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The ZOOM trademark dispute before the EUIPO centered on the question of when a repeated trademark application can be considered to be in bad faith. Is a company allowed to reapply for its trademark as often as it likes in order to avoid the requirement to use the trademark?
Two companies, one name
In the age of video conferencing, when people think of “Zoom,” the American company Zoom Communications, Inc. probably comes to mind. Far less well-known is the Japanese company Zoom Corporation, which has been manufacturing audio equipment—including field recorders, guitar effects pedals, and studio accessories—for decades. Both companies use the “ZOOM” trademark. It was precisely this situation that led to a trademark dispute, which the Second Board of Appeal of the EUIPO ruled on June 26, 2026.
On April 5, 2018, the Japanese Kabushiki Kaisha Zoom designated the European Union in an international registration for its word and figurative mark “ZOOM.” The application covered a wide range of goods in Classes 9 and 15, including microphones, recording devices, loudspeakers, musical instruments, and effects units. On May 28, 2021, Zoom Communications, Inc. filed a request for the complete invalidation of this trademark. The allegation was that the application had been filed in bad faith.
The allegation that the trademark is a repeat offense
The Japanese company’s “ZOOM” trademark was not, in fact, the first of its kind. As early as 1996, the company had filed the word trademark “ZOOM,” followed in 2006 by a virtually identical figurative trademark. As the American company Zoom Communications, Inc. argued, both of these earlier trademarks had actually been used only for a limited portion of the registered goods. Put simply, Zoom Communications’ argument was that the new application from 2018 was nothing more than a copy of the older trademarks with a new five-year grace period for use. In doing so, the Japanese trademark owner had avoided the obligation to repeatedly submit evidence of use in ongoing opposition and cancellation proceedings. Furthermore, the trademark owner had used its trademark purely as a weapon to take action against the American company Zoom Communications, Inc., even though the latter’s business—video conferencing software—had nothing to do with the actual business of the Japanese Zoom—high-quality audio equipment.
The EUIPO’s Invalidity Division rejected the request in its entirety in August 2025. The U.S.-based company Zoom Communications, Inc. subsequently filed an appeal on October 15, 2025.
The grounds for the Board of Appeal’s decision
The The Second Board of Appeal of the EUIPO issued its decision on June 26, 2026—Case No. R 1860/2025-2 against Zoom Communications, upheld the EUIPO’s decision in its entirety, and dismissed the appeal. It found that there was no alleged bad faith.
Such a repeated application, in and of itself, cannot constitute bad faith.
There is simply no provision prohibiting a new application. Only if additional, concrete evidence were to emerge could one assume an improper intent. Zoom Communications was unable to provide such evidence in this case.
Why the time frame ruled out the possibility of an attempt to circumvent the rule
Particularly revealing is the way the Board handled the timeline. The EU designation was filed on April 5, 2018—almost five years after the expiration of the grace period for the figurative mark from 2006 and as many as thirteen years after the expiration of the grace period for the word mark from 1996. The Board argued that anyone who deliberately files a new trademark application to evade the obligation to use the trademark would logically do so shortly before the expiration of the existing grace period and not years afterward. If circumvention had indeed been the goal, the trademark owner would have let her chance slip away long ago. Furthermore, the new application itself was not without risk, since by choosing a later filing date, the trademark owner also accepted the risk that third-party rights might have arisen in the meantime.
The Board also rejected the argument that the new application was filed suspiciously close in time to a period during which the trademark owner had repeatedly been required to provide evidence of use in other proceedings. The mere temporal connection between cancellation proceedings against an earlier trademark and the filing of a new, similar trademark is not, in and of itself, sufficient to rebut the presumption of good faith. The technological advancements in audio devices since 2006—particularly through increasing connectivity and internet capability—constitute a plausible and reasonable explanation for why the trademark owner sought to adapt its application.
A broad application is not proof of dishonesty
Zoom Communications’ second argument concerned the scope of the application. Terms such as “downloadable software,” “computers,” or “smartphones” were far removed from what the Japanese company ZOOM actually sells, namely specialized audio equipment. The Board also rejected this argument. Neither trademark law nor existing case law would permit a conclusion of bad faith based solely on the length or breadth of a list of goods and services. A broad application is a common and legitimate practice, as long as it remains within a plausible context related to the applicant’s field of business.
Here, the Board drew a distinction from the well-known British SkyKick case, in which the television broadcaster Sky had sought protection for 22 Nice Classes, including goods such as bleach, which were clearly unrelated to the business of a television broadcaster. In the present case, although the application by the Japanese company ZOOM also straddles the boundaries of what is reasonable—for example, in the case of smartphones or educational materials—it remains, on the whole, within the core area of audio and music technology. Furthermore, trademark law is not, in any event, tied to an intention to use the mark at the time of filing. A company is certainly permitted to file an application for goods it intends to offer in the future, and the business field need not be identical to the list of goods.
Trademark as a Weapon
Perhaps the most serious allegation was that the Japanese company ZOOM had deliberately used its trademark as a legal lever against the American company Zoom Communications, Inc., including in several opposition and cancellation proceedings in which it had claimed similarity to entirely different services, such as video conferencing software. The Board acknowledged that a systematic pattern of abusive enforcement could, in principle, serve as evidence of bad faith. However, no such pattern had been proven in this case. Furthermore, the contested trademark had already been registered prior to the subsequent applications filed by the American company Zoom Communications, Inc., meaning that the Japanese trademark owner could not have known at the time of its own application that its future competitor would even file its own “ZOOM” trademarks. The Chamber viewed the fact that the trademark owner had, in some recent proceedings following the initiation of the invalidation proceedings, relied in part on other, earlier trademarks as a reasonable strategic adjustment and not as evidence of unfair intentions.
Practical Tips
For companies that wish to re-register an existing trademark after several years, the decision provides some reassurance, but it also highlights what really matters. Those who can plausibly justify their application based on actual business developments—such as technological progress, new product lines, or market expansion—are in a much better position than those who simply resubmit the same trademark without a reasonable explanation. In this particular case, it was especially helpful that the new application was filed well in advance of the critical deadlines. By contrast, anyone who re-registers a nearly identical trademark shortly before the expiration of a grace period for use is venturing into significantly more dangerous territory. Nor should the breadth of a list of goods and services be underestimated. While it is not in itself an indication of bad faith, it can certainly contribute to shifting the burden of proof when viewed in conjunction with other circumstances.
Conclusion
The decision highlights the high standards that the EUIPO applies with regard to bad faith and the burden of proof in this regard.
The distinction from the Monopoly case—in which bad faith was affirmed precisely because of repeated identical applications intended to circumvent the requirement of use—is not entirely convincing. The key difference cited by the Chamber is ultimately that Hasbro itself had admitted to its intent to circumvent the requirement at the time. Without such an admission, the hurdle for proving bad faith thus seems nearly insurmountable, even if the external circumstances—such as, in this case, a nearly identical trademark for largely overlapping goods—certainly give rise to doubt. This could encourage imitators to pursue similar strategies, as long as they do not openly communicate their motives.
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