Azumi Limited, which manages the critically-acclaimed ZUMA Japanese restaurant in London, has successfully brought a trade mark infringement claim in the IP Enterprise Court against Zuma’s Choice Pet Products Limited (ZCPP), a company specialising in high quality pet food for cats and dogs.
Ms Vanderbilt, ZCPP's sole director and shareholder, registered the domain name <dineinwithzuma.com>. The signs ZUMA and DINE IN WITH ZUMA were used throughout the website. Azumi opposed ZCPP's application to register the UK mark DINE IN WITH ZUMA and claimed infringement of its UK and EU trade marks.
Ms Vanderbilt and ZCPP counterclaimed alleging "groundless threats" and sought to rely on the "own name" defence under section 11(2)(a) of the TMA on the basis that Zuma was the name of Ms Vanderbilt's pet dog.
The judge rejected the defence, accepting Azumi's argument that the dog was not a party to proceedings, nor was it a natural person or company. The domain name, ZUMA and DINE IN WITH ZUMA were all found to infringe Azumi's UK and EU trade marks as they would be likely to tarnish and dilute the ZUMA mark.
The company name did not infringe because it had not yet been used. In that regard, Azumi's request that this be changed in pre-action correspondence amounted to a groundless threat but the judge found that no loss or damage had been suffered as a result of that threat.
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