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The COVID-19 pandemic has unquestionably changed the way we communicate with each other, with the videoconferencing industry reaping the lion’s share of the benefit. One brand in particular has reigned supreme – Zoom.

In its most recent quarterly report, Zoom brought in $777.2m in revenue, more than 3.5 times the figure it reported the year before, and its paying customer base has increased from around 80,000 at the start of 2020 to more than 430,000 at year’s end.

In the ‘new normal’, videoconferencing is how we work, how we learn, and how we socialise.

In this context, ‘Zoom’ is now so ubiquitous that we often say, ‘Let’s Zoom’ rather than, ‘Let’s set up a video call’. As a result, Zoom is now at risk of becoming a victim of its own success in terms of its IP.

What’s the threat?

In the UK and EU, when as a consequence of the acts or inactivity of a trade mark owner, a trade mark becomes the common name in the trade for the products or services for which it is registered, the trade mark registration is liable to be revoked.

The logic behind this is that when a trade mark becomes a generic term for any type of similar product, it is no longer distinctive and cannot properly function as a trade mark. This is commonly known as ‘genericide’, and it can be a serious problem for trade mark owners.

“When a trade mark becomes a generic term for any type of similar product, it is no longer distinctive and cannot properly function as a trade mark. This can be a serious problem for trade mark owners”

Some examples of brands that lost their trade marks for this reason are aspirin, escalator, cellophane and zipper. Each of these is now a common word that is in the public domain and can be freely used by all.

So, is Zoom destined to suffer the same fate?

Not necessarily. There are a number of steps that Zoom can take to protect its intellectual property. The first (and arguably the most important) course of action that Zoom can take is to enforce its trade mark rights by taking action against incorrect use by third parties, for instance in blog posts or articles.

Alternatively, where incorrect use of a mark is widespread, a common strategy is to adopt a marketing campaign to educate consumers about how the trade mark should be used. An effective campaign can raise public awareness and demonstrate action taken to prevent a trade mark from becoming generic.

For example, Velcro Companies released a music video asking consumers to say ‘hook and loop’ when referring to its fastening technology, and not use ‘Velcro’ as a generic term.

Safety in numbers

Moreover, just because we use the word ‘Zoom’ as a general term when referring to videoconferencing, we are still very much aware that other platforms exist. It might simply be the case that ‘Let’s Zoom’ rolls off the tongue easier than ‘Let’s set up a Microsoft Teams meeting’.

Consumers are used to multiple brands co-existing in the same area and are well versed at differentiating them. This is why Google and Uber can retain their trade mark rights despite often being used as generic terms for searching something on the internet or ordering a taxi on a smartphone.

Of course, as a responsible brand owner, Zoom should keep a close eye on how use of its product name evolves. But for now, we can safely carry on with our Zoom yoga and Zoom quizzes without living in fear that we are damaging Zoom’s valuable IP.

Read more from Mewburn Ellis on avoiding genericide.

 


 

Written by Joe McAlary

Joe is a trainee trade mark attorney and a member of our trade mark team. He has an LLB Law degree from the University of Manchester and LLM in Professional Legal Practice from the University of Law, which encompassed the Legal Practice Course. At both undergraduate and postgraduate level, Joe completed modules on Intellectual Property law, which focussed on trade mark law and practice. Joe previously worked in the Business Crime and Regulation department at a solicitors’ firm on a high-profile criminal case.
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