In a recent case, the Intellectual Property Enterprise Court (IPEC) has ruled in favour of the restaurant chain Zuma, in a trade mark infringement dispute with a website selling pet products.
Zoe Vanderbilt ran a business called Zuma's Choice Pet Products Limited and operated the website www.dineinwithzuma.com, on which she intended to manufacture and sell pet products, including pet foods. She named the business after her own dog, called Zuma. For the purposes of this article, Ms Vaderbilt's business is referred to as the "website" and the Zuma restaurant chain as the "restaurant".
The word ZUMA featured numerous times on the website, as did the phrase "DINE IN WITH ZUMA" in a stylsed form alongside a picture of a dog.
Zuma is also the name of a chain of 10 Japanese restaurants around the world which was launched in Kinghtsbridge in 2002. The restaurant owned a number of UK and EU Trade Marks for ZUMA and a stylised ZUMA mark.
A dispute ensued which resulted in a claim for trade mark infringement being filed against the website by the restaurant and a counterclaim and separate claim by the website for unjustified threats.
The case ultimately went in favour of the restaurant. The distinctive and dominant element of both side's marks was held to be ZUMA and an association between a high end restaurant and dog food was found to be detrimental to the distinctive character of the restaurant's ZUMA marks. The following points from the judgment are worth noting.
Use of a sign
It was accepted by Ms Vanderbilt that the website was using DINE IN WITH ZUMA and the dog device shown above as a sign, because it was fixed to packaging and used to offer goods for sale on the website.
However, the question was whether the website's use of the word ZUMA in phrases such as "We also have a growing range of Treats, try Zuma's favourite Mouthwatering Meatballs!" was use of a sign. The website claimed that this simply referred to Ms Vanderbilt's dog and that the public would appreciate that. The court disagreed and said that the average consumer wouldn't necessarily appreciate that Zuma was a real dog. They could, for instance, have believed it to be a fictional character similar to the Churchill dog used by Churchill insurance.
The company name was not held to be use of a sign because it was only used as a company name and hadn't been used in relation to goods or services.
Use in the course of trade
Following Arsenal Football Club plc v Matthew Reed, any use of a sign in the context of commercial activity with a view to economic advantage and not as a private matter, no matter how modest, will be sufficient to satisfy the requirement for 'use in the course of trade'.
By the time of the trial, the website hadn't actually sold any pet food. However, by her own admission, Ms Vanderbilt wanted to "feed the nation's pets" and develop a well-known high quality brand which is stocked nationwide in supermarkets like Waitrose. This was enough to establish intended use in the course of trade.
In order for there to be infringement under section 10(3) Trade Marks Act 1994, the website's use of ZUMA needed to either take unfair advantage of the restaurant's mark or be detrimental to the distinctive character of the mark ("dilution") or of detriment to the repute of the mark ("tarnishment"). Only dilution and tarnishment were relied upon.
There was only one Zuma restaurant in the UK, but the court held that this was sufficient to establish a substantial reputation in the UK. The relevant consumer was held to be a customer of "high quality, high-end restaurants in London" rather than restaurant customers more generally and, amongst such a demographic, the restaurant was deemed to be very well known.
Link in the mind of the average consumer
The court held that it was possible that the average consumer (i.e., high-end restaurant customers) would make a link between the restaurant and the website. It was accepted that people who dine at Zuma come from a wide cross-section of the public and those who are aware of the restaurant but have never actually dined there is a wider demographic still. If the website's pet food was ultimately sold in supermarkets, as was the plan, then there was a real possibility of consumers overlapping.
In particular, the website hadn't helped itself by using terms such as "dine in", which isn't a term typically used in relation to dogs, product names such as "slow braised pork" and "chicken and lentils", which are more commonly associated with human food and the graphic of a dog wearing a bow tie on the website, apparently "humanising" the goods.
The court said 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". As such, there was the possibility of a negative impact upon the reputation of the restaurant as the result of being associated with dog food.
In the words of one of the owners of the restaurant, "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."
L'Oréal v Bellure NV confirmed that dilution is caused when a "mark's ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark". Despite there being other businesses in the UK called Zuma, the court was satisfied that an association with dog food would be likely to reduce the prestigious image of the restaurant and change the economic behaviour of the restaurant's customers.
Without due cause
The website could have played a trump card by showing that its use of ZUMA was with due cause, but such a defence is very rarely used and for a reason - it is very difficult to prove. Ms Vanderbilt denied that her use of ZUMA was without due cause because she had "created a unique range of dog food" based around her dog's name. The court was not convinced with that argument.
The own name defence
The website tried to rely on the own name defence. However, by the time the case came to trial, due to the new Trade Mark Regulation, such a defence was no longer available to companies in disputes concerning EU Trade Marks. In relation to the UK marks, the defence was available to Zuma's Choice Pet Products Limited, but not Ms Vanderbilt because, clearly, it was not her own name but that of her dog.
On the basis of the test set out in Sea Shepherd UK v Fish & Fish the court held the defendants to be joint tortfeasors. The three conditions to be satisfied are:
- the defendant must have assisted in the commission of the act by the primary tortfeasor;
- the assistance must have been pursuant to a common design between the defendant and primary tortfeasor; and
- the act must constitute a tort against the Claimant.
No disputing that!
The website's claim and counterclaim of groundless threats was only successful in respect of the company name because this wasn't held to be a trade mark infringement. However, because there was no evidence of any damage, the website only obtained a declaration that the threat was unjustifiable and an injunction to restrain the continued making of that threat.
This is an interesting example of the power of a trade mark with a reputation. In this case, the fact that a high end restaurant and a pet food supplier are poles apart in the market didn't matter because of the likely dilution and tarnishment of the former's brand.
It also shows that the relevant market for the assessment of reputation can be construed very narrowly, depending on the goods and services involved.