Articles
Intellectual Property: Google loses the right to use 'Gmail' in Europe
| Release Date: |
12 February 2007 |
| Author: |
Conan Chitham |
Google is being forced to rebrand its e-mail service across Europe as a result of its failure to properly register "Gmail".
In the final stage of an ongoing dispute with a German venture capitalist who used the name "Gmail" for a mail delivery service and who registered it as a trade mark six years ago, the Office for Harmonisation in the Internal Market, the body responsible for European Community trade marks, rejected Google's appeal against a German court's decision ordering Google to remove all Gmail references from its Germany service.
Google has met numerous obstacles in its attempts to register Gmail as a European Community trade mark, including a dispute in the UK with a very small financial research company which claimed the right to the UK trade mark causing Google to abandon use of Gmail in Europe in 2005. Two years later it has had to re-launch in Europe as Google Mail.
Apple Computer found itself in a similar situation recently when it launched a mobile phone under the name "iPhone" and Cisco, who has registered that name as a trade mark around the world, brought proceedings against Apple in the US. This dispute, involving two global players, is particularly complex because Cisco's use of the mark has been limited to voice over internet products (rather than mobile phones) and because the mark has been used by other companies in relation to similar products to Cisco's.
The iPhone case is still in its early stages, but the outcome in GMail stresses the need for businesses to carry out a full due diligence exercise and to get their mark registered before launching a new brand. This can be achieved primarily by a search of the trade mark registers but it may also be worthwhile to search for any unregistered trade marks. A pre-existing unregistered mark, even if used by a very small enterprise and on a limited scale, will have the potential to pose a problem. Getting its mark on the register can save a business significant time and expense down the line and for US businesses hoping to operate globally, taking account of the existing position in other jurisdictions may be crucial to the viability of a launch of the brand.