2024.12.23

ZOOM Trademark Dispute in Japan!

1. Continuation of the ZOOM Trademark Dispute! Explaining the Negotiations and the Battle over Cancellation Trials

We will discuss the 2024 edition of the ZOOM trademark dispute. It has been about three years since a trademark infringement lawsuit was filed regarding the use of the web conferencing software “ZOOM,” and various developments have taken place. Although it seemed at first that Web Conference ZOOM took the lead by negotiating for the transfer of trademark rights, things have gone back to square one with a cancellation trial.

2.Summary Up to the Previous Episode

Summarizing the complex topic we discussed three years ago about the ZOOM trademark issue: the audio equipment company ZOOM (Zoom Corporation) filed a trademark infringement lawsuit over the use of “ZOOM” by the web conferencing service ZOOM (strictly speaking, the defendant is the Japanese distributor). The main point of contention is whether the registered trademark owned by Audio ZOOM can be recognized as referring to the word “ZOOM.” Complicating matters is that the stationery manufacturer Tombow Pencil was the first to hold the trademark rights for “ZOOM” in the area of electronic devices and software (Class 9).

3. Negotiations with Tombow Pencil Leading to the Transfer of Trademark Rights

Upon investigating J-PlatPat and the Trademark Register, it has come to light that Web Conference ZOOM has received a transfer of trademark rights from Tombow Pencil. As a result, Web Conference ZOOM can now assert the defense of registered trademark use, making the litigation more favorable for Web Conference ZOOM.

4. Trying to Destroy the Transferred Trademark Rights!

—The Battle Over a Non-Use Cancellation Trial—
Just when it appeared that Web Conference ZOOM might prevail, Audio ZOOM moved to cancel that trademark registration through a non-use cancellation trial. Consequently, the Japan Patent Office handed down a decision (trial decision) that Tombow Pencil’s trademark registration for ZOOM should be canceled.

5. Does Web Conference ZOOM’s Use Constitute “Use by the Trademark Right Holder”? (Advanced Explanation)

The current trademark holder, Web Conference ZOOM, has presumably used the registered trademark in Japan within three years before the date on which the cancellation trial was filed. According to Article 50, Paragraph 2 of the Trademark Act, “where, within three years before the registration of the request for a trial, any of the trademark right holder, the exclusive licensee, or the non-exclusive licensee … has used the registered trademark in Japan,” non-use cancellation does not apply. However, the text does not clarify which point in time applies when referring to the “trademark right holder.” If a transfer of trademark rights allows one to avoid non-use cancellation, it is debatable whether this aligns with the purpose of the system—a potentially contentious issue.

You can listen to the audio version of this article on Spotify or Apple Podcasts.