In a recent decision, the Opposition Board of Japan Patent Office (JPO) sided with Zoom Video Communications Inc. and dismissed an opposition against their Japanese TM Reg no. 6377998 for the mark “zoom rooms” by finding dissimilarity to earlier trademark “ZOOM.”[Opposition case no. 2021-900267]
Undoubtedly, with millions of people being forced to stay home to help stop the spread of COVID-19, Zoom, one of the dozens of video conferencing services launched in 2011, has risen to the top, thanks to intense separation measures and a profound resonance within this new social distancing culture.
When it comes to trademark, the mark “ZOOM” has been registered in Japan over goods of classes 9 and 15 by Zoom Co., Ltd., a Japanese business entity producing recording devices, multi-effects processors, effects pedals, digital mixers, and samplers since 1992.
Zoom Video Communications Inc. filed a trademark application for the mark “zoom rooms” (see below) for use on various goods and services in classes 9, 38, and 42 on May 28, 2020.
The mark was granted registration on April 15, 2021, and published for opposition on May 11, 2021.
On July 9, 2021, before the lapse of a statutory period of two months counting from the publication date, Zoom Co., Ltd. filed an opposition. The opponent argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing their owned senior registration for the mark “ZOOM” (see below).
The Opposition Board found the opposed mark gives rise to a pronunciation of ‘zuːm-ruːm’, but no specific meaning. In the meantime, the opponent’s mark gives rise to a pronunciation of ‘zuːm’ and the meaning of ‘the effect of a camera moving toward or away from a subject by using a zoom lens. From the appearance, it is unlikely that relevant consumers confuse both marks because of the severe difference in letters and configuration. Phonetically, the consumers with ordinary care can easily distinguish ‘zuːm-ruːm’ from ‘zuːm’. Conceptually, the Board has a reason to believe the opposed mark is dissimilar to the mark “ZOOM” since it does not give rise to any specific meaning at all.
Based on the foregoing, the Board found both marks are unlikely to cause confusion and are deemed dissimilar.
The Board did not agree to consider “zoom” as a prominent portion of the opposed mark by taking into account seven sounds in total and the same font, size, and intervals between respective letters of the opposed mark.
Consequently, the JPO dismissed the opposition entirely and decided the validity of the opposed mark as the status quo.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM