Kabushiki Kaisha Zoom v Zoom Video Communications, Inc

This decision concerns an opposition filed by Kabushiki Kaisha Zoom (the "Opponent") against the trade mark application number 2022717, for the figurative mark "ZOOM" in classes 9 and 38, filed by Zoom Video Communications, Inc. (the "Applicant"). The opposition was brought under section 52 of the Trade Marks Act 1995 (Cth), with the Opponent relying on grounds including sections 42(b), 44, 58, 60, and 62A of the Act. The matter was heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were to determine whether the Opponent had established any of the grounds for opposing the Applicant's trade mark registration. Specifically, the delegate considered whether the Applicant was the owner of the trade mark, whether the trade mark was identical or substantially identical to an earlier trade mark, whether the trade mark was likely to deceive or cause confusion, and whether the Applicant had a reputation in Australia for goods or services under an earlier trade mark. The delegate also had to consider the admissibility of certain evidence filed by both parties, including declarations made by Susan Ha, Elizabeth Widup, Shannon Platt, and Stephen Friend, and determine the relevance and probative value of the evidence presented in light of the relevant date for assessment, which was the filing date of the Applicant's trade mark application, 11 July 2019.

The delegate's reasoning focused on the evidence presented and the applicable legal principles. The Opponent bore the onus of proving its case on the balance of probabilities. While the Opponent demonstrated ownership of registered trade marks for "ZOOM" in class 15 for musical instruments and audio-visual equipment, and evidence of sales and promotion in Australia since 1989, the delegate found that the Applicant's trade mark application, filed in 2019 for teleconferencing and messaging services, was not identical or substantially identical to the Opponent's earlier trade marks. Furthermore, the delegate found that the evidence of alleged consumer confusion was limited and did not establish that the Applicant's use of the trade mark was likely to deceive or cause confusion, particularly given the distinct nature of the goods and services. The delegate also considered the Applicant's claim of unawareness of the Opponent's marks at the time of adoption and found that the evidence did not support the grounds of opposition. The delegate also ruled against admitting the Shannon Platt declaration in its entirety, finding it exceeded the scope of directions given for amended particulars, and that much of its content lacked probative value or was not translated.

Ultimately, the delegate concluded that the Opponent had failed to establish any of the grounds for opposition. Consequently, the opposition was dismissed, and the trade mark application was allowed to proceed to registration.