A big success for a small Swiss company. A small Swiss beverage company won a case against the owner of the “ZARA” trademark in the Federal Administrative Court and showed how important trade mark protection is for companies.
The case
In 2021, the Swiss company registered its trade mark “zämä” for, among other things, clothing (clothing, footwear and headwear; class 25). Shortly after the trade mark “zämä” was registered, INDITEX filed an objection, citing its existing trade mark for “ZARA”, which had been registered in 1999. The Swiss Federal Institute of Intellectual Property subsequently revoked the registration of “zämä”. However, the small Swiss company successfully appealed this decision before the Federal Administrative Court, which ruled that there is no risk of confusion between the trade marks “ZARA” and “zämä”. As a result, “zämä” can be protected as a trade mark for clothing in Switzerland.
The argument presented was that “zämä”, a Swiss German word meaning “together”, is distinctly different from “ZARA”, which is perceived by most people as either an invented term or a first name. The pronunciation of the two trade marks also differs — “zämä” is pronounced in various ways across different language regions in Switzerland, unlike “ZARA”. Visually, the differences in the typeface are significant enough to distinguish the two. The court concluded that, despite a slight visual resemblance, the trade marks are unlikely to be confused due to their distinct meanings and pronunciations.
Why is trade mark protection important?
Trade marks play a crucial role in a company's success, defining its identity and the qualities of its products and services. They create recognition and value, with a strong trade mark presence built around a carefully crafted name, logo, and slogans — elements that form the foundation of any corporate identity. However, without proper trade mark protection, these distinctive features risk being copied or even exploited by competitors, which can be especially damaging in the B2C sector.
Trade mark protection provides both security and assurance: by registering a trade mark, a company can prevent competitors from using identical or similar signs for comparable goods and services. This ensures the trade mark’s uniqueness and safeguards it from imitators under the Trade Mark Protection Act. Effective trade mark protection not only enhances the company’s value but also builds customer trust. Thus, trade mark protection goes beyond mere legal coverage — it is also an investment in the company’s future
What is a trade mark, and how is trade mark protection achieved?
Under the Trade Mark Protection Act, a trade mark is a sign capable of distinguishing the goods or services of one undertaking from those of other undertakings. Trade marks may, in particular, be words, letters, numerals, figurative representations, three-dimensional shapes or combinations of such elements with each other or with colors.
Trade mark protection is achieved through entry in the trade mark register, granting the exclusive right to use the trade mark for designated goods and services, which are categorized into different classes. The protection lasts for ten years and is renewable. Priority is given to trade marks registered first; if a new trade mark is identical or too similar to an existing one, it may be deemed ineligible for protection through an opposition process.
The case of “zämä” vs. “ZARA” illustrates that a well-planned and executed trade mark protection strategy is vital for staying competitive. As a strategic asset, it reinforces a company’s position in the market.
Ready to protect your trade mark?
Whether you’re a start-up or an established company, it’s important to adopt a proactive approach to trade mark protection early on. If you aim to protect your company name, brand, or logo, it's advisable to address this matter promptly. With Lex Futura's Fixpreisprodukt «Brand Protection», you can take the first step toward securing your trade mark.
