Industria De Diseno Textil S.A. (Inditex, S.A.) v House of Zaira Sdn. Bhd. (WA-24IP-5-01/2025)

It operates as a global entity comprising over 100 companies engaged in the design, manufacture, and distribution of textiles. [3] The 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 the 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, the 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, the 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, the plaintiff owns the registered ‘ZARA’ trademarks as early as year 1998, which are enlisted below as follows:- Country Trade Mark No. Mark Class Status Malaysia 98009032 35 Registered Malaysia 03012460 35 Registered Malaysia 2010016457 ZARA FOR MUM 35 Registered [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, the plaintiff owns registered ‘ZARA’ trademarks which are enlisted below as follows:- Country Trade Mark No. Mark Class Status Malaysia 03006223 16 Registered Malaysia 07014165 16 Registered [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] The defendant is in the business of textiles and wholesaling & distribution of home furnishing fabrics. The Defendant owns the “ ” and “ ” trademarks (“Defendant’s Trademarks”). [12] On 30.12.2011, the 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 conveniently view and purchase those goods in a retail outlet, wholesale outlet, departmental store, and through an internet website; advertising; business management; business administration; and retailing services connected to beddings, rugs, curtains and accessories, throw cushions and pillows, furnishing and embroidery fabrics, ladies’ wear fabrics, clothes, fringes, hooks, tie-backs, tassels, curtain tapes, wooden rods, aluminium railings, towels, carpets, and floor mats; all included in Class 35.” [14] The defendant also filed for registration of the “ ”trademark in Class 16 under Malaysian Trademark Application No. 2011023053 in Malaysia. [15] The defendant’s trademark was filed in Class 16 in respect of the following goods namely “Advertisement boards of paper; Advertisement boards of cardboard; Signboards of paper or cardboard; Bags [envelopes, pouches] of paper or plastics, for packaging; Boxes of cardboard or paper; Cardboard; Magazines (periodicals); Newspapers; Packing paper; Writing paper; Envelopes; Printed matter; Posters; Advertising posters; Stationery; Business cards; Adhesive for stationery purposes stickers [stationery]; Car stickers; Photographs; Calendars; Diaries [printed matter]; Catalogues; Pamphlets; Publicity leaflets [flyers]; Letterheads; Wallpaper pattern books; All included in Class 16.” [16] Further to the registration of the “ ”trademark under class 35 and class 16, the defendant also filed for the registration of the “ ” mark under Class 35 and Class 16. [17] Eventually, all the defendant’s trademarks were published on the Federal Government Gazette on 27.09.2012 that entitles any party to file opposition proceedings against the defendant’s trademarks within two (2) months from the date of its publication (i.e. on or before 27.11.2012). Proceedings Before The Registrar of Trademarks [18] In view of the publication of the defendant’s trademarks, the plaintiff filed the opposition proceedings on 27.11.2012 with the office of the Registrar of Trademarks in line with Section 28(1) of the Trademarks Act (TMA 1976) and Regulation 37 of Trademarks Regulations 1997 (TMR 1997) to oppose the defendant’s application for the following marks:- a. “ ” mark under Class 16 with application no. 2011023053. b. “ ” mark under Class 35 with application no. 2011023054. c. “ ” mark under Class 35 with application no. 2011023055. d. “ ” mark under Class 16 with application no. 2011023056. [19] The learned Registrar’ on 16 December 2024 dismissed the plaintiff’s opposition for all 4 marks mentioned above, and allowed the defendant’s Trademarks to proceed with registration. Proceedings At The High Court [20] The plaintiff decided to file the present action under WA-24IP-5-01/2025 to set aside the Registrar’s Decision for the “ ” mark under Class 35. [21] The plaintiff also proceeded to file a similar action in this Honourable Court under WA-24IP-6-01/2025 to set aside the Registrar’s decision for the “ ” mark under Class 16. [22] However, the plaintiff decided not to proceed with the appeal against the decision of the Registrar of Trademarks for the ” mark under Class 35 and Class 16. Issues For Determination [23] The Registrar’s Decision gives rise to the following issues that are essential for the determination of this matter: a. Is the defendant's trademark confusingly and deceptively identical or similar to the plaintiff's ‘ZARA' trademarks? ; b. Is the defendant's trademark distinctive to the defendant at the exclusion of all others?; c. Is the defendant truly the bona fide proprietor of the defendant's Trademark in view of earlier registration and use of the plaintiff's ‘ZARA' trademarks? ; and d. Do the plaintiff's ‘ZARA' trademarks qualify as well-known marks and is the defendant's trademark similar and/or identical to the plaintiff's ‘ZARA' trademarks to suggest a connection between the defendant and the plaintiff? Analysis a) Is the Defendant's Trademark confusingly and deceptively identical or similar to the Plaintiff's ‘ZARA' Marks [24] The Learned Registrar of Trademarks decision in respect of this ground is found at Paragraphs 13 and 14 of Exhibit A-11 of Encl.9, which states as follows: - ! “13. Despite the goods/services being of the same description and the Opponent’s marks having substantial reputation in Malaysia. I am of the view that the Applicant’s Mark is distinguishable from the Opponent’s marks. I am of the view that the use of these marks in their respective and normal fair manner, in connection with the goods they would cover, would not cause confusion or deception in the trade or among the public. Based on the facts of the case, there is no real tangible risk of the purchasing public being misled into believing that the goods of the parties originate from the same source or are associated with one another.

