Facetec saves face in ZOOM dispute.

Facetec Inc - the creator of the Zoom video-conferencing platform, which surged in popularity due to the COVID-19 pandemic - has successfully faced off an opposition by Japan-based audio equipment manufacturer Zoom KK before the General Court (Zoom KK v EUIPO (Case T-204/20)).

Background

In 2016 Facetec, a US-based biometric company, sought to register the word mark ZOOM in a number of jurisdictions using the Madrid system (International Registration No 1323959), including the European Union. Facetec essentially sought to protect “security software that allows users to secure and access their mobile devices through multi-dimensional facial recognition identification” in Class 9.

Zoom KK opposed this EU application, based on its earlier EU trademark rights in the word mark ZOOM, as well as in its ZOOM logo (depicted below), respectively registered in 1999 and 2008 and covering goods in Classes 9 and 15:

The Opposition Division of the EUIPO did not find similarity between the marks and rejected the opposition because Zoom KK had not demonstrated genuine use of all good covered by the earlier marks and had only proved use of its marks on audio equipment and apparatus - a view which was upheld by the Board of Appeal.

Unhappy with this decision, Zoom KK appealed to the General Court, claiming that:

  • the marks were similar as they both covered “downloadable computer programs” in Class 9; and
  • the EUIPO had erred in comparing the goods associated with the marks to determine likelihood of confusion.
Zoom KK logo versus Zoom logo with FRKelly logo

Decision

The General Court endorsed the Board of Appeal’s findings and held that, in this instance, to effectively assess the similarity between the goods at issue, the criterion of “intended use” assumed overriding importance, concluding that the intended purpose of Zoom KK’s goods related to audio recording apparatus, which was different from Facetec’s goods which covered facial recognition identification software.

The court noted that, in today’s high-tech society, most electronic or digital equipment required the use of computers in one form or another, resulting in a multitude of software or programs with radically different functions, explaining that:

"to acknowledging similarity in all cases where competing rights cover computer programs or software would clearly exceed the scope of protection granted by the legislature to the proprietor of a trademark."

Zoom KK argued that the market trend was to search for products based on its name without always having regard to the goods desired. The General Court disagreed, maintaining that “even if a consumer searches for the desired application by name… the list of search results will ultimately be guided by the desired function”.

When comparing the marks, the General Court agreed with the EUIPO that both marks were “practically identical”, with the only differentiating factor being the stylisation of the font.

The General Court, in dismissing the appeal, held that no likelihood of confusion had been demonstrated in this case and that consumers would not establish a link between Facetec’s ZOOM mark and Zoom KK’s earlier marks for the following reasons:

  • consumers would display a high degree of attention when purchasing the respective products;
  • the functions and intended purposes of the respective goods covered by each of those marks, which are decisive for the consumer, were different; and
  • the degree of distinctiveness of the earlier ZOOM logo could be regarded as lower than average.

Comment

This decision will be of particular interest to tech companies and brand owners within the software space. The importance attached to the “intended purpose” criterion in assessing likelihood of confusion in trademark disputes relating to “computer software and programs” could have a significant impact on the scope of protection of their existing rights.

This article first appeared on WTR Daily, part of World Trademark Review, in (month/year). For further information, please go to www.worldtrademarkreview.com.

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