When is Zoom not confusingly similar to Zoom?

The General Court of the European Union has ruled in case T‑204/20 Zoom KK v Facetec, Inc. This case is indicative for trademark conflicts where almost identical signs cannot be confusingly similar for consumers.

Facetec, Inc. filed an application for a word European trademark ZOOM in class 9: Computer application software for mobile phones, smartphones, portable media players, handheld computers, and tablets, namely, security software that allows users to secure and access their mobile devices through multi-dimensional facial recognition identification.

Against this application an opposition was filed by the Japanese company Zoom KK based on the following two earlier marks:

  • A word mark ZOOM in classes 9 and 15;
  • A combined mark in classes 9 and 15:

The opponent proved a genuine use of the earlier marks for the following goods: in the case of the combined mark for portable recorders; magnetic compact discs, [records]; rhythm machines, drum machines; and sound processors, effect processors and their parts’ in Class 9 and for the goods ‘multi-track recorders, multi-effect apparatus, rhythm machines, guitar effects consoles and pedals, bass effects pedals, acoustic effects pedals, guitar effect processors’ in Class 15 and, in the case of the word mark for ‘portable recorders’ in Class 9.

The EUIPO dismissed the opposition. According to the Office despite the fact that both signs are visually, phonetically and conceptually similar they cannot be confusingly similar as a whole for the consumers in the EU.

The reasons for this are three:

  1. First of all the goods in the earlier marks are related to editing and changing sounds while recording music whereas those in the later mark target identification of a person accessing a mobile device such as a smartphone. This means that the target audiences are different;
  2. The level of consumer attention related to these goods is high due to their specifics. This lower the chance for confusion even in case of similar signs.
  3. The distinctive character of the word ZOOM is low for the English speakers in the EU. This word has a meaning that can relate to musical sounds.

The General Court upheld this decision in its entirity.

This case is intriguing because shows clearly how important is all trademark protection requirements to be taken into consideration in the brand building process. Sometimes it is really tempting the selected brand name to have a meaning related to a particular goods or services. Although this can be a great idea form marketing point of view it can create a lot of troubles when it comes to trademark protection because it can reduces its the scope significantly.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB