The recent opening of the first Zacaffè café in Madrid in November 2024 has provided a significant boost in both commercial terms and market expansion for Inditex. This new experiential café concept, located on the iconic Hermosilla Street in the Spanish capital, represents a key step in the Galician company’s diversification strategy, aiming to enhance the shopping experience in its stores and explore new market niches.
However, the EU trademark application “ZACAFFÈ” 
filed on October 7, has faced a major setback following the admissibility of the opposition filed by the Italian company Zicaffe’, which specializes in coffee production and distribution. The opposition is based not only on the similarity between the trademarks and products but also on the reputation that Zicaffe’ attributes to its prior rights, arguing that it could mislead consumers, create an undue association, and affect the Italian company’s commercial identity.
The admissibility of the opposition by the EUIPO, as well as a possible rejection of the trademark registration, would force Inditex to reconsider its development strategy for its innovative café concept. The company would have to weigh three alternatives: filing an appeal against the potential rejection, a process that could take several months or even years, affecting the continuity of the project; negotiating with Zicaffe’ for a trademark coexistence agreement, which would depend on Zicaffe’s willingness to accept specific conditions, with no guarantee of success; or finally, changing the name of its café concept, thereby avoiding a legal dispute but requiring a brand identity adjustment and potentially delaying its rollout.
The upcoming EUIPO decision highlights the growing importance of intellectual property in the expansion strategies of major corporations. In an increasingly globalized market, trademark protection has become a crucial factor in ensuring brand differentiation and preventing legal conflicts.
Inditex, known for its adaptability and agile decision-making approach, will have to assess the best course of action to move forward with its café project. In the meantime, the future of Zacaffè remains uncertain, pending the next steps of the Galician company.
At Abril Abogados, we will keep you updated on the latest developments in this case.
Paula Cerrillo
