reputation of the clothing brand, taking advantage of its distinctive character to gain an unfair advantage. It was emphasized that ZARA, one of the most well-known brands in the world in the fashion sector, had acquired such a reputation as to prevent its use in sectors even very distant from its original fashion domain.
For these reasons, the Court of Appeal applied Article 12, letter e), of the Industrial Property Code, which prohibits the registration of trademarks identical or similar to well-known trademarks if such registration could damage the pre-existing trademark or unfairly take advantage of its reputation.
On this point, it was reiterated that a well-known trademark is a sign that has reached a high degree of recognition among the public, so much so that it has become universally recognized in a specific sector.
The distinctive feature of these trademarks is precisely their fame, which makes them immediately recognizable, even when applied to products belonging to different product categories. For this reason, well-known trademarks enjoy extended protection, that is, also extended to protection against attempts at unfair exploitation.
Conclusions
The case then reached the Supreme Court of Cassation, which, with judgment 1153/2025, upheld the appeal court’s decision.
In particular, the court of last resort held that the rebranding carried out by Ffauf was aimed at exploiting the reputation of the ZARA trademark, being, in essence, characterized by the abandonment of those distinctive elements (the word “pasta” and the round element) that served to differentiate it from Inditex’s trademark.
With this ruling, the Supreme Court of Cassation returns to pronounce on the protection of well-known trademarks, reiterating that if a company modifies its trademark making it too similar to a well-known trademark, it implies the intention to latch onto its fame to unfairly take advantage of its reputation, thus violating the “extra-sectoral” protection of the renowned trademark.
Giulia Mugnaini