FaceTec prevails in ‘Zoom’ trademark case
The EU General Court has ruled that FaceTec’s ‘Zoom’ trademark for face biometric liveness detection software does not infringe upon any of Japan-based audio equipment manufacturer Zoom KK’s existing marks, reports World IP Review.
The decision was made by the second chamber of the General Court on June 30, upholding a 2020 decision by the European Intellectual Property Office’s (EUIPO).
According to the EU court, Zoom KK has failed to demonstrate a likelihood of confusion between the two marks, regardless of both being registered under Class 9 of the Nice Agreement.
“To acknowledge similarity in all cases in which competing rights cover computer programs or software would clearly exceed the scope of the protection granted by the legislature to the proprietor of a trademark,” the General Court explained.
The court decided on the basis that while both marks refer to software, they are related to different goods: a sound recording solution and a biometric presentation attack detection (PAD) one, respectively.
For context, FaceTec had first applied for its ‘Zoom’ mark with the EUIPO in October 2016, describing the tool as a “security software that allows users to secure and access their mobile devices through multi-dimensional facial recognition identification.”
Zoom KK then filed a lawsuit on the basis that the FaceTec application infringed on its EU wordmark ‘Zoom,’ which the company first registered in 1999 under classes 9 and 15.
Both the EUIPO’s opposition division and the Board of Appeals dismissed Zoom KK’s opposition in the course of the last few years, leading it to appeal to the General Court.
The latter admitted that from a visual, phonetic, and conceptual perspective (excepting the font), the marks are “practically identical.”
However, since the distinctiveness of the ‘Zoom’ mark is lower than average, the court concluded, FaceTec’s mark is not likely to cause confusion.
“A multitude of software or programs with radically different functions can be found in the same stores, whether physical or virtual, without consumers automatically believing that they have the same origin,” the court clarified.