Own Name defence and Groundless threats
The distinctive dog device
Azumi Ltd v Zuma’s Choice Pet Products Ltd  EWHC 609
Zoe Vanderbilt and her pet dog, Zuma set up a company called ZumaÂs Choice Pet Products Limited and register the domain name dineinwithzuma.com.Â She planned to manufacture and sell premium pet foods via her website.Â The website made frequent use of the word ZUMA and phrases DINE IN WITH ZUMA including the distinctive dog device which appeared as a banner across each page of the website.
Coincidentally, Zuma is also the name of a famous Japanese restaurant in London.
Zuma (the restaurant) was less than thrilled at the potential association with dog food.Â Azumi Limited (the owner of the Zuma mark) attempted to persuade Zoe Vanderbilt to change her business name, which she ultimately refused.Â Trade mark proceedings were issued, closely followed by a claim for groundless threats.
Whilst not surprising, the distinctive and dominant element of the signs was held to be ZUMA, there was identical or confusingly similar use of the sign and an association between a high end restaurant and dog food was found to be detrimental to the distinctive character of the ZUMA marks.
There were however a few interesting points to note:
Use of a sign
Although the defendants accepted that they were using DINE IN WITH ZUMA and the distinctive dog device as signs because they were fixed to packaging and offered for sale via the website.
There was some dispute as to whether use of ZUMA alone was use of a sign.Â The defendants argued that it was not used as a sign but as the name of a dog, e.g. “We also have a growing range of Treats, try Zuma’s favourite Mouthwatering Meatballs!”
This argument ultimately failed because the website didn’t explain that Zuma is a real dog and the argument that Zuma’s doggy identity could be inferred from the statement “Help your dog stay in top condition just like Zuma” was unpersuasive.
Use in the course of trade
Although no pet food had been sold by the time of trial, the defendants’ plans to launch the pet food was sufficient to establish intended use in the course of trade.
The own name defence
The key question is “whether the use that Asos has made of the sign ASOS has been in accordance with honest practices in industrial or commercial matters.”Â In other words, it is a question of fairness.
The judge confirmed that the own name defence cannot be relied upon if you name your business after a dog.Â As Simon Malynicz noted “the dog is not a party to the proceedings, nor is it a natural person or company”.Â However, the corporate defendant, Zuma’s Choice Pet Products Limited was able to rely on the name defence as “a company name will not, of itself, infringe the Marks or any of them.”
The three conditions which need to be satisfied for a defendant to be liable as a joint tortfeasor are:
- the defendant must have assisted in the commission of the act by the primary tortfeasor
- the assistance must have been pursuant to a common design between the defendant and primary tortfeasor and
- the act must constitute a tort against the Claimant.
- The judge had “no doubt” that the defendants were joint tortfeasors.