Zoom vs. Zoom: A Case of Likelihood of Confusion?
In the latest case concerning a trademark dispute between Zoom and Zoom, the European Court of Justice confirmed that there is no likelihood of confusion even though the goods claimed were under the same class 9, still, the functions are different. This dispute was interesting owing to the identical sign and product group.
Having the same mark and even the product group, prima facie it seems to be a clear case of infringement. But an interesting point is that the company fighting for this are the other two companies fighting for their trademark rights and not the US Zoom Video Communication which is famous worldwide for its video conferencing. The decision over the likelihood of confusion between the mark as decided by the European Court of Justice is a prime example showing that even if the trade name is a famous company name, still other companies can claim protection since the protection is for different goods and services. For similar marks, it is necessary that the goods claimed must be different owing to the fact that if the goods are not similar then there are probable chances of the likelihood of confusion.
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The two parties in dispute were Zoom KK from Japan and Facetec Inc. USA. The defendant is a 3d face authentication software company. It’s not the first time that both the companies are fighting. There has been a previous case as well where the subject matter was a revocation of earlier figurative mark Zoom due to the non-use for 5 years. For such proving of the use of goods, evidence with regards to the goods “downloadable computer programs intended for use in connection with musical instruments and sound recording devices” in Nice Class 9 was shown by the plaintiff. In the present case itself, the goods that were examined were related to software in class 9 and the same were scrutinized by the ECJ.
Similarity of goods
The claims of the marks were from the same class 9 which was a downloadable computer program, owing to which the assumption of the likelihood of confusion was clear. The EUIPO Board of Appeal decided on the contrary. The Board found that there was a low degree of similarity for the goods in question. The Board observed that the intended use of the goods was different owing to which the similarity of goods is outweighed. Even though both the mark uses identical distribution channel which was online application stores, but that was not a relevant factor here.
How the intended uses are different? The first contested mark works for the identification of a person accessing a mobile device such as a Smartphone. Whereas, the second cited mark is intended to edit and change sounds while recording, claimed as “downloadable computer programs intended for use in connection with musical instruments and sound recording devices”. Due to such dissimilarity of the use of goods, the Board of Appeal ruled that there is no such likelihood of confusion. The distinctiveness of the earlier mark as compared to the other mark is low owing to the sound-related goods which is a general meaning of Zoom referring to humming or buzzing sound.
The CJEU confirmed the decision of the Board of Appeal ruling that there is no likelihood of confusion. Both the nature of goods were different stating that the first good consisted of software and the second good was a computer program. The difference is easily visible to the general public, who will not connect these two marks, and thus there cannot be any likelihood of confusion. The primary observation revolves around the already stated fact that the word Zoom has a meaning for sound-related goods, and therefore it has a low level of distinctive power for sound-related goods. The CJEU did raise the concern over the similar distribution channel but held that a single shop can contain multiple software or programs due to which the issue of distribution channel resulting in the likelihood of confusion, was also negated.