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Opposition Case “ZORA” vs. “ZARA” – Comprehensive Assessment of the Eight Factors for Likelihood of Confusion in Taiwan

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Trademark

Opposition Case “ZORA” vs. “ZARA” – Comprehensive Assessment of the Eight Factors for Likelihood of Confusion in Taiwan

Introduction:

In trademark disputes, whether a mark is likely to cause confusion is often a pivotal issue. Such determinations should be made by applying the eight reference factors for likelihood of confusion, rather than by comparing mark designs. Assistance from a specialized law firm is therefore advisable. This article cites the Administrative Judgment No. 10 (Case No. 113-10) of the Intellectual Property and Commercial Court dated August 22, 2024, to facilitate an in-depth discussion.

The trademarks at issue in this case are:

	Contested Trademark	Cited Trademark (by Opponent)
Trademark
Registration No.	2152721	706557
Proprietor	Company A, engaged in the distribution of household goods (hereinafter referred to as “Company A”, the opposed party).	Company ZARA, primarily engaged in the sale of apparel (hereinafter referred to as “ZARA”, the opponent).

“ZORA” Trademark of Company A:

In this case, the opposed party, Company A, has successively applied for registration of trademarks using “ZORA” as the primary distinctive element since 2004. Among these applications, three trademarks were cancelled following oppositions or invalidation actions filed by ZARA, and one application was refused on the grounds of similarity to ZARA’s “ZARA” mark. The trademark application filed in 2023 is currently pending examination, as its review has been suspended due to the present opposition case.

The Court’s Reasoning for Finding a Likelihood of Confusion Between the “ZORA natural” and “ZARA” Trademarks, and for Upholding the IPO’s Decision to Cancel the “ZORA natural” Mark:

(1)

Degree of Similarity Between the Trademarks:

The element “ZORA” in the disputed trademark “ZORA natural” constitutes the most prominent and distinctive portion that captures consumers’ attention and forms the dominant part of the overall impression of the mark.

Similarity in Appearance:

The dominant elements “ZORA” and “ZARA” each consist of four English letters and are highly similar in overall appearance.

Similarity in Pronunciation:

Both trademarks are two-syllable words beginning with “Z” and ending with “RA.” The vowels “A” and “O” are both open vowels pronounced with opened lips. Considering that “A” and “O” may each produce similar short vowel sounds, and that the initial consonant “Z” is identical, the words may be pronounced with similar short vowel sounds, like “ZA [zæ]” and “ZO [za],” respectively. Accordingly, the two marks are deemed similar in pronunciation.

Degree of Consumer Attention in Purchasing:

The designated goods “cosmetic, cleansing, skincare, and beauty care products” are items used in everyday life. Consumers purchasing such goods usually exercise only an ordinary degree of attention, and therefore may mistakenly believe that the goods originate from the same source or that there is some association between different sources.

Company A’s Argument Citing the Japan Patent Office (JPO) Opposition Decision No. 2019-900291—Holding that “ZORA” and “ZARA” Are Clearly Different in Appearance and Pronunciation:

Court’s Opinion:
Trademark protection is based on the principle of territoriality. Given the differences in national conditions and cultural backgrounds, the perception of relevant consumers varies by country. Therefore, the fact that identical or similar trademarks have been registered or decided upon differently in another country cannot serve as a basis for asserting that the same conclusion should apply in Taiwan.

Company A’s Argument That the Opposed Mark (“ZARA”) Has Not Been Used on Cosmetics or Skincare Products; Court’s Opinion:

This issue pertains to a separate dispute concerning the revocation of the trademark for non-use and does not fall within the scope of examination in the present case.

(2)

The Opponent’s Trademark Possesses Stronger Distinctiveness:

In 2014, the Intellectual Property Office recognized the opponent’s trademark “ZARA” as a well-known mark in Taiwan, widely known among relevant businesses and consumers in connection with clothing, apparel accessories, and related goods or services. Accordingly, its distinctiveness is deemed stronger than that of the disputed mark.

(3)

Diversified Business Operations of the Prior Right Holder

In addition to its use on clothing, apparel accessories, and related goods or services, the opponent’s trademark “ZARA” has also been used in connection with household goods under Class 21, such as trays. Furthermore, at the Taichung “Tiger City” store, ZARA also sells cosmetics such as lipsticks and perfumes, demonstrating a diversification of business operations.

