Google Inc. lost their recent bid to obtain European Union-wide trademark protection for the term “Gmail”, the name of their web mail service. According to a ruling by the EU’s trademark agency, the Gmail name is too similar to an existing German trademark.
A trademark for a slogan owned by German businessman Daniel Giersch contains the name “G-mail”, and the EU trademark agency says that “there is a likelihood of confusion” and that the terms are so similar that people “will be misled into thinking that the marks indicate shared commercial origin.”
Giersch obtained the German trademark in 2000, and uses the name for a mail business that allows users to send electronic files and messages through a central email system. The “G”, he says, stands for his last name. Giersch has been tied up in a series of European court cases with Google since they began their email service in 2004.
That fight, however, is not likely over. Google is still permitted to appeal the decision to the European Court of First Insurance in Luxemborg, the EU’s second highest court. The most recent ruling upheld a ruling by a lower board at the agency in January 2007. In July, Google also lost a bid in German court to claim the right to Gmail.
In Germany, Google has been using the name “GoogleMail” instead of Gmail. They’ve also been using “GoogleMail” in the UK since 2005 after settling a similar dispute with Independent International Investment Research in London.
The agency, which grants trademarks valid across the 27-nation consortium, has the power to reject applications based on similar trademarks already registered in any EU country.
Google is likely to file an appeal, and will probably fight this until they have run out of legal options. If they ultimately fail, they’ll simply have to continue using the “GoogleMail” term in Germany.
The decision, which was finalized February 26, was published this week on the agency’s website.
