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Top lawyer tells Zara to back off in entrepreneur trademark fight

Ballymoney ceramics maker has strong defence in any future case, warns commercial attorney

A young entrepreneur should be safe against any pressure from fashion and home furnishings company Zara, according to a leading trademark lawyer.

The use by a person of his or her own name is a strong defence against a claim of trademark infringement, said Cherrie Stewart, from the Belfast law firm Ansons.

Ballymoney-based ceramics maker and artist Zara McLaughlin (23) said the company wanted her to drop the first name of her business, which was called Zara Ceramics, altogether. She fears its management will continue to pressure her to do so.

Over the course of approximately a year, Zara Home, the furnishings arm of the business, sent warnings to her about the name of her firm.

The global conglomerate declined to respond to claims that it was attempting to force the businesswoman to drop her name from the small operation she ran from her garage.

The retailer’s parent company, Inditex, did not respond to multiple messages left at offices in Spain and the UK over two days seeking comment on its year-long pursuit of the former Ulster University creative arts student.

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Zara McLaughlin. Credit: Kevin Scott / Belfast Telegraph

Zara McLaughlin. Credit: Kevin Scott / Belfast Telegraph

Zara McLaughlin. Credit: Kevin Scott / Belfast Telegraph

But Ms Stewart said Ms McLaughlin had a strong potential defence in any future case.

The ceramics maker changed her company name from Zara Ceramics to Zara McLaughlin Studios. This should protect her from any further claims, the lawyer said.

But following the year-long back-and-forth with Zara Home and a final warning to change the name by December 31, which she complied with, the businesswoman is still concerned.

“I still believe they are not happy [with her using the name Zara]. I changed it, but I think they will still be on me,” she said.

The relevant clause in law is that a registered trademark is not infringed “by the use by an individual of his own name or address”.

This is “provided the use is in accordance with honest practices in industrial or commercial matter” — meaning the person does not deliberately try and benefit from the link.

“A trademark registration can be enforced against use of a mark which is identical or similar where the goods are identical or similar,” said Ms Stewart.

“So, if a company has a trademark registration for ‘Zara’, then action could be brought against the use of ‘Zara’ as a trademark in respect of identical or similar goods, particularly since the word ‘ceramics’ is descriptive of the goods in question.

“Enforcing a trademark registration against use of marks which are identical or confusingly similar protects not just the reputation of the owning company but also protects consumers from mistakenly purchasing similar products which are sold under similar trademarks.

“Something we always stress is that, before launching any product or service onto the market, a clearance search should be conducted to ensure use of the trademark doesn’t infringe the trademark rights of a third party.”

Zara, who has just moved into a studio from an old space in the garage of her home, believes the company, part of a Spanish-based global conglomerate, is still not happy because it did not want her using her name on any of her products’ branding.

Her business, which makes limited-edition pots and other pieces, boomed after the first lockdown, which she believes may have led to her coming to the attention of Zara bosses.

A video she posted on TikTok showing her at work in the garage also went viral and her name was beginning to crop up at the top of search engine results for ‘Zara’.

The businesswoman was left bewildered when she received an email from Zara Home approximately a year ago.

It claimed the name ‘Zara Ceramics’ could be mistaken for its brand and therefore breached trademark laws.

As further emails arrived, surprise turned to fear that she would lose her company name.

“I thought it was a joke, an odd email that was spam, so I just ignored it,” Zara said

“Then a couple of months later, another arrived saying, ‘You cannot use your name because it undermines Zara Homes’.”

The entrepreneur decided to fight back against the retailer’s warnings and, with the help and support of her father, looked for legal advice.

“That was the biggest part because I was afraid of not being able to use my own name just as my business was getting a wee bit bigger,” she said.

“People knew my work and the business is built around my credibility, my name.

“[Losing the name] would have devastated [my business] because my brand would have been gone overnight.”

The case was particularly damaging because she sells most of her work through promotion on social media.

The advice she received was the retailer had a case when it came to the use of ‘Zara and ‘Ceramics’ and around some of the colouring, but that the company cannot stop someone from using their own name.


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