Therefore, based on all the surrounding circumstances discussed above, I have concluded that the use of the Applicant’ Mark is not likely to deceive or cause confusion to the public. The Opponent has thus failed in its opposition under Section 14(1) and 19 of the Trade Mark Act 1976. I see no real tangible danger that might occur if both the Applicant’s Mark and the Opponent’s mark is allowed to co-exist.” ! [25] In this regard, learned counsel for the plaintiff submitted that the Registrar’s decision relating to the above ground is erroneous and incorrect from both a factual and legal standpoint. [24] The starting point of my discussion pertaining to this issue pivots around section 14(1) of the TMA 1976, which provides that a mark shall not be registered if its use is likely to deceive or cause confusion, is contrary to law, or otherwise falls within the specific prohibitions there enumerated, including conflicts with well-known marks (refer s 14(1)(a), (d) and (e) of the TMA 1976). For convenience Section 14(1) of TMA 1976 provides that: “(1) A mark or part of a mark shall not be registered as a trade mark-

if the use of which is likely to deceive or cause confusion to the public or would be contrary to law;

if it contains or comprises any scandalous or offensive matter or would otherwise not be entitled to protection by any court of law;

if it contains a matter which in the opinion of the Registrar is or might be prejudicial to the interest or security of the nation;

if it is identical with or so nearly resembles a mark which is well known in Malaysia for the same goods or services of another proprietor;

if it is well known and registered in Malaysia for goods or services not the same as to those in respect of which registration is applied for: Provided that the use of the mark in relation to those goods or services would indicate a connection between those goods or services and the proprietor of the well known mark, and the interests of the proprietor of the well known mark are likely to be damaged by such use;

if it contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the mark for such goods in Malaysia is of such a nature as to mislead the public as to the true place of origin of the goods; or

if it is a mark for wines which contains or consists of a geographical indication identifying wines, or is a mark for spirits which contains or consists of a geographical indication identifying spirits, not originating in the place indicated by the geographical indication in question.” [Underline Emphasis Mine] [25] The protective purpose of Section 14(1)(a) of the TMA 1976 has been succinctly laid down by the Federal Court in Yong Teng Hing B/S Hong Kong Trading Co & Anor v Walton International Limited [2012] 6 MLRA 629 (Walton International) where the Court emphasised that s 14(1)(a) exists to shield the public from confusion or deception arising from similar marks. The Court held that registration must be refused where such likelihood is shown, notwithstanding earlier use of an identical or similar mark, whether registered or unregistered, and even across different goods or services where the statutory conditions are satisfied. [26] The relative grounds in sections 19(1) and 19(2) TMA 1976 complement this analysis. They preclude the registration of a mark which is identical with or so nearly resembles a registered mark for the same goods or services (or for goods and services closely related) as to be likely to deceive or cause confusion. Section 19(1) addresses goods (and closely related services), while section 19(2) addresses services (and closely related goods). Together, these provisions embody the central inquiry: whether, having regard to the marks and their fields of use, the ordinary consumer is likely to be misled. [27] Against this statutory backdrop, the legal test is settled. The decision-maker must undertake a holistic and objective assessment directed at the likelihood of confusion or deception. The venerable statement of Parker J in Re Pianotist Co Ltd [1906] 23 RPC 774 (Re Pianotist) remains an accurate and practical guide. Parker J in Re Pianotist held as follows :- “You must take the two words. You must judge them, both by their look and their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those marks are used in a normal way as a trade mark of the goods of the respective owners of the marks.” [28] The Federal Court in Ortus Expert White Sdn Bhd v. Nor Yanni Adom & Anor [2022] 2 MLRA 368 (Ortus Expert White) distilled the operative framework in deciding the likelihood of confusion (at paragraph [104]). The Federal Court in Ortus Expert White held as follows:- [104] Upon a full consideration of the principles and authorities aforementioned, the test for likelihood of confusion and/or deception would be as follows:

both side-by-side comparison and the imperfect recollection test must be satisfied;

(ii) the comparison is made in terms of phonetic, visual, trade channel, and idea aspects of the marks;

(iii) the purpose of such comparison is to determine whether the defendant's mark contains essential features of the plaintiff's registered trademark, which strike the eye and fix themselves in the recollection of the users of the plaintiff's goods;

(iv) the court shall then take into account all surrounding circumstances and apply the imperfect recollection test, bearing in mind the outcome of the comparison, in order to determine whether it is likely that ordinary consumer with ordinary memory who would be likely to buy the goods would be deceived and think that the defendant's mark is the same as the plaintiff's registered trademark. In other words, the test of whether one trademark is confusingly similar is an objective test and the test is that of an ordinary person with an appropriate level of literacy (Merck KGaA v. Leno Marketing (M) Sdn Bhd; Registrar of Trademarks (Interested Party) [2017] CLJU 1006; [2017] 1 LNS 1006); and

