Azumi Ltd v Zuma's Choice Pet Products Ltd

For infringement under Trade Marks Act 1994, section 10(3), or Article 9(2)(c) of the applicable EU trade mark Regulation, every statutory element must be established. Use in the course of trade includes prospective commercial activity directed towards economic advantage. A link may exist where the relevant average consumer, who is aware of the earlier mark, calls it to mind; confusion is unnecessary. A serious future risk of dilution or tarnishment is sufficient. The “due cause” issue operates in substance as a defence, requiring objective justification assessed in all the circumstances. An own-name defence is unavailable to a company in respect of the amended EU provision. A company name used only as a company name does not, without more, constitute infringement.

Azumi Limited operated a high-end Japanese restaurant under the name Zuma and owned UK and EU trade marks for ZUMA. Zoe Vanderbilt and Zuma’s Choice Pet Products Ltd used ZUMA, DINE IN WITH ZUMA, a related device, and the domain name dineinwithzuma.com in connection with prospective dog-food sales.

Azumi brought infringement proceedings. Ms Vanderbilt brought claims and a counterclaim for groundless threats under section 21 of the Trade Marks Act 1994. The central issues were reputation, use in the course of trade, similarity and consumer linkage, dilution, tarnishment, due cause, the own-name defence, joint tortfeasance and justification of the threats.

1. Infringement. The court found that the ZUMA, DINE IN WITH ZUMA, DIWZ Device and dineinwithzuma.com uses infringed the UK mark under section 10(3) of the Trade Marks Act 1994 and the EU marks under Article 9(2)(c) of the Regulation. The marks had a substantial reputation in the UK and sufficient reputation in the EU.
2. The signs were identical or similar to the marks, with ZUMA being the distinctive and dominant element. The relevant average consumer was a consumer aware of the restaurant marks, rather than the general public. That consumer would call the marks to mind and make the required link. Confusion was unnecessary.
3. The use created a serious likelihood of tarnishment because of the inherent tension between dog food and food served in a high-quality restaurant. The quality of the dog food did not prevent the adverse association. There was also a serious likelihood of dilution because the defendants intended to develop a substantial nationwide pet-food business.
4. Prospective commercial activity was sufficient use in the course of trade. The domain name operated as a sign because it directed users to a website on which the other infringing signs were used. Use of the company name solely as a company name was not infringement.
5. The due-cause case failed. Creating a dog-food business around the dog’s name was not objective justification. The own-name defence also failed: the dog was not a qualifying person, ZCPP was not legally named ZUMA, and the amended EU provision applied only to a natural person.
6. Ms Vanderbilt was jointly and severally liable with ZCPP because she was its sole shareholder and director and the requirements for joint tortfeasance were met.
7. The threats were actionable but justified to the extent that they concerned infringing uses. They were unjustified only insofar as they required a change to ZCPP’s company name. The counterclaim and first threats claim therefore succeeded only to that limited extent, without damages. Injunctive relief was granted to Azumi.