A dog’s breakfast
Pets are not protected by the own-name defence, reports John Coldham. [2017] EWHC 609 (IPEC), Azumi Ltd v Zuma’s Choice Pet Products Ltd and Zoe Vanderbilt, IPEC, 24th March 2017.
[2017] EWHC 609 (IPEC), Azumi Ltd v Zuma’s Choice Pet Products Ltd and Zoe Vanderbilt, IPEC, 24th March 2017
Key points
- The use of a sign in relation to dog food is considered to tarnish the reputation of a mark registered in relation to the provision of food and drink
- A larger number of people than those who have eaten at a high-end restaurant may be aware of its reputation
- The own-name defence cannot succeed with reference to the name of a dog, as it is not a natural or legal person, and not a party to proceedings
The High Court considered a claim by Azumi Ltd, owner of high-end Japanese restaurant Zuma, against Zuma’s Choice Pet Products Ltd (ZCPP) and its Director, Zoe Vanderbilt, for trade mark infringement. Judge Melissa Clarke held that the signs complained of were detrimental to the distinctive character and repute of the trade marks, and that the own-name defence could not succeed, as “Zuma” was the name of Ms Vanderbilt’s dog, which was not a natural or legal person, and not a party to the proceedings in any event.
The claim was brought under s10(3) of the Trade Marks Act 1994 and Article 9(2)(c) of Council Regulation (EC) No 207/2009, as amended by Regulation (EU) 2015/2424 (the Regulation). The Defendants brought a groundless threats counterclaim against Azumi, as well as two separate threats claims.
Background
Azumi is the registered proprietor of UK and EU trade marks (EUTMs) for the word ZUMA in relation to providing food and drink and related services. It is also the registered proprietor of a figurative EUTM. It applies the mark to a high-end restaurant in Knightsbridge and associated restaurants in cities around the world. Ms Vanderbilt incorporated ZCPP in 2014, purportedly naming it after her dog, Zuma. The company set out to sell high-quality pet food.
Ms Vanderbilt registered the domain name, dineinwithzuma.com, which directed users to a website marketing pet-food products. This included use of the word ZUMA and the phrase DINE IN WITH ZUMA, along with a device containing the same wording next to an image of a dog. HHJ Clarke noted that the relevant market was not the entirety of the restaurant market in the UK, but rather a smaller one for high-end restaurants in London.
Notwithstanding that, she accepted Azumi’s submission that a larger number of people than those who have eaten at Zuma were likely to be aware of the restaurant’s reputation – through word of mouth, and because of the awards, press coverage and celebrity patronage it has received – such that she found the marks to have a “substantial reputation” in the UK. This, by extension, was sufficient for there to be a reputation in the EU.
Sign use
It was not disputed that DINE IN WITH ZUMA and the device were used as signs. HHJ Clarke considered that it did not matter that the website had not yet accepted any orders, as it appeared ready to take orders and was available to view. Additionally, she noted that it is well-established law that domain names can amount to trade mark infringement. However, she did find that the company name, Zuma’s Choice Pet Products Ltd, had not been used as a sign in connection with the business, and was solely used on the register of company names. Therefore, this use did not amount to infringement. HHJ Clarke found that ZUMA, on its own, was identical to the trade marks, and that use of DINE IN WITH ZUMA was similar, as the average consumer would perceive ZUMA to be the distinctive and dominant element.
Consumer view
HHJ Clarke first looked at whether there was opportunity for the average consumer to make a link between the signs and the trade marks. She held that, because those who are aware of the trade marks are a wider section of the public than those who have eaten at the restaurant, and a significant proportion of that section of the public is likely to be in the market for dog food, there was such an opportunity. HHJ Clarke also observed that, if the Defendants were successful in growing their business, their products may be stocked in supermarkets. Even if the products were sold in specialist stores, the average consumer attracted to the high-quality fresh food they would find at the Zuma restaurant may also seek out high-quality fresh food for their dogs and encounter the Defendants’ products.
HHJ Clarke 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. She also accepted Azumi’s submission that the words DINE IN enhanced the likelihood of a link, because one does not normally refer to dogs “dining”.
Tension
Azumi’s witness, the restaurant’s co-founder Rainer Becker, told the Court that there is an inherent tension between dog food and human food, and an even greater one between dog food and food served in high-quality restaurants. The Court was satisfied that the association consumers would make between the trade marks and the use of the signs complained of in relation to dog food would tarnish the image, or reputation, of the trade marks. This would likely have an adverse effect on the economic behaviour of the average consumer with knowledge of the trade marks.
Own-name defence
The Defendants pleaded the own-name defence with reference to Ms Vanderbilt’s dog, Zuma. HHJ Clarke confirmed that, as a matter of law, this could not succeed. In respect of the EUTMs, Article 12(1)(a) of the Regulation states that the own-name defence can only apply to natural persons. HHJ Clarke 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 Defendants also relied on the own-name defence in relation to ZCPP’s company name, but that was not considered in light of HHJ Clarke’s finding that the Defendants’ use of the company name did not amount to infringement.
Threats
HHJ Clarke held that the threats complained of by the Defendants were all justified, except for the requirement to change the company name of ZCPP, as the company name was not used as a sign in the course of trade. However, she could not find any evidence of the Defendants having suffered any loss or damage, and therefore held that there was no entitlement to damages.
John Coldham is a Director at Gowling WLG
George Sevier, Principal Associate at Gowling WLG, was co-author.
Gowling WLG acted for Azumi. The Defendant has sought permission to appeal.