Trademark infringement: Azumi Limited v Zuma's Choice Pet Products Ltd [2017] EWHC 609

Did the sale of pet food by reference to the "ZUMA" brand infringe the trade mark rights of a high end restaurant operating under the same brand?

The facts

The claimant runs a chain of well-known high quality Japanese restaurants under its registered EU and UK trade marks "ZUMA". The defendant is a producer and seller of artisan pet food and Mrs Vanderbilt, the sole shareholder of the defendant, was the registrant of the domain "dineinwithzuma.com" which directed visitors to a website marketing pet food products. On the website and product packaging, the defendant used the words "ZUMA", the phrase "DINE IN WITH ZUMA" and a related device mark as a banner.

In August 2014, the claimant issued trade mark infringement proceedings against the defendant under section 10(3) of the Trade Marks Act 1994 and Article 9(2)(c) of the EU Trade Mark Regulation (207/2009/EC).

The decision

HHJ Clarke found that the defendant had infringed the claimant's UK and EU trade marks through its use of "ZUMA", "DINE IN WITH ZUMA" and the domain name "dineinwithzuma.com". The following points are worth noting:

• The judge held that the relevant market (for the purposes of assessing reputation) was not the entirety of the restaurant market in the UK, but rather the smaller market for high-end restaurants in London. 

• The pet food signs were all identical with or similar to the ZUMA mark. The word "ZUMA" was the distinctive and dominant element in all of them, particularly in the light of the strong reputation of the ZUMA registered marks.

• The judge observed that if the defendant was successful in growing its business, its 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. 

• The "ZUMA" mark was found to be tarnished, the judge agreed with expert evidence in the case and found that animal foodstuffs are incompatible with foodstuffs for humans and likely to raise unpleasant associations. This association would reduce the "ZUMA" trade mark's powers of attraction.

• The own name defence relied on by the defendant – on the basis that ZUMA was the name of the defendant's dog(!) - could not succeed, as a matter of law, because the dog was not a natural person or a company and was not of course a party to proceedings.

  Why is this important?

  The case is a good illustration of the broad protection afforded to well-known trade marks and acts as a reminder that an infringement claim can be established even though the respective markets may be very different. 

  Any practical tips

  As always, when considering a new brand, a full clearance search should be carried out to identify any existing rights that may act as a bar to use/registration of the proposed brand.