When it opened in May, the new Zuma Japanese restaurant inside the ultra-luxe One Dalton building had foodies marveling at the opulent splendor. The 12th location of the global restaurant brand has three open kitchens, 70 sakes, and a $69 roasted lobster with ponzu butter.
But one thing it didn’t have was permission to use the Zuma name, according to a ruling last Friday in Suffolk Superior Court.
That’s because back in 2008, the restaurant’s UK-based parent company, Azumi Limited, entered into a license agreement with B.B. Kitchen, which owns the Zuma Tex-Mex Grill, a Faneuil Hall restaurant known for its grilled fajitas and neon margaritas. B.B. Kitchen has had the US trademark for the Zuma name since 2002, and the agreement stated that Azumi, which has American locations in New York, Miami, and Las Vegas, would not open any Zuma restaurants in New England.
That, of course, is not what happened.
According to court documents, Zuma Tex-Mex Grill’s owners, Cody Baker and Cheryl Ann Christensen-Baker, learned in May that the other Zuma would open in the Four Seasons hotel, and quickly fired off a cease and desist letter to Azumi’s attorneys.
Azumi countered that it had notified B.B. Kitchen of its plans to open the restaurant in 2017.
Soon after the Japanese restaurant opened, the Tex-Mex eatery began “experiencing instances of actual confusion among members of the dining public,” most of which consisted of canceled or no-show reservations as customers realized they had confused the two, according to court documents.
The Faneuil Hall restaurant has also had to field numerous calls from would-be guests hoping to make or modify reservations at the Back Bay restaurant, the documents said.
At at one point, Zuma Tex-Mex Grill got a call from the other Zuma’s bank, the documents said, wrongfully accusing the restaurant of making a false deposit into its account. B.B. Kitchen recorded 30 instances of confusion in a three-week period, according to the lawsuit Baker and and Christensen-Baker filed in June.
The attorneys representing Azumi argued in court documents that the company’s legal counsel sent an e-mail to the B.B. Kitchen in November 2017 notifying the company of their plans to open a Boston restaurant.
But B.B. Kitchen’s attorneys countered that the e-mail arrived two days before Thanksgiving, and was primarily concerned with coordinating an inspection of Zuma Tex-Mex Grill (doing inspections of this nature was part of their license agreement). Only at the bottom of the e-mail did the company mention their plans.
“As a courtesy, our client wanted to let you know that it will be opening a Zuma restaurant in Boston,” the letter said, according to court documents. “Please let us know if you have any questions about this.”
In court documents, Baker said he never saw the e-mail.
On Friday, the court found that Azumi had violated its agreement, and that Zuma Tex-Mex Grill had suffered irreparable harm.
“B.B. Kitchen is a small, single location business that already is suffering from significant marketplace confusion and likely will continue to suffer so long as Azumi operates its Zuma Boston under the Zuma name,” Judge Brian A. Davis wrote in his decision. “Azumi, on the other hand, is an international operation with approximately $200 million in annual revenues.”
And because the company operates other sister restaurants globally, Davis continued, it has the “resources and available alternatives” to allow it to adapt accordingly.
Davis ordered Azumi to cease and desist all use of the name Zuma in marketing materials, signs, advertisements, and social media posts, and to instruct employees to tell guests that the Four Seasons’ Zuma was not, in fact, Zuma.
A representative for Azumi said Tuesday evening the company could not comment on the “ongoing litigation.”