in determining this test, the court is entitled to give effect to their own opinions, and not confined to the evidence of witnesses. [29] Further test and principles have been developed in subsequent decisions to determine likelihood of confusion which would include :- i. Comparison of the idea conveyed by both trademarks; ii. Comparison of the marks as a whole; iii. Consideration given to the first syllable of the trademarks; iv. Consideration given to the effect on the ear as well as the eye; v. Consideration given to the imperfect recollection of customers /potential customers; and vi. Comparison of the essential features of the trade marks. [30] In this connection, it is necessary to examine two foundational principles central to the assessment of likelihood of confusion: first, the identification of the essential features of a trade mark; and second, the doctrine of imperfect recollection. It is the interplay of these two principles—the objective dissection of the mark’s distinctive elements and the subjective reality of consumer perception—that forms the proper jurisprudential framework for assessing the likelihood of confusion. [31] Speaking firstly on essential features of the trademark, as articulated in Ortus Expert White Sdn Bhd (supra), the determination of a mark’s essential features is not merely a preliminary step, but rather a critical analytical tool that directs the entire comparative exercise. It requires the court to discern those elements which dominate the mark’s overall impression and are most likely to be retained by the average consumer. In Sinma Medical Products (M) Sdn Bhd v. Yomeishu Seizo Co Ltd & Ors [2004] 1 MLRA 691, the Court of Appeal in refering to the sage words of Sir Wilfrid Green MR in Saville Perfumery Ld v. June Perfect Ld and FW Woolworth Co Ld [1941] 58 RPC 147 held as follows:- “[21] Sir Wilfrid Green MR in Saville Perfumery Ld v. June Perfect Ld and FW Woolworth Co Ld [1941] 58 RPC 147 at pp 161 and 162 explained the law relating to infringement of trade marks and its differences and similarities with passing off: The statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing - off. But it differs from that law in two particulars, namely (1), it is concerned only with one method of passing off, namely, the use of trade mark and (2), the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the courts have held and it is now expressly provided by the Trade Marks, 1938, s 4, that infringement takes place not merely by exact imitation, but by the use of a mark so nearly resembling the registered mark as to be likely to deceive. The questions therefore arise: First, is there a resemblance so close as to be likely to cause deception? In answering these questions, ocular comparison is, of course, an important matter to be taken into consideration, in some cases it may be conclusive one way or the other. But if the court were to confine itself to this test the protection afforded by the law of trade marks would in many cases prove illusory. It would be still more illusory if, as Mr Lloyd Jacob contended, no witness could be listened to who was not prepared to say that when he saw the mark complained of he had in his mind the actual registered mark and made a comparison between the two. Propositions of this kind, if accepted, would, as it appears to me, divorce the law of trade marks from business realities. In the case of certain goods, traders, and perhaps the public too, may be expected to receive so strong an impression of the actual mark as to lead to the conclusion that nothing short of a degree of resemblance apparent to the eye will cause the necessary likelihood of deception. On the other hand, many articles do not fall within this category. In the present case, for example, the evidence makes it clear that traders who have to deal with a very large number of marks used in the trade in which they are interested, do not, in practice, and indeed cannot be expected to, carry in their heads the details of any particular mark, while the class of customer among the public which buys the goods does not interest itself in such details. In such cases the marks comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature, of the mark. I do not pause to examine these appellations, since the idea conveyed is free from ambiguity. In deciding whether or not a feature is of this class, not only ocular examination, but the evidence of what happens in practice in the particular trade is admissible. In the present case the evidence leaves me in no doubt as to the word "June" being the distinguishing or essential feature of the Appellants’ mark. It is by this word that traders and members of the public who see the mark on the goods which they purchase describe the Appellants’ goods, and indeed I should have been surprised if it had been otherwise. Now the question of resemblance and the likelihood of deception are to be considered by reference not only to the whole marks, but also to its distinguishing or essential features, if any. (emphasis is provided) [22] - De Cordova and Others v. Vick Chemical Coy [1951] 68 RPC 103, the Privy Council held that the word "VapoRub" was an essential feature of the trade mark, that the words "vapour rub" so closely resembled that word as was likely to deceive, and that the mark was infringed. In his judgment, Lord Radcliffe said: ... A trade mark is undoubtedly a visual device; but it is well - established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result.” [Underlined Emphasis Mine] [32] In view of the above, the question of resemblance or similarity between two marks to determine likehood of confusion is to be assessed not only in reference to the marks as a whole, but also the distinguishing or essential features of the same, for which the mark has come to be known for through its use in trade. In this regard, the words can form part , or indeed the whole of a mark that it is impossible to exclude consideration of the sound or significance of the words. [33] In addition to the above, it is imperative for consideration to be given to the principle of imperfect recollection of the average consumer. This principle is premised on the reality that the ordinary person does not possess photographic recollection of the details of a trademark, but merely remembers a general impression of the mark. [34] This was memorably captured by Thomson LP in MI & M Corporation & Anor v A Mohamed Ibrahim [1964] 1 MLRA 439 where His Lordship held as follows: [20] We ourselves have seen the two labels on the various sizes of tins to which they were affixed and have had every point of similarity and dissimilarity pointed out by counsel. Looking at them side by side they are clearly different and looking at them side by side nobody could possibly mistake the one for the other. The two flowers differ in many details and though their position on the labels is the same the surrounding wording differs. Even the most careless and ignorant person seeing them side by side on a shelf in a well-lighted grocer's shop could see that they are different. That, however, is not the test to be applied in a case of this sort for if it were it would render nugatory the protection which the law gives to trade and trade marks. For myself I would adopt the test applied by Sargant J in the case of Sandow Ltd's Application [1914] 31 RPC 196 at p 205 which was a registration case. He said: "The question is not whether if a person is looking at two Trade Marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection." [35] The Federal Court in Ortus Expert White reiterated that the "general impression" and "imperfect recollection" of reasonable consumers— whose attention varies depending on the category and price point of the goods. In this regard, the Court is not bound by witness opinions and must make its own evaluative judgment regarding likelihood. The Federal Court in the case of Ortus Expert White held as follows: [94]" The imperfect recollection" of customers/potential customers is the idea or impression which each mark produces or suggests to the minds of potential customers. This is premised on the norm and reality that the average customer does not have a photographic recollection of the details of the whole mark but merely a general impression of the mark and remembers the mark by this general impression" (Blanco White TA & Jacob Robin on Patents, Trade Marks, Copyright and Industrial Designs). [95] The general impression guideline is related to the imperfect recollection tests, where due consideration ought to be given to the fact that an ordinary reasonable purchaser only has a limited recollection of what he has seen. It is different when one looks at the two marks when placed side by side. In such a situation, one may be able to see the difference between the two marks and one would not