Delhi High Court's ZARA v ZORA Ruling Back in Focus: No Prior Rule 124 Declaration Needed to Invoke Section 11(2), and No Dissection of Marks

Indian practitioners have been discussing since 26 September an earlier Delhi High Court judgment in ZARA v ZORA: the court held that when a proprietor invokes Section 11(2) of the Trade Marks Act 1999 to protect a well-known mark across classes, the statute imposes no precondition that the mark must first have been formally declared well known under Rule 124, and the court or the Registrar may decide the point in the case at hand on the factors in Section 11(6) and related provisions. The judgment was delivered by Justice Jyoti Singh on 6 July 2026 (C.A.(COMM.IPD-TM) 52/2024) on Inditex's appeal under Section 91 against the Registrar's order of 8 February 2024, which had dismissed Inditex's opposition 1188767 to the mark ZORA.

ZORA had been applied for by Aggarwal Bag House on 30 October 2019 claiming use since 3 June 2016 and was registered under number 4310686 in Class 24 for plain, coated, laminated, impregnated and waterproof fabrics.

The court reasoned that Section 11(2) requires only that the earlier mark 'is a well-known trade mark in India', not that it has been declared so by a court or the Registrar; the proprietor need only satisfy through evidence the parameters of Sections 11(6) and (7) read with Section 2(1)(zg); the legislature deliberately used 'well-known' in Section 11(2) but 'determined to be well known' in Section 11(8); Rule 124 was introduced only with the 2017 amendment of the rules; and any other reading would render Section 11(5) with its Explanation (b) and the corresponding rule otiose.

The court also criticised the Registrar for splitting ZARA and ZORA into 'ZA/RA' and 'ZO/RA' and comparing the prefixes, an erroneous dissection contrary to the settled anti-dissection rule that rival marks are compared as a whole; seen as wholes the two marks are phonetically, visually and structurally similar, and the enquiry under Section 11(2) is dilution of and detriment to the distinctive character and repute of the earlier mark rather than consumer confusion under Section 11(1).

The court accordingly quashed the Registrar's order, cancelled the registration of ZORA in Class 24 and directed the Registrar to remove the entry from the Register within two months.

This is a judgment from more than two months ago returning to the spotlight, not a new decision: the commentary published on SpicyIP on 26 September brought the debate to the fore, noting that the case-by-case route running alongside the Rule 124 list may create a two-track system in which frequently litigated marks obtain reusable precedent while the well-known status of other marks remains uncertain.

For foreign brands operating in India the practical significance is that well-known protection rests on the evidence itself, and that similarity at Registrar level must not be assessed by dissection.

J&C recommends that companies with brands in India use the judgment in two ways: when a similar mark is filed, oppose or seek cancellation directly under Section 11(2) without waiting for a Rule 124 listing, backed by evidence on the Section 11(6) factors such as sales, advertising, market reach, registrations and enforcement; and still consider a Rule 124 application where justified, since a case finding binds only that case while the formal list gives a stable, citable answer; and insist on comparison as a whole, appealing promptly against any Registrar decision based on dissection.

Source: delhihighcourt.nic.in