In Azumi Ltd v Zuma's Choice Pet Products & Others, the UK Intellectual Property Enterprise Court (IPEC) addressed a number of issues - including use of the own name defence for a dog.
The case provides useful information for brand owners with prestigious marks wishing to enforce their rights, particularly where there is a disparity between the goods and services. It also highlights the need to take care when clearing new brands, particularly where marks with a strong reputation are involved.
The Defendant was Zuma's Choice Pet Products Limited which planned to manufacture and sell high quality pet foods via the website at "dineinwithzuma.com". It was claimed the company was named after the founder's dog, Zuma. The word ZUMA and phrase DINE IN WITH ZUMA were frequently used on the website, along with a distinctive dog device which appeared as a banner across each page of the website and on packaging.
The claimant, Azumi Limited, operate a number of high-end Japanese restaurants called Zuma around the world, including a restaurant in Knightsbridge, London. It is also the owner of registered UK and EU trade marks for the word ZUMA in relation to provision of food and drink and restaurant services.
In 2014 the Defendant filed a UK trade mark application to register the mark ‘Dine in with Zuma’ in class 31 in respect of foodstuffs for animals. Azumi Limited was concerned with the potential association with dog food and contacted the Defendant asking that the name be changed. The Defendant refused. Trade mark infringement proceedings were issued in relation to use of the company name, domain name, the sign "Zuma", the sign "Dine in with Zuma" and the device. The Defendant counterclaimed for groundless threats and the matter proceeded to trial.
The court concluded that there was trade mark infringement in relation to all the signs, except for the company name and a number of particularly interesting points were made in the judgment.
Points to Note
- In relation to the assessment of the reputation of the earlier restaurant related trade marks, the relevant market was held by the judge to be "high quality, high-end restaurants in London". Notwithstanding this and the fact Azumi only has one ZUMA restaurant in the UK, it was able to establish a "substantial reputation in the UK" on the basis that a larger number of people are likely to be aware of the restaurant through word of mouth and because of the awards, press coverage and celebrity clientele. This by extension was sufficient for there to be considered a reputation in both the UK and the EU.
- In relation to establishing a link between the marks in the mind of the average consumer, the court considered that a link could be made as a proportion of those who were aware of the Zuma restaurant would also own dogs and be in the market for high end pet food. The Court also considered that the humanising of the names used for the dog food, the slogan "dine in with Zuma" and images of the dog in a bow tie did not help the defendant argue against this point.
- So far as tarnishment and dilution of the trade marks were concerned, the court found that there was tarnishment based on an "inherent tension" between dog food and human food, which was even greater for a high quality restaurant like ZUMA. This association was likely to reduce the connotations of prestige, and subsequently have an adverse effect on the behaviour of the claimant's clientele, resulting in dilution. The evidence of the only witness, the co-founder of the restaurant Rainer Becker, was critical to proving this point, which shows the value of taking care when choosing a witness.
- Not surprisingly in relation to the own name defence - the judge confirmed the own name defence cannot be relied upon if you name your business after a dog. It was noted that "the dog is not a party to the proceedings, nor is it a natural person or company". It is also worth noting the own name defence is no longer available for companies in disputes involving EU trade marks.
This case reiterates the requirement to exercise caution where a brand is close to another with a reputation. It is particularly important where the goods or services share, as the judge described, an 'inherent tension'. While it is certainly a reminder to check the registers for marks relating to seemingly unrelated goods and services, it also serves as a reminder to take any received objections very seriously.