mistook the one for the other. However, in reality, customers, more often than not, would not have the opportunity to compare the two marks side by side, at the point of deciding to make purchases. In such instance, the customer can only rely on his memory of the mark he knows and contrasts it with the mark upon the product which he is considering to buy. [98] In applying the general recollection test, due allowance must be given for reasonable customers and traders with an average memory and imperfect recollection of the precise details of the plaintiff's trade mark and the defendants' marks, when determining whether there is a real likelihood of confusion/deception. [Emphasis Added] [36] It is therefore clear that the proper assessment for determining the resemblance of one mark to another so as to be likely to deceive or cause confusion is not merely a side by side comparison of each similarity and dissimilarity. Rather, such an assessment must take cognisance of the average memory of an ordinary reasonable purchaser possessing a limited recollection of what he has seen and would not be able to recall the minute details between one mark to another, i.e. whether a person upon seeing one mark in the absence of the other, and in view of his general or imperfect recollection of the mark, would likely be confused and think that both marks are the same. [37] In sum, the inquiry is not a microscopic, line-by-line dissection but a holistic appraisal grounded in marketplace realities. The determinative question remains whether the ordinary consumer, relying on imperfect recollection of the Opponent’s mark and encountering the Applicant’s mark in the ordinary course of trade, would likely be misled into believing that the goods or services come from the same or an economically linked undertaking. Where that likelihood is made out, sections 14(1) and 19 TMA 1976 are engaged. [38] Against this analytical framework, I am persuaded by the plaintiff’s contention that the Registrar erred in concluding that the defendant’s mark was neither identical nor similar to the plaintiff’s “ZARA” marks. That conclusion cannot be sustained when measured against the statutory test under sections 14(1)(a) and 19 of the TMA 1976. The Registrar’s analysis appears to have overlooked the holistic assessment required by those provisions—that is, an appraisal of the overall impression of the marks, the essential features that anchor consumer recollection, and the real-world conditions in which the marks are encountered. [39] The essence of my findings is most effectively demonstrated by reference to the following comparison between the plaintiff's 'ZARA' trademarks and the defendant's trademark: [40] When the marks are examined as a whole—visually, aurally, and conceptually—two salient observations emerge. First, “ZAIRA” is a minimal variation of “ZARA”, the only difference being the interpolation of the letter “I”. Secondly, both share the same “ZA” prefix and “RA” suffix, producing highly similar visual impressions and nearly indistinguishable pronunciation. As observed in Re Pianotist (supra), the correct approach is not to dissect marks with microscopic precision, but to assess the general impression they convey to the ordinary consumer. [41] The plaintiff’s registrations encompass both word and stylised marks. Protection under the TMA 1976 extends to the mark as registered, not to any specific typeface or graphical embellishment. In that context, the defendant’s reliance on the stylisation of its mark is misplaced. As the Court of Appeal held in Sinma Medical Products , similarity must be assessed on the essential features by which the mark is remembered, and not by superficial stylistic variations. Aspect Plaintiff’s ‘ZARA’ Trademarks Defendant’s Trademark Visual Phonetical (ZA)+(RA) (ZA-I)+(RA) (ZA)+(RA) (HOM) [42] Following Ortus Expert White and Sinma Medical Products, the analysis must focus on the essential element—that feature which fixes itself in the public’s recollection. Consumers seldom recall every detail of a mark; rather, they remember its dominant verbal component or device. [43] In this case, the essential element of the plaintiff’s marks is the word “ZARA”, while that of the defendant’s mark is “ZAIRA”. In my considered view the single added vowel “I” does little to mitigate the overwhelming phonetic and visual resemblance between the two. I find that resemblance may exist even where the difference lies in a small detail that escapes ordinary recollection. The defendant’s ancillary floral device, on the evidence, is neither dominant nor likely to remain in the consumer’s memory. It is incapable of oral reference, and cannot meaningfully counteract the similarity arising from the word element. [44] This is particularly true in normal commercial settings where the mark appears at reduced size or viewed from a distance—circumstances in which the verbal component inevitably predominates. As Thomson LP observed in MI & M Corporation & Anor, consumers act on general impressions rather than side-by-side comparison. [45] In these circumstances, the Registrar’s conclusion that the marks were dissimilar cannot stand. It is inconsistent with the settled approach requiring a holistic and impressionistic evaluation grounded in marketplace realities. [46] Moreover, the doctrine of imperfect recollection, firmly embedded in Ortus Expert White and MI & M Corporation, appears not to have been applied. The relevant inquiry is not whether the marks differ when scrutinised side by side, but whether a consumer, relying on imperfect memory, might mistake one for the other in ordinary trade. [47] Applied correctly, there is a real and practical likelihood that consumers will conflate “ZAIRA” with “ZARA”. The two marks share identical structural patterns, near-identical pronunciation, and an indistinguishable cadence—features that, taken together, create a high risk of misidentification. [48] Three additional factors heighten that risk: i. The Class 35 coverage overlaps. The defendant’s Class 35 mark, which captures retail of textiles and clothing are services that squarely fall within the plaintiff’s field. ii. The parties operate in the same trade, through the same channels, to the same markets; and iii. The plaintiff’s ‘ZARA’ marks enjoy substantial recognition and goodwill in Malaysia. [49] Viewed cumulatively—taking into account the shared phonetic structure, overlapping services, identical trade channels, and the strength of the earlier mark—the likelihood of confusion is far from theoretical. It is a tangible and foreseeable consequence of concurrent use, precisely the mischief section 14(1)(a) seeks to prevent. [50] Accordingly, the defendant has failed to discharge the statutory burden of demonstrating that no likelihood of confusion exists. [51] The shared prefix “ZA” and suffix “RA” yield near-identical phonetic and visual impressions. When viewed through the lens of the doctrine of imperfect recollection, the risk of consumers mishearing, mispronouncing, or misconstruing “ZAIRA” as “ZARA” is not only plausible but probable— particularly given the long-standing goodwill and public recognition that the “ZARA” mark has commanded in Malaysia since 2003. [52] I also find that the word mark registrations in upper case are enforceable against trademarks containing identical and/or similar representations in lower case as well. [53] In this respect, the learned counsek for the plaintiff relied on the decision of Colliers International Property Consultants Inc V. Colliers International Property Consultants Sdn Bhd [2015] MLRHU 112 where the High Court found that the Plaintiff's ‘Colliers' word mark registration was wholly incorporated within the Defendant's mark “ ” amounting to trademark infringement. [54] Similarly and in the case of Hew Chai Seng (T/A Pertiland Trading Co) V. Metronic Integrated System Sdn. Bhd. & Anor [2016] MLRHU 1566, the High Court held that the Defendant's use of the ‘Ferti' word mark was seen to be identical to the Plaintiff's registered ‘FERTI' word marks, also amounting to a trademark infringement of the same. [55] In view of the above decisions, it is my considered view that any mark can still deemed to be similar and/or identical to a word mark despite a difference in the capitalisation of the alphabets within the contesting marks. Consequently, any variance in use of upper and lower case letters within the contesting marks is immaterial in view of the plaintiff's ‘ZARA' trademarks is represented as word mark. This in turn provides protection over use of the word ‘ZARA' in either entirely in upper case letter, lower case letters and/or a combination of the same (i.e. ‘ZARA', ‘zara', and/or ‘Zara” amongst others) including stylisations and/or logo versions. This position was affirmed in the decision of Skyworld Development Sdn.

