
As part of a broader strategy to improve shopping experiences and drive sales, fashion retailer Zara has tapped into new markets with the emergence of its coffee shops, operating under the name “Zacaffè”. After testing the initiative in European stores, Zara opened its first Zacaffè location in Madrid.
According to a recent report by Reuters, Zicaffè, a family-owned Sicilian coffee business that roasts and exports coffee blends, requested the European Union’s Intellectual Property Office (the “EUIOP”) to dismiss Zara’s trademark application for use of the name “Zacaffè”, arguing it resembles its own brand too closely.
Zicaffè’s specific grounds for opposing the trademark application were “a likelihood of confusion, unfair advantage and detriment to the distinctiveness” of its brand.
Zicaffè reportedly filed the complaint on December 25, 2024. At the time of writing, the EUIOP’s decision remained pending.
Authors: Ayesha Khanna and Griffin James, 2024/2025 Articling Student-At-Law
Photo Credit: https://unsplash.com/@asthetik
Photo Credit: https://unsplash.com/@asthetik
Authors
Expertise
Insights
-
Intellectual Property Litigation
Paws for Thought: DOGKIND Trademark Application Refused
In a recent decision, the Trademarks Opposition Board (“TMOB”) refused a trademark application for DOGKIND, finding it was confusingly similar to the already registered trademark, PETKIND.Dogkind… -
Intellectual Property Litigation
Rolling in the Injunctions: Brazilian judge orders Adele song to be removed from streaming services
A Brazilian judge has reportedly ordered that Adele’s 2015 song, “Million Years Ago”, be pulled from streaming services worldwide, following allegations of plagiarism from Brazilian musician, Toninho… -
Litigation and Dispute Resolution
Changes to Trademark Proceedings Coming into Effect April 1, 2025
Amendments to the Trademarks Regulations will take effect on April 1, 2025. These changes are part of broader updates to the Trademarks Act, introduced through the Budget Implementation Act, 2018, No… -
Intellectual Property Litigation
Heineken Battles Over "La Tropical" Branding
Heineken’s Lagunitas Brewery has reportedly advanced its trademark and copyright claims over its "La Tropical" beer in a legal battle involving Cuban-origin brands. As reported by Bloomberg, the… -
Intellectual Property Litigation
Super Loss for Marvel and DC? "Super Hero" Trademark Enters the Public Domain
Marvel and DC have reportedly lost their long-held trademarks for “Super Hero”. For decades, the two comic giants jointly owned the trademark, with DC using it for its DC Super Hero Cafe and… -
Litigation and Dispute Resolution
Is Your Trademark at Risk? Understanding the TMOB’s New Pilot Project
In January 2025, the Trademarks Opposition Board (TMOB) is launching a pilot project in which the Registrar of Trademarks will issue 50–100 section 45 notices per month for randomly selected trademark…