(4)

Degree of Consumer Familiarity with the Two Trademarks

The opponent’s trademark “ZARA” has been widely recognized by relevant businesses and consumers in Taiwan as a well-known mark for clothing, apparel accessories, and related goods or services.

(5)

The Applicant’s Lack of Good Faith

Company A had previously applied for registration of a stylized “ZORA” mark, which was later cancelled on July 30, 2020, following an opposition filed by ZARA. The opponent’s trademark “ZARA” had already been recognized as a well-known mark for “clothing, apparel accessories, and related goods or services” since 2014. Therefore, when Company A filed the present application for the disputed mark on October 16, 2010, it was already aware that “ZORA” and “ZARA” were highly similar marks. By nevertheless proceeding to apply for registration designating the same or similar goods and services, Company A demonstrated an intent to take advantage of the goodwill associated with the opponent’s mark, thereby acting in bad faith.

Conclusion

In trademark disputes, both parties typically present arguments and evidence in their favor. The central issue, "whether there exists a likelihood of confusion between the trademarks”, must be assessed based on the eight reference factors for determining likelihood of confusion, which include:

(1)

The strength or weakness of the distinctiveness of the trademarks;

(2)

The similarity between the trademarks and the degree of such similarity;

(3)

The similarity between the designated goods/services and the degree thereof;

(4)

The extent of the prior right holder’s diversified business operations;

(5)

Evidence of actual confusion;

(6)

The degree of consumer familiarity with each trademark;

(7)

Whether the application for the disputed mark was filed in good faith; and

(8)

Other factors relevant to the likelihood of confusion.

In the present case, after assessing the relevant factors among the eight reference guidelines, the Court concluded that the registration of the disputed trademark is likely to cause confusion and should therefore be cancelled.

In trademark disputes, the issue of “likelihood of confusion” often becomes the focal point of contention. Each of the eight factors serves as a potential ground for both attack and defense. The analysis should not be conducted by merely comparing the visual elements of the marks; rather, it requires identifying and substantiating favorable arguments and evidence under each factor. Accordingly, the assistance of a professional law firm is strongly recommended.

II.

Intellectual Property as a Shield in the Tariff Trade War

The global trade order has been shaken in recent years under the Trump administration’s protectionist policies and sweeping tariff strategies. Many companies have been forced to adopt a cautious stance: delaying business expansions, relocating supply chains, or scaling back research and development. The uncertainty is so great that long-term planning often feels impossible.

At first glance, intellectual property (IP) appears powerless against the blunt force of tariffs. After all, tariffs strike indiscriminately—hitting both foreign and domestic companies, even those that hold U.S. trademarks. Why?

IP does not erase tariffs: Even if a company owns U.S. trademarks, its goods and materials are still subject to tariffs when imported.

“Made in America” is costly: Relocating production to the U.S. requires heavy investment and time-consuming supply chain restructuring. When the government requires a company to relocate its supply chain to avoid tariffs while tariffs bring destructive impact on the company’s cash flow, it’s like breaking someone’s legs and asking them to run.

Policy volatility: U.S. tariff policy could change in time like shifting sands. It’s hard for companies to make a long-term plan when rules may change within weeks or months.

Why Intellectual Property Still Matters

Despite this chaos, IP offers something tariffs cannot take away: stability, predictability, and global portability. Unlike goods, IP does not face border checkpoints or customs duties. Brands and technologies can move across markets freely and be monetized quickly. This makes IP a valuable strategic asset—a tool for both defense and offense.

In a downturn, companies holding strong trademark portfolios can generate revenue through licensing agreements and co-branding, maintaining cash flow even when exports decline.

In a recovery, well-established brands help companies recapture market share rapidly. Many industries have already followed the SOP that “build IP first, then expand into the new market.” The difference now is that the “new market” is not untapped territory but a previously stable one disrupted by policy, awaiting recovery.

Building IP in the Downtime

When uncertainty rules the market, companies may feel inclined to wait and see if things will get better. But waiting forever is not a viable strategy. IP can generate passive income through licensing. IP strengthens long-term competitiveness through brand recognition. IP creates tariff strategies. In an era of trade wars, the only assets that truly cross borders, evade shifting policies, and preserve corporate value are intangible assets: intellectual property. Companies should invest in IP while markets stall, and such Companies preparing during downturns will be the first to accelerate when recovery arrives.