The dispute began on October 7, 2024, when Zara filed an application to register the Zacaffe trademark with the European Union Intellectual Property Office (EUIPO). The Zacaffe brand was designed as part of Zara’s business diversification strategy, which includes opening coffee shops in its clothing stores. However, the Italian company Zicaffe, which has n operating in the market since 1929, argued that the name Zacaffe was too similar to its own brand and could mislead consumers. In response, Zicaffe filed a formal objection, arguing that the similarity of the names infringed on its trademark rights.
The basis of Zicaffe’s opposition is Article 8(1)(b) of the Regulation on the European Union trade mark (EUTMR), which concerns the likelihood of confusion among consumers. Experts point to three main aspects of similarity: visual, phonetic, and conceptual. Visually, both marks are almost identical in terms of length and structure – they differ only in the letters “I” and “A” in the prefixes “Zi” and “Za”. Phonetically, the names sound very similar, especially in European languages, where the accents are uniform. Conceptually, both marks evoke associations with coffee due to the common element “caffe”. Although “Zi” may refer to Sicily and “Za” to Zara, the average consumer will not notice these subtle differences.
Zicaffe emphasizes that the similarity in names could lead to confusion in the coffee market, where consumer attention is limited. In the case of products like coffee, even small differences may go unnoticed. Zara defends itself by stating that the Zacaffe brand will only be used in Zara stores, which should eliminate the risk of confusion. However, experts point out that after registering the trademark, the company could also use it outside of its stores, which weakens this argument.
The EUIPO’s decision will be crucial for both parties. If Zicaffe’s opposition is upheld, Zara may be forced to rebrand its coffee venture, which would entail significant costs and potential reputational damage. Conversely, Zicaffe’s success will strengthen the protection of its brand and highlight the importance of strictly adhering to trademark regulations. This case also illustrates the challenges associated with global brands diversifying their operations and the need to balance innovation with respect for existing rights.
The dispute between Zicaffe and Zacaffe is an example of how important it is to carefully analyze potential conflicts when registering new trademarks. The outcome of this case could set a precedent for other companies planning to expand into new markets or industries. For consumers, the question remains: are the differences between “Zi” and “Za” sufficient to avoid confusion?
Fill out the form and we will get back to you within the next … with a preliminary quote.
