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Dinner is served: IPEC considers Zuma trade mark infringement claim

Written by Ellis Sweetenham on 03 April 2017

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Azumi Ltd v Zuma's Choice Pet Products Ltd and another; Vanderbilt v Wallace and others; Vanderbilt v Wallace and others [2017] EWHC 609 (IPEC)

Facts:

In one consideration, the Intellectual Property Enterprise Court determined on a number of claims all related to the same parties.

The Claimants were Azumi Limited who operates ten high-end Japanese restaurants around the world, the first being in Knightsbridge. These restaurants are named ‘Zuma’ .This restaurant has received extensive press attention for its high quality finish as well as it high standard of food and entertainment.

The Claimant has the following registered trade marks:

i)                    A UK trade mark for the word mark ZUMA registered in 2001 in class 42 for provision of food and drink

ii)                   EU trade mark for word mark ZUMA registered in 2004 for class 43 restaurant services; bar services

iii)                 EU trade mark for a figurative mark of ZUMA in a stylized font coloured in blue, registered in 2012 for class 43 as above

The defendants are the company Zuma’s Choice Pet Products Limited (ZCPP) and its sole director and shareholder Ms Zoe Vanderbilt. Ms Vanderbilt incorporated ZCPP in 2014 for the manufacture and sale of high quality pet food for dogs and cats. She named the company after her dog, Zuma.

In June 2014, Ms Vanderbilt registered the domain name ‘dineinwithzuma.com’ to allow customers to access her pet food products. The website also included a banner which depicted a picture of Zuma the dog and the words ‘dine in with Zuma’. This banner was also present on packaging.

On 18th August 2014, Ms Vanderbilt applied for a UK trade mark for ‘Dine in with Zuma’. Following this, the Claimants received notification of the application through the UK Intellectual Property Office and their own trade mark watching services.

In December 2014, the Claimants through their instructed trade mark attorneys, Boult Wade Tennant (BWT) send a letter to Ms Vanderbilt informing her of the potential opposition proceedings against her application. There was further correspondence between the parties. Ms Vanderbilt has claimed that these letters have amounted to unjustified threats and has issued a claimant against the Claimants.

In late December 2014, the Claimant filed an opposition against the ‘Dine in with Zuma trade mark application.

Ms Vanderbilt has also made a counterclaim against the Claimant’s claim for infringement citing unjustified threats.

Issues:

The issues for all claims considered are as follows.

-          Were the marks of the Claimant have a reputation in the UK/EU

-          Whether the Defendants are using the signs complained of in course of trade in relation to goods or services

-          Whether the allegedly infringing signs used by the Defendants would cause significant number of consumers to create a link between the Claimants and the Defendant’s marks

-          Whether any unjustified threats had been made by the Claimants or their representatives

Judgment:

The Defendant was found to have infringed the UK and EU marks owned by the Claimant, through the use of ZUMA, Dine in with Zuma and dineinwithzuma.com.

The use of the company name ZCPP does not infringe any of the Claimant’s trade marks.

Ms Vanderbilt succeeds on the Counterclaim and unjustified threats claim to the limited extent that the threat of opposition and infringement action was in relation to the Company name ZCPP as well as the other marks above. The court found there had not been infringement in relation to the company name. However, Ms Vanderbilt was not entitled to damages as she had not suffered any loss or damage. The lack of loss or damage was due to Ms Vanderbilt not yet operating business under ZCPP due to her waiting for the trade mark application to be successful first.

The Claimant is entitled to injunctive relief restraining the Defendants from further infringing the UK Mark in the UK and the EU marks anywhere in the EU.

If you'd like to know more about this article please send an email to Ellis Sweetenham quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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