[56] In the result, I am unable to accede to the learned counsel for the defendant’s submission that its mark would not give rise to confusion. The contention does not withstand scrutiny when measured against the governing principles articulated in Ortus Expert White and Sinma Medical Products. The rose and crescent moon devices within the defendant’s mark are not, in my view, essential or dominant elements. Rather, they are minor decorative features, likely to be overlooked by the ordinary consumer when viewed fleetingly or from a distance—especially given their comparatively small size and secondary placement relative to the word “ZAIRA.” [57] The essential and memorable component of the defendant’s mark is plainly the verbal element “ZAIRA.” It is this element alone that consumers would pronounce, recall, and associate with the goods or services offered. Decorative motifs incapable of oral reference cannot, as a matter of law or common sense, anchor consumer recollection or meaningfully distinguish one mark from another. As observed in Saville Perfumery Ltd [1941] 58 RPC 147, resemblance is not confined to visual mimicry but extends to those features that “strike the eye and fix themselves in the memory.” Applying that principle, I find that the defendant’s mark is substantially similar—indeed, nearly identical—to the plaintiff’s “ZARA” marks when compared in respect of their essential elements. [58] Accordingly, it is evident that the Registrar of Trademarks erred in dismissing the plaintiff’s opposition under sections 14(1)(a) and 19 of the TMA 1976. The Registrar’s reasoning, as set out in the Grounds of Decision dated 16 December 2024, did not properly engage with the established tests for similarity and confusion. By focusing on peripheral decorative features and failing to give due weight to the dominant verbal element, the Registrar departed from the orthodox approach endorsed by the Federal Court in Ortus Expert White. The Registrar’s rejection of the objections under sections 14(1) and 19 of the TMA 1976 was therefore, with respect, erroneous in law and unsustainable on the evidence. b) Is the Defendant's Trademark distinctive to the Defendant at the exclusion of all others [59] The Registrar of Trademark’s decision in respect of this ground is found at Paragraphs 15 of Exhibit A-11, of Encl. 9, and states as follows :- “15. I am also of the view that the Applicant’s Mark is registrable under Section 10 of the Act. As long as the Application Mark is not confusingly similar to the Opponent’ marks that could lead to any confusion or deception, I have no reason to object to the registration of the Applicant’s mark in Class 16. Thus, the opposition under Section 10 and 12 of the Act has also failed. ” [60] Now, distinctiveness is a separate and antecedent inquiry—one that examines whether a mark, viewed in the real-world context of trade, is capable of signifying to consumers that the goods or services originate from a particular trader, and no other. Section 10(1) of the TMA 1976 delineates the categories of registrable marks and expressly requires that a trade mark must be “distinctive”. Subsection (2A) defines distinctiveness as the capability of distinguishing the proprietor’s goods or services from those of others, either inherently or through use. The test, as clarified in subsection (2B), is both prospective and contextual—focusing on whether the mark can, in fact or in principle, perform its source-identifying function in the ordinary course of trade.For of reference, Section 10 of TMA 1976 is reproduced below and provides as follows:-

