The Spanish company would have decided to open a series of coffee shops by calling them Zacaffè: too similar to Zicaffè, which uses the EUIPO

David against Goliath. This is, in a nutshell, the deadly story that faces these days an Italian company, the Zicaffè S.p.a. coffee roasting industry founded in 1929 in Marsala, in the province of Trapani, deployed against the giant, the well-known Spanish clothing chain Zara part of the Inditex Group, 36 billion turnover. The battlefield is coffee and, above all, a name. Let’s see.

Zicaffè is a family-owned company that deals with the roasting and export of coffee blends and, according to official documents published on the website of the Eiop, submitted its reply to the patent application of the Spanish fashion chain Zara on 25 December. The Sicilian roasting company would have requested the European Union Office for Intellectual Property (Euiop) to block the use of the name Zacaffè by the fashion giant Inditex, owner of Zara, for its new coffee shops, Claiming that the name is too similar to their own brand. 

The lawsuit was launched on 7 October when Zara filed an application for registration of the Zacaffé coffee brand for eight different products, including bars, restaurants, the line of coffee shop clothes and related gadgets. The time limit for all companies wishing to challenge the registration of a trade mark is three months. Zicaffè therefore filed on 25 December (within the prescribed time limit) an opposition to EUIPO to block the registration of the Zacaffè trademark. 

The vice president of the board of directors and one of the owners of Zicaffè, Vito Michele Zichittella, grandson of the founder, spoke about what actually happened. "Given that the Zicaffè brand was registered in 1971 both nationally and internationally and subsequently renewed over time -says Zichitella-, I begin with the facts, from which I draw some considerations. First, based on three communications of 11/10/2024 from the Eiopo, held to the supervision of registered trademarks, we were informed that the Industria de diseno Textil S.a. (Inditex S.A.), based in Spain, owner of the well-known brand Zara, had registered three European marks Zacaffè in classes 30 (coffee beans and ground coffee; coffee blends) and 43 (services for providing food and drink). Of these three, one was textual Zacaffè, and two graphics, with logos that, while bearing the writing Zacaffè, differed from that Zicaffè". 

"On 27/11/24 -continues Zichitella- we sent to Inditex a warning to use the trademarks (registered but still to be registered) which however ended with some solutions that led to the exclusion of litigation; Our lawyers have compared themselves with those of the other party, without obtaining the willingness to withdraw the three applications. Therefore, on 25/12/24 Zicaffè presented to Euiop the oppositions to the three deposits made by Inditex S.A., mainly motivating the similarity of the two names (Zicaffè and Zacaffè) which could generate confusion among consumers and damage the distinctiveness of our brand. In this context of litigation, the Euiop plays a decisive role, since it also decides on disputes arising from oppositions".

"It should be pointed out -says Zichitella-, that this judgment is based exclusively on the similarity of the marks compared and does not take into account other factors which could be the subject of a genuine civil dispute, as possible commercial conflicts due to confusion of the marks. We are currently waiting for the EU to rule on the validity of oppositions and decide whether the marks will be allowed to co-exist. In the specific case of Zacaffè, what we dispute is that this mark inevitably creates confusion with our Zicaffè, as it appears evident in the immediacy of the perception of the two marks in writing and in their pronunciation. We do not dispute -emphasizes the manager- the graphics of the two logos, which differ totally from our brand, but the phonetics of Zacaffè and this also in contrast with what is indicated in the notes of the ministry of Enterprises and made in Italy. It seems unlikely that a Spanish company uses the Italian word 'coffee' within the brand: in fact, in Spanish it is called "Cafè". If instead of Zacaffè the Inditex S.A. had filed Zacafè or Zaracafé or even Zaracaffè, we would certainly not have made any opposition, since phonetically these logos differ in a clear way".