Google concedes GMail trade mark

MIP 10/24

Ben Moshinsky, London

Google faces a struggle to hold on to its GMail brand across the EU, after settling a trade mark dispute in the UK over the name of its email service.

After an 18-month battle with Independent International Investment Research (IIIR), Google has renamed its email service in the UK. From October 19, new Google email addresses end with "googlemail" instead of "gmail".

IIIR applied for the G-Mail trade mark in the US on April 3 2004 – a few days before Google's April 7 application.

IIIR applied for a Community trade mark (CTM) in Europe on October 4 2004, citing the US application for a priority date

Neither company has so far received a CTM registration.

Google's decision to change the GMail name comes after negotiations aimed at a monetary settlement failed.

IIIR valued the G-Mail name at £25 million ($44 million), leading Google to say in a statement that it "went back and forth trying to settle on reasonable terms, but the sums of money [sought by IIIR]...are exorbitant".

Shane Smith, chief executive officer of IIIR, told MIP Week: "They made no attempt to come up with an alternative valuation. We actually offered a heavy discount, proposing a payment of $500,000 a year with a cap of 10 years."

Google now faces the same trade mark battle across Europe. Smith commented: "We're not terribly sure why Google made the change in the UK at all as we applied in the EU, not just in the UK."

IIIR may fail in their CTM application because Daniel Girsch, an entrepreneur from Hamburg, registered "Gmail – und die Post geht richtig ab" with the German Patent Office in 2000.

Smith said that, if the CTM application fails, he would seek national trade marks in the other 24 EU jurisdictions.

Mike Lynd, a trade mark specialist at Marks & Clerk, said: "On the face of it, Google might be better off biting the bullet and changing the GMail name across Europe"

Google's legal department has had a busy week. On October 19, five publishers filed suits against Google to block plans to scan copyrighted works without permission.

Publishing companies McGraw-Hill, Pearson, Viacom, Simon & Schuster, John Wiley & Sons lodged their complaint in the US District Court for the Southern District of New York.

The publishers claim that Google infringes copyrights when it scans books without permission.

But Google's legal advisor, David Drummond, denied the charges: "Creating an easy-to-use index of books is fair use under copyright law and supports the purpose of copyright: to increase the awareness and sales of books, directly benefiting copyright holders."

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