In order for a trade mark (other than a certification trade mark) to be registrable, it shall contain or consist of at least one of the following particulars:

the name of an individual, company or firm represented in a special or particular manner;

the signature of the applicant for registration or of some predecessor in his business;

an invented word or words;

a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname; or

any other distinctive mark.

A name, signature or word which is not described in paragraph (1)(a), (b), (c) or (d) is not registrable unless it is by evidence shown to be distinctive.

For the purposes of this section, "distinctive", in relation to the trade mark registered or proposed to be registered in respect of goods or services, means the trade mark must be capable of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered, subject to conditions, amendments, modifications or limitations, in relation to use within the extent of the registration.

In determining whether a trade mark is capable of distinguishing as aforesaid, regard may be had to the extent to which-

the trade mark is inherently capable of distinguishing as aforesaid; and

by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid.

A trade mark may be registered in the Register in respect of any goods or services.” [Underlined Emphasis Mine] [61] Section 12, which complements Section 10, permits the Registrar to recognise prior controlled use by a licensee as evidence of distinctiveness. However, the provision presupposes that the mark is capable of distinguishing in the first place. It does not validate registration where the mark itself is inherently incapable of indicating origin due to its resemblance to an existing and distinctive mark. Section 12 of TMA 1976 which also relates to distinctiveness provides as follows :- “(1) Where an application for registration of a trade mark has been made by a person, and before the date of the application the trade mark had been used by a person other than the applicant under the control of and with the consent and authority of the applicant, and where an application is made by the applicant and that other person for the registration of that other person as a registered user of the trade mark immediately after the registration of the trade mark and the Registrar is satisfied that the other person is entitled to be registered as a registered user of the trade mark, the Registrar may, for the purpose of determining whether the trade mark is distinctive of or capable of distinguishing the goods or services of the applicant, treat use of the trade mark by that other person as equivalent to use of the trade mark by the applicant and may make an order that the trade mark is so distinctive or capable of distinguishing.

An order of the Registrar under subsection (1) is subject to appeal to the Court.

