A recent High Court decision demonstrates how important it is to choose the name for your business wisely.
Azumi Ltd is the owner of a number exclusive restaurants worldwide which trade under the name ZUMA. The company also owns the UK and EU Trade Marks for ZUMA. The London branch in Kensington is a particular favourite among celebrities and has therefore appeared in the media, gaining a strong reputation extending to those who have not even visited.
In 2014, the Defendant (Zoe Vanderbilt) incorporated Zuma’s Choice Pet Products Ltd and started marketing pet foods using the name Zuma in its domain name “dineinwithzuma”. The association of the word zuma with dining was a particular feature of the case.
Azumi objected to the use of the word Zuma and took the matter to the Intellectual Property and Enterprise Court (a section of the High Court) which accepted its argument that the use of the word Zuma in association with dog food would have the effect of tarnishing or diluting the reputation of the trade marks.
I have known the CEO of Azumi for a number of years and contacted him for his thoughts on the decision. He was kind enough to share the views of the company’s founder, Rainer Becker, who said:
“We are pleased that the Court agreed that it was not acceptable to have a pet products brand trading under the “Dine in with Zuma” name. We tried to resolve the dispute amicably, but as that was not possible we took the matter to court to protect the reputation of our restaurant. The Court found the Zuma restaurant business to have a “a significant reputation amongst those members of the public who are concerned with high quality, high-end restaurants in London”, and ordered an injunction and costs in our favour.”
The moral of the story is that it is important to check the name you use before you start trading. A search of the trade mark register and companies house can often indicate whether there are other businesses operating in the same industry under the same or similar name. If so, it is safer to choose another name in order to reduce the risk of confusion (and therefore infringement) or damaging the other party’s reputation/image in the market.