image source, Women in Collaboration
Amber Kotrri took on fashion giant Zara and won the legal battle.
Amber Kotrri, a designer and boutique owner in Darlington, England, grabbed media attention last month when she won a trademark dispute with global fashion company Zara.
Now he hopes to inspire other small businesses to fight conglomerates. The BBC spoke to her and other small business owners regarding her experiences.
Kotrri represented herself, rather than using attorneys, when she faced trademark court.
Armed with only her file notes and a firm belief that she was right, the boutique owner House of Zana faced Zara and won.
The trademark registry supervisor agreed that any similarity between his fashion brand and the fashion retail giant was “too insubstantial and ephemeral”.
Since then, she has been inundated with messages from other small business owners who have also received letters from Zara’s lawyers.
“The letter says that the ‘firm preference of the company is to resolve this matter amicably,’ but there is no middle ground, no chance to discuss anything,” Kotrri says.
“You only have a couple of weeks to sign off saying you will withdraw your trademark application and then another three months to ‘phase out’ your brand name, that’s the only option.”
Trademarks
Rebranding a company is not cheap: you have to change the packaging, the merchandise, the websites and social networks, it all adds up.
Juhi Jain, from Jaipur, India, named his handmade shoe company Zarsá, an amalgamation of the Urdu word Zar and the Hindi affix “sa,” which he says means “like gold,” referring to the thread he uses in its seams.
Jain spent “around $32,000” and spent two years locked in a legal battle following Zara initially sent her an opposition notice in 2017, and then once more when it was renamed Zarsalife.
He finally settled on the name Sozan Jaipur.
image source, Juhi Jain
Juhi Jain changed the name of her business several times following Zara’s legal team contacted her.
“There is no price that can be put on the mental and emotional trauma and depression that I went through during this process,” Jain said.
“I never got any compensation for the legal cost or the merchandise I had to dispose of.”
Trademarks are extremely important to businesses, they can be bought and sold like other assets, or licensed to third parties, which can make them significant revenue generators.
In the UK, big brands employ teams to monitor the use of similar names through the Intellectual Property and Companies Office.
Mark Caddle, a partner at European intellectual property firm Withers & Rogers, said trademarks stop the unauthorized use of copycat or competing brands, which can confuse consumers.
It warns that any small business that ignores these Zara rebrand demand letters that they may face further legal action.
“If the letter goes unanswered, a trade mark opposition is likely to be filed with the UK Intellectual Property Office, as happened in the House of Zana case,” it says.
“Depending on what happens with this, the brand owner may decide to file a trademark infringement action in court, with the goal of enforcing a rebrand.”
Zara is owned by Inditex, one of the largest fashion distribution groups in the world. with more than 6,400 stores of different brands, including Bershka, Pull & Bear and Massimo Dutti, and employs more than 160,000 people.
“It is the group’s responsibility to protect its brands and trademarks where there is a risk that customers, or any other interested party, will be confused,” an Inditex spokesman said.
“We always seek to avoid legal proceedings related to trademark registration whenever possible.”
image source, Tim Ireland/PA Wire
Other cases
Leeds graffiti artist Steve Powell, or Ste Rex, sold streetwear under the STRX brand.
But he received a legal letter last July from clothing brand Stradivarius, also owned by Inditex, saying it was too similar to his STR Teen line.
“I hadn’t heard of Stradivarius,” says Powell. “I thought it was a violin company, and I said, ‘How dare they contact me regarding the similarity in names?'”
He said he didn’t want to “lose money” so he “sent some emails” before changing the name of his clothing line to REXNTRIC.
Another businessman contacted by Zara was Moien Tayari, from London, who ran a dried fruit and spice company called Zaravand, named following his wife’s birthplace in Iran.
image source, Moien Tayari
Moien Tayari spent regarding $4,300 trying to preserve his company’s name.
Tayari says that business experts advised him to “forget fighting a big company” as it would cost too much.
He spent regarding $4,300 on “some legal letters” trying to preserve the name, but with costs spiraling, he ultimately opted to rename his company Zoetic Ltd.
He says he doesn’t think it’s okay that big companies can “intimidate small businesses” because of small differences in a trademark, emphasizing that he found the process emotional and exhausting.
“It leaves you exhausted,” says Tayari.
“It’s another obstacle to what you’ve already achieved. For us it meant throwing away the labels that he had just ordered at a cost of US$650.”
“It was almost like having to restart the business.”
image source, Ste Rex
Steve Powell – or Ste Rex – changed his clothing brand following a legal letter from Inditex.
In the UK, the Federation of Small Businesses (FSB) has called for a government-backed resolution service for cases like these.
An FSB spokesman says that small businesses need more support when it comes to protecting intellectual property and, when a dispute arises, the agreement should be “simple, quick and easy to obtain”.
He notes that a commercial dispute resolution service might “assess potential disputes at an early stage”, avoiding potentially costly legal fights.
The Intellectual Property Office (IPO), which has jurisdiction to register trademarks, said it was aware of the problems for small businesses and welcomed suggestions that would make disputes “easier and faster”.
Nevertheless, Not all trademark disputes cause heartache and disappointment.
In May, the owner of the Star Inn pub in the town of Vogue, England, was surprised when he received a letter from Vogue, the fashion magazine, saying he had been alerted to the name of the pub by the Companies Office.
The publisher, Condé Nast, later apologized and provided the pub with a framed version of the apology “from one Vogue to another”, explaining that further investigation by his team had shown that “we didn’t need to send that letter on this occasion “.
For Kotrri, her fight once morest Zara was born out of a determination not to have to explain to her children that she gave in because “someone bigger told me.”
And his advice to others in the same situation is: “You know your business best, you know the meaning behind the name, so fight for it and don’t give up.”
Your House of Zana brand will now be registered.
Zara declined to comment on Kotrri’s case, but said he “continues to wish” her and her business “future success.”
The company might still appeal once morest the decision, but for now Kotrri is designing his next collection in peace.
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