Where an order is made under subsection (1), the registration of the trade mark shall cease to have effect if at the expiration of the prescribed period, or such further period not exceeding six months as the Registrar may allow, that other person has not become registered as the registered user of the trade mark.” [62] The concept of “distinctive”, while contextually flexible, has been judicially interpreted with consistent clarity. As observed in Service Master (M) Sdn Bhd v MHL Servicemaster Sdn Bhd & Anor [1997] 3 MLRH 835, quoting Wadlow, distinctiveness in law arises only where the relevant public relies upon the mark as a badge of trade origin, to the exclusion of others. Novelty or artistic flourish alone is insufficient; the mark must, in the perceptions of consumers, function as an indicator of provenance. "Distinctive" is a term of art in the law of passing-off and bears a meaning at variance with that in everyday use. Matter such as a name, mark or get-up is said to be distinctive if it denotes the goods of the plaintiff to the exclusion of other traders. It is the significance which the relevant public attaches to the supposed mark which is all-important. Matter which is not relied on by the public in this way is not in law distinctive, irrespective of how novel, striking or different it may be. Conversely, matter may be distinctive in the legal sense although it is altogether unremarkable in its own right.” [63] The test for inherent distinctiveness, articulated in W & G Du Cros Application [1913] 30 RPC 660 and adopted locally in Yong Sze Fan & Anor v Sharifah Mohd Tamin & Ors [2007] 4 MLRH 377, asks whether other traders—acting in the ordinary course of business and without improper motive—would reasonably wish to use the same or a closely resembling mark. Where the answer is in the affirmative, distinctiveness cannot be said to exist. This was held in Yong Sze Fan as follows: “[27] In deciding inherent distinctiveness, the case of W & Gdu Cros Application [1913] 30 RPC 660 can be relied upon. It was held by Lord Parker at p. 671 as follows: The Applicant for registration in effect says ’I intend to use this mark as a trade mark i.e., for the purpose of distinguishing my goods from the goods of other persons’, and the Registrar or the Court has to determine, before the mark is admitted to registration, whether it is such a kind that the applicant, quite apart from the effects of registration, is likely to attain the object he has in view. The applicant’s chance of success in this respect, must, I think largely depend upon whether other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the same mark, or some mark closely resembling it, upon or in connection with their own goods. [28] Flowing from this argument, it is clear that since "TAMIN" is not the normal or usual way of describing the goods of interest, other traders without improper motive need not use the mark to describe similar goods. Emphasis is added to the word improper motive as the use by the applicants in this case cannot count as their use is not as a descriptor but to gain some unlawful advantage to the detriment of the respondents.” [Underlined Emphasis Mine] [64] Applying these principles, I find that the Registrar erred in concluding that Section 10 of the TMA 1976 was satisfied. A mark that is so similar to “ZARA” as to evoke immediate association cannot serve as a reliable indicator of trade origin. The very purpose of distinctiveness is to ensure that the mark points exclusively to the proprietor’s goods or services. Here, the defendant’s mark fails that test: it does not direct the consumer’s mind to the defendant alone but instead invites association with the plaintiff’s established brand. [65] The factual matrix reinforces this conclusion. The defendant’s mark cannot be distinctive to the defendant where— i) it is visually and phonetically proximate to “ZARA”, differing only by the insertion of an “I”; ii) the parties’ services in Class 35 overlap substantially; iii) the parties operate through identical retail and online channels, targeting the same class of consumers; and iv) the plaintiff’s “ZARA” mark enjoys deep-rooted goodwill and recognition in Malaysia. [66] The cumulative effect of these factors is that the defendant’s mark will inevitably suggest to consumers an association with the plaintiff. This is precisely the type of confusion that Section 10 seeks to forestall. Distinctiveness is negated where the public, instead of recognising the defendant’s mark as signifying a unique source, perceives it as connected with another trader. [67] The chronology of use further underscores this. The plaintiff’s use of “ZARA” dates from 2003 in Malaysia and as early as 1975 internationally, while the defendant’s adoption of “ZAIRA” occurred only in 2011. The long and established market presence of the plaintiff renders it highly improbable that consumers would regard “ZAIRA” as an independent or original identifier. [68] When the defendant’s sign is used on identical retail and promotional services within the same market segment, consumers—encountering “ZAIRA” through the imperfect recollection that characterises ordinary trade—are more likely than not to infer a connection with “ZARA”. The suggestion that “ZAIRA” could function distinctively in such a context is therefore untenable. [69] For these reasons, I find that the Registrar’s dismissal of the objections under Sections 10 and 12 of the TMA 1976 cannot stand. The defendant’s mark lacks the requisite distinctiveness to serve as a badge of origin exclusive to the defendant, and the Registrar’s conclusion to the contrary was, with respect, erroneous in both fact and law. c. Is the Defendant truly the bona fide proprietor of the Defendant's Trademark in view of earlier registration and use of the Plaintiff's ‘ZARA' trademarks [70] The Registrar of Trademarks decision in respect of this ground is found at Paragraph 16 of Exhibit A-11 of Encl. 9. and states as follows :- “16. … Based on the evidence of use provided by the Applicant, I am of the view that the Applicant has genuinely used their mark in Malaysia. After considering all circumstances and evidences presented by both parties, I conclude that the Applicant is entitled to be the proprietor of the Applicant’s mark in Malaysia for Class 16 goods and that the mark is distinctive to the Applicant for those goods. Thus, the Opponent has failed in its opposition under Section 25(1) of the Act.” [71] Learned counsel for the plaintiff contended that the Registrar’s conclusion, as reflected in the Grounds of Decision dated 16 December 2024, is misconceived in both principle and application. [72] It is necessary first to recall the legal touchstones governing proprietorship and first use before turning to the facts. [73] Section 25(1) of the TMA 1976 provides: “Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may make application to the Registrar for the registration of that mark …” [74] The provision presupposes that the applicant must either have originated the mark or be the first to have used it in good faith within Malaysia. [75] The principle was articulated in Yong Sze Fan and draws from Luk Lamellen Und Kupplungsbau GmbH v South East Asia Clutch Industries Sdn Bhd [1997] 2 MLJ 724. The courts have consistently held that the first user of a mark in Malaysia is its lawful proprietor. A subsequent adopter cannot, by later registration, displace the rights of the original user; to hold otherwise would “defeat the first and original user by a subsequent user”, creating an anomaly in trade-mark law. [76] This approach has been reaffirmed in Syarikat Perniagaan Lamzhuan Sdn Bhd v Jie Cheng Hang Sdn Bhd; Pendaftar Cap Dagangan Malaysia (Third Party) [2021] 4 MLRH 235, which underscores that proprietorship flows from honest authorship or prior bona fide use, not from mere assertion. [77] Measured against these principles, the Registrar erred in accepting that the defendant was a bona fide proprietor. The defendant produced no coherent account of the independent conception of “ZAIRA” or of any diligence undertaken to ensure that the mark would not conflict with existing registrations. In the absence of such evidence, a finding of good-faith adoption cannot stand. [78] No contemporaneous record explains the derivation of the defendant’s mark. In a market long occupied by “ZARA”, the absence of documentation demonstrating independent creation tells strongly against good faith. [79] The Registrar also failed to consider the defendant’s omission to conduct even rudimentary clearance searches in a field where the plaintiff has traded openly and extensively since 2003. [80] Given the proximity of the parties’ commercial activities, it is implausible that the defendant was unaware of the plaintiff’s mark. Ignorance in such circumstances strains credulity and undermines any claim of innocent adoption. [81] On a balance of probabilities, the more compelling inference is that the defendant deliberately chose a mark closely resembling “ZARA” to capitalise on the plaintiff’s goodwill. Where imitation is motivated by association, bona fides is necessarily absent. [82] The Registrar’s reliance on the defendant’s later use of the mark (from 2012 to 2024) as evidence of proprietorship is also misplaced. As the courts observed in BRG Brilliant Rubber Goods (M) Sdn Bhd V. Leong Choon Loy Trading As Hillway Trading & Anor [2015] MLRHU 1015, the relevant date for determining entitlement to registration is the application date. Post-application conduct, particularly where contested, cannot retrospectively confer proprietorship that did not exist ab initio. Accordingly, any use of the defendant’s mark after 30 December 2011 is of limited evidential value. The inquiry must focus on whether, as of that date, the defendant could properly claim to be the first user or originator. [83] By contrast, the plaintiff’s evidence demonstrates continuous use of “ZARA” in Malaysia since 2003 and internationally since 1975. This long-standing presence, combined with the mark’s widespread recognition, leaves little doubt as to prior proprietorship. [84] Given the high degree of similarity between “ZAIRA” and “ZARA” marks, the overlap in services, and the identical trade channels, the defendant’s use would almost certainly mislead consumers into assuming an association between the two. [85] Under the first-user and bona fide proprietorship principles, the defendant cannot qualify as a lawful proprietor within the meaning of section 25(1). To hold otherwise would reward imitation and subvert the settled hierarchy of rights under the Act. [86] In these circumstances, the Registrar’s finding that the defendant was the bona fide proprietor of the impugned mark cannot be sustained. [87] Accordingly, I find that the plaintiff’s opposition under section 25(1) of the TMA 1976 ought to have been upheld. The defendant’s application was not made in good faith and the Registrar’s dismissal of this ground was, with respect, erroneous in law and in fact. d. Do the plaintiff's ‘ZARA’ trademarks qualify as well-known marks and is the defendant's Trademark similar and/or identical to the Plaintiff's ‘ZARA’ trademarks to suggest a connection between the defendant and the plaintiff [88] The Registrar of Trademarks decision in respect of this ground is found at Paragraph 17 of Exhibit A-11, of Encl. 9, and states as follows :- “18. As for the question of whether the Opponent’s mark should be protected as a well-known mark in Malaysia, whether in respect of the same or different goods, the opposition on this ground would still be unsuccessful. This is because I find that the Applicant’s mark is neither identical nor does it resemble the Opponent’s marks that the use of the Applicant’s mark is likely to indicate a connection in trade between the Applicant and the Opponent. Therefore the opposition on this ground has failed. [89] Learned counsel for the plaintiff submitted that the Registrar’s Grounds of Decision dated 16.12.2024 in respect of the above ground is also in error and flawed. [90] The starting point of my discussion will pivot on the governing statutory provisions. Section 14(1)(e) of the TMA 1976 prohibits the registration of a mark that is well known and registered in Malaysia for dissimilar goods or services, where such use would indicate a connection with the proprietor of the well-known mark and is likely to damage the proprietor’s interests. Section 70B reinforces this protection by enabling the proprietor of a well-known mark entitled to protection under the Paris Convention or TRIPS Agreement to restrain, by injunction, the use of a mark that is identical with or nearly resembles its own, where the use is likely to deceive or cause confusion. [91] Learned counsel for the plaintiff contended that the Registrar erred in failing first to ascertain whether ‘ZARA’ is a well-known mark within the meaning of Regulation 13B of the TMR 1997 before proceeding to consider the application of Sections 14(1)(e) and 70B. Regulation 13B provides a structured but non-exhaustive framework for determining whether a mark is well known, including considerations such as the degree of recognition among the relevant public, the extent and geographical reach of use and promotion, the history of registrations, enforcement successes, and the value associated with the mark. These factors are designed not as rigid hurdles but as indicia to guide the tribunal in its assessment. [92] Applied to the present case, the evidential record overwhelmingly demonstrates that the criteria for ‘ZARA’ being a well-known mark are met. The brand enjoys widespread recognition in Malaysia, its commercial presence is substantial, its advertising and promotion are extensive and enduring, and it has a proven track record of enforcement. Against this backdrop, the Registrar’s decision that the claim must fail regardless of whether the mark is well-known is, with respect, untenable. [93] On a fair and sensible view of the evidence, ‘ZARA’ is well-known in Malaysia. That being so, the analysis turns to two critical questions: whether the use of “ZAIRA” would induce consumers to believe that there exists a connection between the defendant and the plaintiff; and whether the plaintiff’s interests are likely to be damaged by such use. In my judgment, both questions must be answered affirmatively. The resemblance between “ZARA” and “ZAIRA” is striking; the overlap in Class 35 services is direct; the trade channels converge; and the plaintiff’s reputation in Malaysia is firmly entrenched. The inference of association is therefore compelling. The corollary is that consumers are likely to be misled, and the plaintiff’s interests imperilled, by an erosion of the distinctiveness and integrity of its brand. Such dilution of goodwill is precisely the mischief Sections 14(1)(e) and 70B seek to prevent. [94] Accordingly, I am satisfied that these statutory provisions are squarely engaged. The contrary conclusion reached by the Registrar cannot be supported. Other Issues [95] Learned counsel for the defendant argued that the plaintiff’s decision not to appeal the Registrar’s decision in respect of Classes 35 and 16 for the mark respectively bears some relevance to the present appeal. With respect, I am unable to agree. The plaintiff is entitled, as a matter of law, to decide which adverse decisions it will challenge and which it will not. The mere fact that certain determinations were left unappealed does not ipso facto bar the plaintiff from asserting its rights in other proceedings, nor does it suggest acquiescence in relation to different factual matrices or legal questions. It follows that the plaintiff’s election not to pursue with the appeal of the Registrar’s decisions concerning mark is wholly immaterial to the resolution of this appeal. Conclusion [96] In considering the substantive merits of both the appeals before me I find that the Registrar of Trademarks Malaysia erred in dismissing the plaintiff’s opposition under Sections 14(1), 19, 10, 12 and 25(1) of the TMA 1976, as well as in failing to give proper weight to the well-known status of the “ZARA” mark under Sections 14(1)(e) and 70B of the TMA

