Google fails to register GMAIL - again

In Google Inc v Giersch (Case R 252/2007-2, February 26 2008), the Second Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has dismissed Google Inc's appeal against a decision of the Opposition Division of OHIM refusing Google's application to register the mark GMAIL.

On April 14 2004 Google applied to register the sign GMAIL as a Community trademark for telecommunications and electronic mail services. On February 10 2005 Daniel Giersch filed a notice of opposition based on his earlier registered mark G-MAIL... UND DIE POST GEHT RICHTIG AB (and design) for both electronic mail services and standard postal services. The expression 'und die Post geht richtig ab' means 'and off the post goes' in German.

OHIM upheld the opposition on the grounds that:

• the services covered by both marks were identical;
  
  
• the dominant element of both marks was identical; and
  
  
• the marks were visually similar and aurally identical (for further details please see "Google's GMAIL application fails").

On appeal, Google argued that:

• the colour combination used in the earlier mark was similar to the colour combination used by Deutsche Post AG, the German postal services provider, indicating that the earlier mark was initially intended for postal delivery services rather than electronic mail services;
  
  
• the use of the hyphen between the letter 'G' and the word 'mail' resulted in the mark having a low degree of distinctiveness, giving the impression that the word merely described a type of mail; and
  
  
• the conceptual meaning of each mark was different, and the conceptual and visual dissimilarities of the mark would neutralize any aural similarity.

The Second Board of Appeal dismissed Google's appeal, considering that the signs had an overall visual, phonetic and conceptual similarity such that the relevant German public would be misled into thinking that the marks indicated a shared commercial origin. The reasoning of the board was as follows:

• The overall impression of the signs was decisive. The use of the hyphen in the G-MAIL mark was considered to be of no consequence, merely separating the letter 'G' from the word 'mail'.
  
  
• Although the earlier mark contained several other elements, these did not stand out to such an extent that the component 'G-mail' (which was depicted in a considerably larger size than the remaining wording) would be considered of secondary importance. The use of other visual elements, including colour, did not detract from the strong visual similarity of the verbal elements of both marks.
  
  
• The remainder of the text of the earlier mark was a typical German idiom which would be seen as an advertising slogan, rather than a trademark. The addition of the letter 'G' before 'mail' endowed a certain amount of distinctiveness to the mark as a whole.
  
  
• The words 'Gmail' and 'G-mail' are pronounced identically.
  
  
• Neither 'Gmail' nor 'G-mail' has a meaning in German. The words are thus conceptually similar. In any event, electronic communication services are commonly marketed using the word 'mail'.

This decision is a further setback for Google in its bid to protect the Gmail brand in Europe. In 2005 Google rebranded its Gmail service in the United Kingdom as a result of a dispute with financial firm Independent International Investment Research. It was also prevented from using Gmail in Germany following a case brought by Giersch in the German courts (for further details please see "Google loses battle over GMAIL trademark in Germany"). Similar disputes between Google and Giersch are ongoing in Monaco, Norway and Switzerland.

Hiroshi Sheraton and Amanda Easey, McDermott Will & Emery UK LLP, London