Industria De Diseno Textil S.A. (Inditex, S.A.) v House of Zaira Sdn. Bhd.

wa-24ip-5-01-2025 High Court (Mahkamah Tinggi) 29 September 2025 • WA-24IP-5-01/2025 • 42 min read
5 cases cited (0 SG, 5 foreign)

Outcome

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No 2011023054 in class 35 and the defendant’s Trademark application No 2011023053 in class 16 is reversed and/or rescinded as well as set aside in its entirety.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.

Quoted verbatim from the judgment of High Court (Mahkamah Tinggi) (wa-24ip-5-01-2025). Read the full judgment on the official Malaysia Courts portal for the complete decision.

Catchwords

INTELLECTUAL PROPERTY LAW — Trademark Opposition and Registration — Evaluation of the likelihood of confusion between trademarks — Plaintiff is the owner of a well-known trademarks of “ZARA” and “ZARA HOME” — Defendant applied to register trademarks of “Zaira” and “House of Zaira” in classes 16 and 35— Plaintiff's opposition to the registration was dismissed by the Registrar — Determination of whether marks are confusingly similar — Consideration of the impact of disclaimers in trademarks — Applicability of side-by-side and imperfect recollection tests — Court allowed the originating summons and set aside the Registrar's decision — Trademarks Act 1976

Practice Areas

Intellectual Property Civil Procedure

Judges (1)

Edwin Paramjothy a/l Michael Muniandy Delivered

Counsel (5)

Bustaman and Associates Firm Rubachandran and Associates Firm Mahendra Balakrishnan Counsel Plaintiff Rubachandran a/l Govindasamy Counsel Defendant Sanjay Rajaah Kumar Counsel Plaintiff

Parties (2)

House of Zaira Sdn Bhd Respondent Industria De Diseno Textil S.a. (inditex, S.a.) Applicant

Cases Cited (5)

MY (5)
[1997] 2 MLJ 724 [1997] 3 MLRH 835 [2007] 4 MLRH 377 [2019] 2 MLRH 480 [2021] 4 MLRH 235

Judgment

Read the full judgment on the official Malaysia Courts portal.

Read on eJudgment

Source: eJudgment (wa-24ip-5-01-2025)