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.
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.
This publication is intended for general guidance and represents our understanding of the relevant law and practice as at July 2017. Specific advice should be sought for specific cases. For more information see our terms & conditions.