Dog fight over Zuma trademark
The claimant in this case, Azumi Limited, owned ten high end and sophisticated Japanese restaurants around the world, including a location in Knightsbridge called Zuma. Since opening in 2002, Zuma has received high praise in the restaurant industry and in publications such as TimeOut, has been named as one of London's best Japanese restaurants. In 2001 and 2004, the claimant registered ownership of two trade marks for the word ZUMA in the UK and EU for the provision of food and restaurant services. In 2012, a figurative mark showing the word ZUMA was also registered in the EU.
The defendants in this case, Zuma's Choice Pet Products and sole director and shareholder, Ms Zoe Vanderbilt, manufacture and sell high quality pet food for dogs and cats. The company was named by Ms Vanderbilt after her dog, Zuma, and, in June 2014, Ms Vanderbilt registered the domain name 'dineinwithzuma.com' which directs users to a website marketing pet food products. The website in question includes use of the word ZUMA as well as the phrase DINE IN WITH ZUMA alongside an image of the dog Zuma appearing with a banner which reads "DINE IN WITH ZUMA".
In August 2014, Ms Vanderbilt applied to register a UK trade mark for DINE IN WITH ZUMA and in November 2014, the claimant became aware of the application. The claimant notified Ms Vanderbilt of their intention to oppose the application. Following an open and without prejudice meeting between the parties in May 2015, Ms Vanderbilt alleged that the claimant's actions amounted to unjustified threats to bring trade mark infringement proceedings.
Further claims made by Ms Vanderbilt against one of the claimant's directors, Mr Rainer Becker and the Claimant's trade mark attorneys Mr John Wallace and Boult Wade Tennant, were stayed and claims against six other defendants were struck out in October 2015.
In respect of the claim by the claimant against the defendants, Ms Vanderbilt's request for summary judgment was dismissed and Mr Recorder Douglas Campbell QC found the claimant's pleadings to be sufficient to encompass a complaint of the use of ZUMA in the company name of Zuma's Choice Pet Products and found support for the claimant's reliance on an "own name" defence, which can only refer to the company name. The defendants did not appeal this decision.
Mr Campbell QC further noted the absence of a counterclaim made by the defendants for invalidity or revocations of the claimant's marks and therefore the presumption was made that each of the claimant's marks were validly registered for all the goods and services in the classes for which it was registered.
On 24 March 2017, Judge Melissa Clarke considered the following:
- A claim by the claimant against the defendants for trade mark infringement
- A claim by Ms Vanderbilt against the claimant for groundless actionable threats to bring trade mark infringement proceedings
Judge Clarke found the defendant's use of dineinwithzuma.com, ZUMA, DINE IN WITH ZUMA and the DINE IN WITH ZUMA image to infringe the claimant's marks under section 10(3) TMA 1994 and Article 9(2)(c) of the EU Trade Mark Regulation 2015/2424 and the claimant was entitled to injunctive relief restraining the defendant's from further infringement.
Another issue for Judge Clarke's consideration was whether there would be a link in the mind of the average consumer between the use of the defendant's marks and the claimant's marks. Counsel for the claimant submitted that the words "Dine In" enhanced the likelihood of a link as dogs are not frequently referenced as "dining". On a similar note, Counsel for the claimant submitted that the defendant's presentation of food products such as "slow braised pork" and "cheesy mash" could easily be associated with human food and therefore the possibility of a link was further enhanced. Judge Clarke was satisfied with the average consumer's likelihood of making a link.
The defendant pleaded the own name defence in the defence, with particular reference to Ms Vanderbilt's dog, Zuma. However, Counsel for the claimant submitted that, as a matter of law, this defence could not succeed, and, as was agreed by Judge Clarke, Ms Vanderbilt's dog was not a party to the proceedings, nor was it a natural person or company.
Ms Vanderbilt's complaint regarding the claimant's groundless actionable threats was determined as unfounded and the claimant's actions were considered justified by Judge Clarke. The only aspect of the claimant's demands found to be unjustified was the requirement for Ms Vanderbilt to change the name of Zuma's Choice Pet Products. Judge Clarke found that Ms Vanderbilt was entitled to use the name only as a company name, and that such use would not infringe the claimant's marks. Ms Vanderbilt was not entitled to damages in respect of her claims.
The judgment in this case highlights the caution that should be taken with company names and that, despite their owner's beliefs, a much-loved pet is not, as a matter of law, considered a natural person.
If you would like further information on this issue, or have concerns regarding trade mark registration or infringement, then please contact Blake Morgan's Intellectual Property team.