March 2008
Google's European GMAIL Successfully Opposed
Google, Inc has recently lost a trade mark battle relating to its Community Trade Mark application for GMAIL.
On 14 April 2004, shortly after its GMAIL email system was launched, Google filed a Europe-wide trade mark application for the mark GMAIL covering 'Telecommunications; communications by computer terminals; message sending; electronic mail services' in class 38. The application was opposed by the owner of an earlier German trade mark registration for G-MAIL ... UND DIE POST GEHT RICHTIG AB which translates as 'G-mail ... and the mail really takes off' which was registered prior to Google's application in 2000. The mark was used and registered in connection with a web-based mail business that lets users send electronic files and messages through a central e-mail system.
The owner, Daniel Giersch, claimed in the opposition that GMAIL was confusingly similar to G-MAIL ... UND DIE POST GEHT RICHTIG AB and the Opposition Division at the Office for Harmonisation of the Internal Market (OHIM) agreed. Essentially, the dominant component of Giersch's mark, G-MAIL was virtually identical to that of Google's GMAIL mark which would therefore cause confusion in the market place as to the origin of the service, ie Google or Giersch?
Google argued that there was no risk of confusion given the overall appearance of Giersch's trade mark with the inclusion of the additional wording, UND DIE POST GEHT RICHTIG AB. However, OHIM did not believe this part of the mark was significant as it was depicted in lower case and was less prominent than G-MAIL. Accordingly, OHIM's Opposition Division rejected Google's argument and the Opposition Division's ruling was upheld when Google appealed to the OHIM Board of Appeal. Google do, however, have the opportunity to appeal this decision to the European Court of First Instance.
Briffa comment
This decision upholds one of the important principles for deciding whether two allegedly similar trade marks are similar, namely that a comparison of marks should include an assessment of what are the most dominant and distinctive components.
It also highlights the importance of conducting appropriate due diligence before a brand is launched to determine whether there are any potentially conflicting trade mark registrations or applications that could prevent your use or registration. In 2005, Google also changed its name for its UK GMAIL account holders from GMAIL to GOOGLEMAIL owing to a dispute with an English company who alleged it owned earlier trade mark rights in GMAIL. This latest development emphasises what can go wrong if a brand owner does not effectively clear his or her brands before it is launched. Briffa offers this clearance service to all clients looking to launch their own brands and strongly recommends that they consider clearance as part of their trade mark strategy.