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18 April 2017

Azumi Ltd v Zuma’s Choice Pet Products: It’s dog eat dog (food) world!

With the advent of Intellectual Property Enterprise Court (“IPEC”) there have been an increasing number of instances where parties have either represented themselves or their companies. Litigants in person to fall into two categories: the intellectual articulate ones and those whose motivations, skills and expertise leaves much to be desired. Take, for example, Mr Perry. He has pursued innumerable proceedings in the High Court as well as IPEC, against the same parties, such that a judge has now made a General Civil Restraint Order preventing him from litigating at all for 2 years.

In the Azumi Ltd v ZCPP case, the defendants were represented by a Ms Vanderbilt. What sort of litigant in person would she be? The answer: an articulate one, but one that lost nevertheless.

Come dine in with…. A dog!

Ms Vanderbilt owned an Akita German Shepard cross, which she called “Zuma”. It does not appear in the judgement as to why Ms Vanderbilt chose to name her dog “Zuma”; perhaps the judge was not interested or considered it irrelevant. However, it strikes me that Ms Vanderbilt probably thought that “Zuma” was a Japanese name having heard of the high class restaurant “Zuma” in Knightsbridge, and Akita is a Japanese dog breed. In fact, “Zuma” has its origins in Aztec culture (it’s an abbreviation for “Montezuma” begging the question why name a restaurant (even as an abbreviation) with a phrase associated with upset stomachs (“Montezuma’s revenge”)). But I digress.

Ms Vanderbilt created her company with a view to selling high quality pet foods, particularly for dogs. She obtained the domain name “dineinwithzuma.com”, and on her website was a depiction of (the court presumed) her dog with a banner unfurling out of the dog’s head with the words “dine in with Zuma” with the “dine in with” being slightly smaller. To protect herself, Ms Vanderbilt applied for “Dine in with Zuma” as a UK trade mark, but the restaurant objected and sought to prevent registration.  In addition, they also brought proceedings for trade mark infringement based on their own “ZUMA” trade marks in the UK and EU for the provision of food and drink and of restaurant services (all marks being registered in class 43).

In retaliation, Ms Vanderbilt counterclaimed, and instigated proceedings against a number of individuals and businesses, including the individual trade mark attorney (who authored the cease and desist letter), his firm, the restaurant group, its’ owner, and a Turkish bank associated with the owner. However, the same judge who had dealt with Mr Perry, also dealt with Ms Vanderbilt, and clearly recognising that she was developing “Perry-like” symptoms, curtailed who it was she could proceeding against. As a result, the action became a “normal” trade mark infringement and passing off action with a counterclaim for groundless threats. What Ms Vanderbilt did not do, however, was challenge the validity of any of the marks. As against the UK mark, at the time, this may have made sense, as the UK was where all the use was. It makes less sense in relation to the EU marks, particularly as she now has an EU-wide injunction against her.

“Waiter, there is a dog in my soup”.    

The restaurant group’s claim was brought under section 10(3) Trade Mark Act 1994 (as amended) Article 9 (2)(c) of Regulation 207/2009/EC (as amended) for the UK and EU marks respectively, namely use of an identical or similar sign, the ZUMA mark having a reputation (UK and EU), and the use is without due cause (ie no valid reason), takes unfair advantage of or is detrimental to the distinctive character or repute of the mark.

The judge considered “Dine in with Zuma” constituted a sign (not difficult as Ms Vanderbilt had applied for it to be registered), and it was similar (and where ZUMA was used on the website alone, identical). However, for there to be damage, there has to be a “link” in the minds of the relevant public, which is made with the trade mark on seeing the later sign. In other words, on seeing “dine in with Zuma” the average consumer must “call to mind” the ZUMA mark or its’ proprietor (even if they do not know the restaurant group’s name).

In dealing with the issue of reputation, the judge did not have the benefit of opposing counsel raising case law (both English as well as EU) or what constitutes a sufficient reputation. In fact, she was beguiled by the restaurant group’s Leading Counsel who referred the judge to a decision of Mr Justice Arnold in Red Bull v Sun Mark [2012] EWHC 1929 (Ch) in which he said that proving reputation was “not a particularly onerous requirement”. In support of that statement, Arnold J then referred to the CJEU decision in General Motors v Yplon (case C-375/97) paragraph 24, as supporting this statement. However, that paragraph does not say anything of the sort. One can only speculate that in relation to the mark “Red Bull” and extent of sales, advertising etc he concluded that it was not onerous to prove reputation in that case (as opposed to cases generally). As the reputation must exist in a ‘significant part’ of a Member State or EU for an EU trade mark, the issue then to be decided was whether a single EU Member State constituted a sufficiently “significant part” of the EU. This has been the case before, but more recent cases suggest the issue should be reconsidered. Had Ms Vanderbilt argued this point, rather than risk losing, it is likely the claimants would have relied only on the UK mark. Ms Vanderbilt and her company would not then have an EU-wide injunction against them.

There being no valid reason given as to why she was using ZUMA (other than the dog’s name) the judge concluded there was no due cause. The claimants relied on two types of damage: detriment to the distinctive character (ie dilution) and detriment to the distinctive repute (tarnishment). They did not claim that Ms Vanderbilt’s company was taking unfair advantage. Perhaps they might have done if they had found out why she had named her dog Zuma.

As no dog food had actually been sold, the case had to be decided on the basis of there being a likelihood of damage. In this regard, the judge considered there would be tarnishment because of the association people would make between dog food (however good the quality might be) and restaurant services, as this potentially would put a number of people off.  This is, however, pure speculation on behalf of the judge. In terms of dilution, save for one use of “ZUMA” for a computer game, there were no other uses. Accordingly, the judge was prepared to accept that allowing Ms Vanderbilt to use “ZUMA”, alone or as part of a sign and website/domain name, would dilute the power of the claimant’s mark to attract people.

A complete dog’s breakfast?

In the end, the judge while not necessarily serving up a dish fit for a king (or is that Rex?) has probably come to the correct conclusion, notwithstanding the smooth talking of the claimant’s counsel, and the lack of help from a barrister of equal weight on the other side. Nevertheless, one is left with an uncomfortable feeling about the extent of speculation that has been made, particularly in respect of the EU marks. I am, however, equally cynical as to why Ms Vanderbilt chose an Aztec name for her dog, which is a Japanese breed, and the only thing that has the name “Zuma” associated with it is the restaurant group’s restaurant in Knightsbridge (now a chain across the globe).

The success of the restaurant not just in the UK (and now all over the world), could not have been achieved but for the quality of the food, service and so justifying its reputation. In fact, it really is more than just the dog’s b******s!

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