ZARA Loses Its Appetite: the General Court Rules for “pastaZARA” in a Cross-Sector Trademark Clash

In Case T-425/24, Ffauf Italia SpA applied on 25 June 2008 to register the figurative EU trade mark “pastaZARA Sublime” for pasta and related food products (Class 30).

Inditex SA, owner of the famous ZARA mark for clothing (Class 25), opposed registration under Article 8(5) of Regulation 40/94, arguing that the use of “pastaZARA” would take unfair advantage of, or be detrimental to, the repute of the ZARA brand.

The EUIPO Opposition Division upheld the opposition, and the Board of Appeal confirmed that decision. Ffauf Italia then appealed before the General Court of the European Union, seeking annulment under Article 263 TFEU.

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Legal issues

The dispute revolved around the conditions of Article 8(5):

1. Whether ZARA enjoyed a reputation in the EU at the filing date (2008);
2. Whether there was similarity between “ZARA” and “pastaZARA Sublime”;
3. Whether the relevant public would make a link between the two marks;
4. Whether any unfair advantage or detriment would occur; and
5. Whether the applicant could rely on a “due cause” defence, given its long-standing use of the “pastaZARA” name.

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Court’s assessment

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1. Reputation confirmed

The Court accepted that ZARA enjoyed substantial reputation in the EU for clothing and fashion accessories at the relevant date. Nevertheless, such reputation alone does not automatically establish the “link” required by Article 8(5).

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2. Weak similarity between the signs

The Court held that visual and conceptual similarity were weak, and phonetic similarity moderate at best:

• The contested mark includes several additional elements (“pasta”, “Sublime”, figurative design) that dilute the distinctiveness of “ZARA”.
• Conceptually, the fields of fashion and food are far apart, and “pastaZARA” evokes an Italian culinary tradition rather than a clothing label.

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3. No “link” in the public’s mind

Despite the strong renown of ZARA, the Court considered that consumers would not associate a pasta brand with a fashion brand.

The sectors were neither competing nor complementary, and in 2008, the concept of “lifestyle” cross-branding between fashion and food was not established enough to justify such a connection.

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4. Just cause established

Even assuming a potential link, the Court recognised a “due cause” for Ffauf Italia:

• Long-standing, good-faith use of the “pastaZARA” name since the 1960s/1970s;
• Historical reference to the Adriatic city of Zara (Zadar), origin of the founder’s family;
• Wide commercial presence in Italy and other Member States;
• Absence of any intent to exploit the reputation of ZARA in fashion.

This justified coexistence and excluded the application of Article 8(5).

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Decision

The General Court annulled the EUIPO Board of Appeal’s decision (R 1576/2023-5).

Both EUIPO and Inditex were ordered to bear their own costs and half of Ffauf Italia’s costs.

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Key takeaways for brand owners

• Reputation alone is not enough. The opponent must still show that the public will make a mental “link” between the marks.
• Sector distance matters. Even a famous brand cannot monopolise its name across unrelated industries.
• “Due cause” remains a strong defence. Historic and bona fide use in another sector can justify coexistence.
• Context and timing are crucial. The Court assessed consumer perception as of 2008, not according to later lifestyle trends.