A dog’s breakfast: use of ZUMA for dog food infringes famous restaurant’s trademark

The owners of Michelin-starred Japanese restaurant, Zuma, have won a court battle against a businesswoman who used the name for her brand of dog food.

Background

Azumi Limited (“Azumi”) is the registered proprietor of a UK and an EU trade mark for the word mark ZUMA in class 42 and class 43 respectively. It is also the registered proprietor of a figurative EU trade mark. It applies the mark to a high-end restaurant in Knightsbridge, and associated restaurants in selected cities around the world. The judge found the restaurant to be “amongst London’s best restaurants of any type”, and that it has been “recognised by a number of awards and accolades over the years”.

In 2014, Mrs Vanderbilt incorporated her company, Zuma’s Choice Pet Products Limited (“ZCPP”), purportedly naming it after her dog, “Zuma”. The company set out to sell high quality pet food, with names such as “cottage pie with cheesy mash” and “beef stew with liver and dumplings”. Ms Vanderbilt registered the domain name ‘dineinwithzuma.com’, which directs users to a website which markets pet food products and includes use of the word ZUMA and the phrase DINE IN WITH ZUMA along with a logo containing the same wording next to an image of a dog.

Judgment

The judge found that ZUMA on its own was identical to Azumi’s trade marks, and that use of DINE IN WITH ZUMA was similar, as the average consumer looking at the signs complained of as a whole would perceive the distinctive and dominant element to be ZUMA.

The judge observed that if the defendants were successful in growing their business, their products may be stocked in major supermarkets (as Ms Vanderbilt had said she wished to happen), and even if the products were sold in specialist stores, the average consumer who is attracted by the high quality fresh food for themselves at Zuma restaurant, may also seek out high quality fresh food for their dogs and encounter the defendants’ products.

Finally on the issue of link, the judge was satisfied that the average consumer who is aware of the trade marks would, on exposure to the signs complained of, call the trade marks to mind and make a link. The judge also accepted Azumi’s submission that the words “Dine In” as used by the defendants enhance the likelihood of a link, because one does not normally refer to dogs “dining” as that is more of a human activity.

The defendants pleaded the own name defence with reference to Ms Vanderbilt’s dog Zuma. The judge confirmed that as a matter of law this could not succeed. The own name defence could not succeed in respect of the EU trade marks, as it now only apply to natural persons, rather than companies (as was the case previously). The judge was also not satisfied that the defence was made out in respect of the UK trade mark, because ZUMA is not ZCPP’s legal name but rather the name of a dog, and the dog was neither a natural or legal person, nor a party to the proceedings.

The judge held that the threats complained of by the defendants were all justified except for the requirement for her to change the company name of ZCPP, as she had not used the company name as a sign in the course of trade. However, the judge could not find any evidence of the defendants having suffered any loss or damage, and therefore held that she was not entitled to damages.

The main infringement case was heard together with the two threats claims, but they were not consolidated (at the request of the defendants). As such, the costs cap applied to each case individually and, given the number of unsuccessful applications the defendants had made (some of which related to the threats claims), the court awarded just over £66,000 in costs in total.

Comment

While a fairly unsurprising decision, the case does serve as a reminder to brand owners that they do not necessarily have to prove that there is a likelihood of confusion in order to prevent damaging use of their trade mark (or a similar trade mark) or someone taking unfair advantage of it.  While the reputation required of a mark in order to bring a claim in these circumstances is high, it is always worth exploring whether there is a case if you have a concern.

Before launching a new product or service, the case also illustrates how vital it is to carry out some essential due diligence checks yourself, and the importance of undertaking a legal check of the rights to use a name in all territorial areas where you will do business.

For further information and advice on our trade mark clearance check service and how we can help you protect your brand name, contact us.

Tidman Legal is a law firm based in Edinburgh specialising in intellectual property and business law.