Court of Justice of the European Union renders judgment in ZARA case regarding gift cards

This led to a legal dispute with Inditex, the owner of the ZARA brand, due to the use of the "ZARA" sign in the advertising campaigns. Inditex claimed that this use was unlawful and infringed its trademark rights. Buongiorno argued that it was only incidental use and that this sign was not used as a trademark, but rather as a referential use that falls under the lawful use of another's distinctive signs.

The CJEU reiterates that the proprietor of a trademark should not be entitled to prevent the general fair and honest use of the mark for identifying or referring to the goods or services as those of the proprietor. However, it is up to the national court to determine whether this specific use was necessary to indicate the intended purpose of a service which Buongiorno offered and, as appropriate, whether that use was made in accordance with honest practices in industrial or commercial matters. However, before making such assessment, the national court should determine whether this specific use of the trademark constitutes use of a trademark at all.

Interesting questions remain, not only in relation to the assessment that the national court will have to make regarding the necessary use (was it also necessary to draw a rectangle creating the impression of a gift card), but also such as whether the gift card should be regarded as an exhausted good instead of as referential use.