The Intellectual Property Enterprise Court, the Court that specialises in IP matters in England and Wales, recently found that the use of ‘ZUMA’ and ‘DINE IN WITH ZUMA’ infringed the rights of the owner of a trade mark for ‘ZUMA’. However, this was not because there was a likelihood of confusion – the parties’ goods/services were very different – but due to the detriment to the owner’s brand.
The claimant owned European and UK registered trade marks for the word ‘ZUMA’ and ran a chain of high-end restaurants under the mark. The defendant sold dog food under the mark ‘ZUMA’ and ‘DINE IN WITH ZUMA’.
The claimant did not argue that there would be confusion between the parties’ services and goods but – instead – argued that the use of the marks ‘ZUMA’ and ‘DINE IN WITH ZUMA’ would damage their brand, essentially due to the unsavoury association of their brand with dog food and that the use by the defendant would reduce the ability of the ‘ZUMA’ mark to cause consumers to associate it with their restaurant services.
Unusually, the defendant argued (among other things) that she had a defence in that her dog was called Zuma and – therefore – she should be able to rely on the ‘own name’ defence (which, broadly speaking, ensures that businesses cannot be prevented from using their names, where they are acting honestly).
It was held that there was infringement of the ‘ZUMA’ mark because there was a likelihood of:
- tarnishment of the claimant’s ‘ZUMA’ mark because pet food was incompatible with food for humans and was likely to raise unpleasant associations. The effect was likely to be exacerbated by the high-end nature of Zuma restaurant; and
- dilution of the claimant’s ‘ZUMA’ mark because the use of the ‘ZUMA’ and ‘DINE IN WITH ZUMA’ over time was likely – broadly speaking – to reduce the ability of ‘ZUMA’ to immediately call the claimant’s services to mind.
The argument that the dog Zuma should allow the defendants to rely on the ‘own name’ defence was – predictably – given short shrift, since the dog was neither a human being or a party to the proceedings.
While a fairly unsurprising decision, the case does serve as a reminder to brand owners that they do not necessarily have to prove that there is a likelihood of confusion in order to prevent damaging use of their trade mark (or a similar trade mark) or someone taking unfair advantage of it. While the reputation required of a mark in order to bring a claim in these circumstances is high, it is always worth exploring whether there is a case if you have a concern.
If you believe that your trade mark is being infringed, however unusual the circumstances, Briffa can advise. Contact one of our trade mark experts at INFO or on 0207 288 6003.