Zoom, a music device, has filed a lawsuit against an NEC subsidiary that provides the web conference "Zoom" for trademark infringement.
According to the above article
Zoom (Chiyoda-ku, Tokyo), which sells electronic devices for music, announced on September 17 in Japan that Zoom Video Communications (ZVC)'s web conferencing system "Zoom" infringes the company's registered trademark. Announced that it has filed a lawsuit in the Tokyo District Court seeking an injunction against infringement against NEC Nets SI, the NEC subsidiary that provides it. He does not claim compensation for damages and shows "a stance of excluding settlements such as settlement money."
Zoom claims that ZVC "uses a mark very similar to its registered trademark" when offering Zoom. From around October 2019, inquiries about the Web conferencing system began to flood the telephone and mail counters, and Zoom's stock price recorded a stop high for the second consecutive day due to the influence of the announcement of ZVC financial results in June 2008. However, it is said that it plummeted after that. "It's not just a business hindrance, it has resulted in damage to third-party investors, and it's still a hindrance every day," he explained.
Under the corona, you might think that Zoom is a web conferencing system, but the music equipment Zoom was founded in 1983 and has a much longer history than the web conferencing system Zoom.
Is it an infringement of trademark rights?
In order to infringe a trademark right, it is necessary to use a trademark that is the same as or similar to the registered trademark as a business within the same or similar range as the designated goods and services of the registered trademark.
I looked up the trademark of Zoom, a music device, but it didn't specify a designated service such as "video teleconferencing".
So, on what basis is Zoom, a music device, suing Zoom, a web conferencing system, for trademark infringement?
It seems to be the following registered trademark.
Registration No. 4940899
The above registered trademarks include Class 9 "Computer Programs".
Apparently, Zoom, a music device, is suing the web conferencing system Zoom for using the ZOOM trademark for its "computer program" based on the registered trademark shown above.
On the other hand, Zoom, a web conferencing system, has acquired the following registered trademarks.
International registration 1365698
The designated services are "voice conference communication, electronic data transmission, electronic message transmission, electronic / electric and digital transmission of voice / data / video / signal and message, network conference communication, provision of computer for P2P network, That is, electronic transmission of audio / video and other data and documents between computers, communication by instant message, telephone conference communication, communication by communication terminal for video conference, telepresence conference communication, simple email communication, video conference communication, video. Remote conference by, communication by communication terminal for video conference, communication by video text, web conference communication, communication of message by the web ".
It can be said that Zoom, a web conferencing system, is a legitimate trademark owner and uses it as a trademark within the scope of exclusive rights.
A legitimate trademark owner is being sued for trademark infringement.
Even if you are a legitimate trademark owner, using a trademark that conflicts with the designated goods and services of the registered trademark of the prior applicant will be an infringement of the trademark right.
Did Zoom, a music device, not apply for trademark registration for Class 9?
Zoom, a web conferencing system, would have considered acquiring a trademark right for a designated product: 9 types of "computer programs" when providing services in Japan, but the trademark of Zoom, a music device, was registered. Therefore, even if you apply for trademark registration with Class 9 "Computer Program" as a designated product, it is because of the trademark registered as a prior application of Zoom Co., Ltd. of music equipment (Trademark Law, Article 4, Paragraph 1, 11). No.), will be rejected.
It is probable that the patent attorney, who is the agent of Zoom Inc., a web conferencing system, did not apply for trademark registration with Class 9 "computer programs" as designated products.
Zoom, a web conferencing system, filed a trademark registration application for the trademark "Zoom" on May 18, 2020 with the following designated products.
Class 9 Photo machinery, movie machinery, optical machinery, telecommunications machinery, mobile information terminals, computer software applications (sold by downloading through telecommunications lines), computer programs, electronic application machinery And its parts
However, in October 2020, the first-to-file registered trademark "ZOOM" (registration No. 4363622) of Dragonfly Pencil Co., Ltd., and the above-mentioned first-to-file registration trademark "Zoom" (registration No. 4940899) of Zoom, Inc. of music equipment, The reason for refusal (Trademark Law, Article 4, Paragraph 1, Item 11) was notified on the grounds of the first-to-file registered trademark "Zoom" (Registration No. 6255174) of Rational Intellectual Holdings Limited.
In a written opinion, the agent of Zoom, a web conferencing system, claimed that the above-mentioned registered trademark "Zoom" (Registration No. 4940899) of Zoom, a music device, and the applied trademark are dissimilar. The reason for refusal could not be overturned. As of September 30, 2021, the decision of refusal has not been finalized, so it is probable that a trial against the decision of refusal has been filed.
The dissimilar claims made by the representative of Zoom, a web conferencing system, were interesting, so I will introduce them below.
Cited trademark 2 is registered trademark No. 4940899 of Zoom Co., Ltd. of music equipment.
(1) Cited trademark 2 is a trademark gazette and J-PlatPat patent information platform. In trademark application / registration information, "Search character trademark (reference information) ZOOM" and "Trademark (for search): § (symbol representing a special aspect) "ZOOM" and "Name (reference information) Zoom" are posted. However, it is extremely difficult and unnatural to extract and name the above European characters from the aspect of the trademark.
Of the three components of Cited Trademark 2, the most eye-catching center is the "∞" symbol (representing infinity) or a rectangular figure like a horizontal hourglass, which is immediately (representing infinity). I don't think it's seen as a continuous European letter "O" (not a figure). Also, if we speculate that the right part is the European letter "M", the two acute angles on the three sides are represented by a square like "Ou", while the corner on the left side. Is represented by a curved line, so it cannot be recognized as the European letter "Z" (which has an acute angle like M), but rather it can be said to be a mode reminiscent of the number "2".
The Cited Trademark 2 has a unique design that cannot be easily understood by the viewer as representing a specific character, even if it was created from the characters "ZOOM". Or, it should be a trademark that is recognized as an abstract figure and that contributes to the transaction not by the characters or names mentioned above (reference information) but by its characteristic figure mode (appearance).
(2) On the other hand, the trademark of the present application consists of the letters "zoom" with a bright blue color, and while "z" is an angle of 45 degrees both up and down, the straight part of "z" and "m" is at the tip. One corner is rounded, "o" is a perfect circle, and "m" is two arcs and dome shapes, all of which are stylized in the same thickness. There is a remarkable difference in appearance from Cited Trademark 2, which gives a different impression to traders and consumers. In addition, as mentioned above, it is difficult to extract specific characters from the cited trademark 2, so it is not possible to compare them in terms of names and ideas. It is a dissimilar trademark that does not cause misunderstandings about the source of.
It claims that the central letter of the registered trademark of Zoom Inc. of music equipment seems to be the symbol of ∞, not O.
It feels a little unreasonable.
About the future of Zoom, a music device
Apple Computer is said to pay an annual license fee of 100 million yen to Aiphone Co., Ltd. (intercom manufacturer) in Japan to use the trademark "iPhone" in Japan.
Will Zoom, a web conferencing system, pay a license fee to Zoom, a music device, in this case as well?
Or, the web conferencing system Zoom may change the name of "Zoom".
I am interested in the future flow.