The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 15 May 2017

Dining out on trade marks - ZUMA - the own name defence for pets and groundless threats

The distinctive dog device
Azumi Ltd v Zuma's Choice Pet Products Ltd [2017] EWHC 609 is a case about a dog's purpose.  That dog is called Zuma.

Zuma the dog inspired Zoe Vanderbilt to set up her company Zuma's Choice Pet Products Limited and register the domain name dineinwithzuma.com.  She planned to manufacture and sell premium pet foods via her website.  Her business was named after her dog Zuma, a Japanese Akita/GSD cross.  The website made frequent use of the word ZUMA and phrases DINE IN WITH ZUMA including the distinctive dog device which appeared as a banner across each page of the website.

Zuma is also the name of a famous Japanese restaurant in London.

Zuma (the restaurant) was less than thrilled at the potential association with dog food.  Azumi Limited (the owner of the Zuma mark) attempted to persuade Mr Vanderbilt to change her business name.  She refused.  Trade mark proceedings were issued, closely followed by a claim for groundless threats.

The outcome of the case will not come as a huge surprise to readers, the distinctive and dominant element of the signs was held to be ZUMA, there was identical or confusingly similar use of the sign and an association between a high end restaurant and dog food was found to be detrimental to the distinctive character of the ZUMA marks.

However, there are a few interesting points to note:

Reputation

Although Zuma only has one restaurant in the UK, its international fame and celebrity clientele was sufficient to establish that the ZUMA marks have a "substantial reputation in the UK" for the purposes of section 10(3) Trade Marks Act 1994.  The relevant market was identified by the judge as "high quality, high-end restaurants in London" [49].
Zuma the dog (probably)
c/o DineinWithZuma.com

Use of a sign

Although the defendants accepted that they were using DINE IN WITH ZUMA and the distinctive dog device as signs because they were fixed to packaging and offered for sale via the website.

There was some dispute as to whether use of ZUMA alone was use of a sign.  The defendants argued that it was not used as a sign but as the name of a dog, e.g. "We also have a growing range of Treats, try Zuma's favourite Mouthwatering Meatballs!" This argument failed because the website didn't explain that Zuma is a real dog and the argument that Zuma's doggy identity could be inferred from the statement "Help your dog stay in top condition just like Zuma" was unpersuasive.

The domain name was also found to be use of a sign following BT v One in a Million [1999] 1 ETMR 61 and the finding that DINE IN WITH ZUMA was use of a sign.

Because the company name was only used a company name, that was not held to be use of a sign.

Use in the course of trade

Although no pet food had been sold by the time of trial, the defendants' plans to launch the pet food was sufficient to establish intended use in the course of trade.

Making a link in the mind of the average consumer

The judge accepted that the clientele at Zuma comes from a wide cross-section of the public and those who are aware of the marks are from a wider section of the public still (including those like me who have never had the pleasure of dining at Zuma). She was satisfied that there was opportunity for the average consumer to make a link - particularly if the pet food was ultimately sold in major supermarkets (the defendants' stated intention).

The calling to mind was increased by:
  1. the use of the words "dine in" - "one does not normally refer to dogs dining";
  2. the defendants' dog food product names such as "slow braised pork" and "chicken and lentils" were more commonly associated with human food; and
  3. the dog on every page of the website is smartly dressed in a bow tie (see picture above).
Tarnishment

The evidence of Zuma's founder, Rainer Becker, proved crucial on this point:
"I would not call my restaurant Zuma because I think it is literally dog food and dog food is not pleasant. Sometimes it smells, sometimes it is just unpleasant and people many times associate dog food with bad food. So Zuma could serve bad food, dog food. I would never call a restaurant Pedigree because Pedigree is, I think, a well-known animal pet food... and I know people would associate that food for the animals with my food served in my restaurant."
As a result, the judge accepted that there is "an inherent tension between dog food and human food of any type and an even greater tension between dog food and food served to humans in [a] high quality restaurant such as Zuma."

The quality of the dog food could not counteract the negative associations to a restaurant such as Zuma.

It was Game Over for the
Zuma's Revenge argument
Dilution

Because of the reduction "in the connotations of prestige" identified in the tarnishment analysis, the judge accepted that this was likely to lead to a change in economic behaviour.  Despite use of Zuma in other media, notably Zuma's Revenge, and a coffee bean supplier in Bristol these did not cause any adverse association to the mark and there is no requirement for uniqueness (Intel v CPM).

Without due cause 

The 'defence' that the use of the sign complained of is without 'due cause' is so rarely applied that there was some scrambling around to find an appropriate authority.  The judge, Melissa Clarke, extrapolated the following principle from the main authority (C-65/12 the CJEU decision where Bulldog invoked the defence against Red Bull): "with application in a case in which there was no prior use of the sign ... the court must consider whether in all the circumstances there is objective justification of the use of the sign complained of, notwithstanding that the court has found detriment to the distinctive character or the repute of the trade mark."

The suggestion that the defendants "had due cause to use the signs complained of because she created a dog food business using the signs" did not convince the judge. 

The own name defence 

Although the own name defence is available for both individuals and companies for disputes involving UK marks, it is no longer available for EU marks. As Kitchin LJ said in Maier v ASOS [2015]EWCA Civ 220, the key question is "whether the use that Asos has made of the sign ASOS has been in accordance with honest practices in industrial or commercial matters."  In other words, it is a question of fairness. 

The judge confirmed that the own name defence cannot be relied upon if you name your business after a dog.  As Simon Malynicz noted "the dog is not a party to the proceedings, nor is it a natural person or company".  However, the corporate defendant, Zuma's Choice Pet Products Limited was able to rely on the name defence as "a company name will not, of itself, infringe the Marks or any of them."

Joint tortfeasance

The Supreme Court's decision in Sea Shepherd UK v Fish & Fish was once again wheeled out to consider the question of joint tortfeasance. By way of reminder, the three conditions which need to be satisfied for a defendant to be liable as a joint tortfeasor are:
  1. the defendant must have assisted in the commission of the act by the primary tortfeasor;
  2. the assistance must have been pursuant to a common design between the defendant and primary tortfeasor; and
  3. the act must constitute a tort against the Claimant.
The judge had "no doubt" that the defendants were joint tortfeasors.

Groundless threats

This was raised as both a counterclaim and a separate claim.  After a review of the pre-action correspondence, the judge concluded that the letters "appear to be perfectly proper, polite, professional letters.  The language is temperate, there is no suggestion or tone of bullying or hectoring which I can discern."

She considered that all of the threats were justified apart from the requirement to change the company name. As there was no evidence of loss or damage resulting from this threat so the defendants only obtained a declaration that that threat was unjustifiable and an injunction to restrain continued making of that threat.

Afro IP's "5 reasons to concentrate" on this case are here (it's not just about Jacob Zuma!).

And finally, Zuma is apparently a popular dog's name.  You can buy kid's designer clothes from Zuma the Dog (unrelated) and learn about "the home of woofalicious clothing" here.

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