PastaZARA / ZARA: the EU General Court rules out the risk of unfair advantage to the fashion brand

By judgment of 10 September 2025 (Case T-425/24), the General Court of the European Union ruled on a conflict between the trademarks belonging to unrelated sectors: pasta and fashion.

The dispute was between, on the one hand, Ffauf Italia S.p.A., owner of the sign “pastazara” for food products in Class 30, and, on the other, the Spanish giant Inditex, proprietor of the well-known trademark ZARA, registered inter alia for clothing products in Class 25.

The case originated from the opposition filed by Inditex against the registration of the trademark “pastaZARA Sublime,” based on Article 8(5) of Regulation No. 40/94, which protects well-known trademarks even beyond the scope of similar goods or services.

The EUIPO Opposition Division upheld the opposition, finding that use of the contested sign could unduly take advantage of the reputation of the ZARA mark.

The subsequent appeal lodged by Ffauf Italia S.p.A. was dismissed by the EUIPO Board of Appeal, which confirmed the decision of the Opposition Division.

Ffauf Italia S.p.A. then brought the matter before the General Court of the European Union, seeking the annulment of the Board of Appeal’s decision.

In its judgment, the Court – while confirming that the strong reputation of the ZARA trademark in the fashion sector was already established in 2008 (the date of filing of the “pastaZARA Sublime” application) – stressed that this circumstance alone was not sufficient to prevent any registration containing the same verbal element.

The decision, overturning the previous findings of the EUIPO, clarifies that the use by a third party of a sign similar to a reputed trademark may nevertheless be justified, under Article 8(5) of Regulation No. 40/94, where it is shown that:

• the sign was used prior to the filing of the reputed trademark; and

• such use was made in good faith.

As to the first requirement, the Court noted that the Board of Appeal had failed to consider that signs containing the element “pastazara” had been registered for decades in Class 30 by Ffauf, and that the use of the name “Zara” was historically connected to the Dalmatian city from which the company derived its name.

The Court clarified that the issue of good faith must be assessed by taking into account:

• the degree of recognition of the sign among the relevant public;

• the proximity between the goods and services concerned; and

• the economic and commercial relevance of the use of the sign for the products at issue.

The Court attached particular importance to the evidence provided by Ffauf Italia S.p.A.: invoices, packaging, catalogues and brochures demonstrated wide-scale marketing of pasta bearing the “pastazara” mark in several Member States, proving a significant presence within the Union.

Accordingly, taking into consideration this prior use, the historical link with the city of Zara, the lack of proximity between the respective product markets, and the economic investments made to protect the sign, the Court found that there existed a legitimate justification capable of excluding the application of Article 8(5) of the Regulation.

Consequently, the General Court annulled the decision of the EUIPO Board of Appeal, ruling that the trademark “pastaZARA Sublime” could neither take unfair advantage of nor be detrimental to the reputation of the ZARA mark.