[97] In the premise, I allow the plaintiff's applications under enclosure 1 in both OS No. WA-24IP-5-01/2025 and WA-24IP-6-01/2025. In doing so, I hereby grant the following orders: i. The decision of the learned Registrar of Trademarks Malaysia dated 16.12.2024 in dismissing and/or refusing the plaintiff’s Trademark Opposition cause of action against the defendant’s Trademark Application No 2011023054 in class 35 and the defendant’s Trademark application No 2011023053 in class 16 is reversed and/or rescinded as well as set aside in its entirety. ii. The plaintiffs Trademark Opposition cause of action against the defendant’s Trademark Application No 2011023054 in class 35 and defendant’s Trademark application No 2011023053 in class 16 be allowed in favour of the plaintiff. iii. The learned Registrar of Trademarks be directed to remove and/or strike off the defendant’s Trademark application No 2011023054 in class 35 and defendant’s Trademark application No 2011023053 in class 16 from the list of pending applications before the Intellectual Property Corporation of Malaysia (MYIPO). iv. The costs of these appeal proceedings shall be paid by the defendant to the plaintiff in the sum of RM 5,000 for each of the appeals, and the costs of the opposition proceedings awarded before the Registrar of Trademarks Malaysia are set aside. Dated this 30th day of September 2025 tt EDWIN PARAMJOTHY MICHAEL MUNIANDY JUDICIAL COMMISSIONER COMMERCIAL DIVISION (NCC 7) HIGH COURT OF MALAYA KUALA LUMPUR For the Plaintiff : Sanjay Rajaah Kumar and Mahendra Balakrishnan [Bustaman and Associates] For the Defendant : Rubachandran a/l Govindasamy [Rubachandran and Associates]