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Dog’s breakfast

15 May 2017 by Paul Harris

Dog’s breakfast - read more

Allowing a pet food business to use the same name as a restaurant would damage the latter’s brand

With the advent of the 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 fall into two categories: the intellectually articulate and those whose motivations, skills and expertise leave much to be desired.

Take, for example, Mr Perry, who has pursued innumerable proceedings in the High Court and the IPEC, against the same parties, such that a judge has now made a General Civil Restraint Order preventing him from litigating at all for two years.

“Maybe Ms Vanderbilt thought Zuma was a Japanese name having heard of the high-class Zuma restaurant in Knightsbridge,”

In Azumi Ltd v ZCPP, Ms Vanderbilt was the defendant representing herself, who despite being an articulate litigant in person, lost her case.

Ms Vanderbilt owns an Akita/German Shepherd cross called Zuma. It does not appear in the judgement why she chose this name. Perhaps the judge was not interested or considered it irrelevant.

However, maybe Ms Vanderbilt thought Zuma was a Japanese name having heard of the high-class Zuma restaurant in Knightsbridge, and Akita is a Japanese dog breed. In fact, Zuma has its origins in Aztec culture, an abbreviation of ‘Montezuma’.

Top pet food

Ms Vanderbilt created a 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 its head with the words ‘Dine in with Zuma’ with the ‘Dine in with’ in slightly smaller type.

To protect herself, Ms Vanderbilt applied for ‘Dine in with Zuma’ as a UK trademark, but the restaurant objected and sought to prevent registration. It also brought proceedings for trademark infringement based on its own ‘ZUMA’ trademarks in the UK and EU for the provision of food and drink and of restaurant services (all marks being registered in class 43).

“Ms Vanderbilt counterclaimed, and instigated proceedings against a number of individuals and businesses”

In retaliation, Ms Vanderbilt counterclaimed, and instigated proceedings against a number of individuals and businesses, including the individual trademark 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 she was developing ‘Perry-like’ symptoms, curtailed who she could proceed against.

As a result, the action became a ‘normal’ trademark 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.

Restaurant claim

The restaurant group’s claim was brought under section 10(3) of the Trade Marks Act 1994 (as amended) and Article 9 (2)(c) of Regulation 207/2009/EC (as amended), for the UK and EU marks respectively.

The restaurant group therefore claimed use of an identical or similar sign, the ZUMA mark having a reputation (in both the UK and EU), and claimed that the use is without due cause (that is, for no valid reason), and 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 – which was 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 trademark 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 the said consumer does not know the restaurant group’s name).

Controversial decision

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) on what constitutes a sufficient reputation. In fact, the judge was beguiled by the restaurant group’s leading counsel who referred her to a decision of Mr Justice Arnold in Red Bull v Sun Mark (2012) in which he said that proving reputation was ‘not a particularly onerous requirement’.

In that decision, Mr Justice Arnold referred to the Court of Justice of the European Union decision in General Motors v Yplon at 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 the extent of sales, advertising and so on, he concluded that it was not onerous to prove reputation in that particular case, as opposed to cases generally.

As the reputation must exist in a ‘significant part’ of an EU member state or, for an EU trademark, of the EU, the issue then to be decided was whether a single EU member state constituted a sufficiently ‘significant part’ of the EU.

“Accordingly, the judge was prepared to accept that allowing Ms Vanderbilt to use ZUMA would dilute the power of the claimant’s mark to attract people”

This has been the case before, but more recent cases suggest the issue should be reconsidered. Had Ms Vanderbilt argued this point, it is likely the claimant 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 claimant relied on two types of damage: detriment to the distinctive character (that is, dilution) and detriment to the distinctive repute (tarnishment). The claimant did not claim 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.

Correct judgement

In the end, the judge 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, but now worldwide, could not have been achieved but for the quality of the food and service, and so justifying its reputation.

Paul Harris is a Partner at Venner Shipley Legal Limited

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