Google keeps competition at bay

In Google Inc v Rytsk ([2008] ATMO 40, May 28 2008), Google Inc has successfully opposed an application for the registration of the mark GOOGLEBAY.  
On June 16 2006 Dmitri Rytsk applied for the registration of the mark GOOGLEBAY for consumer market information services in Class 35 of the Nice Classification. Google opposed the application under the Trademark Act based on registrations for the GOOGLE marks. 
In order to succeed, Google needed to establish that:
  • at least one of its registrations covered similar services or closely related goods; and
  • the marks GOOGLE and GOOGLEBAY were deceptively similar.   
The registrar's delegate took the view that 'consumer market information services' is a broad claim, which conceivably covered advertising services. Therefore, he found that the application covered services similar to services in one of Google's registrations (Registration 1049124), which includes dissemination of advertising for others via the Internet.   
Further, the registrar's delegate noted:
  • the distinctiveness of the coined mark GOOGLE;
  • the fact that the mark EBAY has no dictionary definition; and
  • the fact that both coined marks have strong associations with the Internet. 
Consequently, the registrar's delegate concluded that consumers would view the mark GOOGLEBAY as a simple combination of the coined marks GOOGLE and EBAY and, as no other meaning was available, would expect the mark to indicate an association with Google's business. The registrar's delegate held that it is was likely, in the circumstances, that consumers would consider the GOOGLEBAY mark to be part of Google's family of GOOGLE marks.   
Google was also successful in persuading the registrar's delegate that its GOOGLE mark had achieved a massive reputation in Australia, in large part due to its highly successful and profitable GOOGLE-branded search engine. Having already found the marks to be deceptively similar, this finding of a significant reputation in the GOOGLE mark enabled the registrar's delegate to also find a likelihood of deception or confusion.  
Changes to Australian law mean that a finding of deceptive similarity is no longer a prerequisite to a finding of a likelihood of deception or confusion based on prior reputation. 
Therefore, Google successfully established that:
  • the GOOGLEBAY mark was deceptively similar to the GOOGLE mark;
  • consumer market information services are similar to the dissemination of advertising for others via the Internet; and
  • due to Google's reputation in Australia in relation to its GOOGLE marks at the time of the filing date, use by Rytsk of the GOOGLEBAY mark would be likely to cause deception or confusion.
Therefore, the registrar's delegate refused to register the GOOGLEBAY mark. 
Sean McManis and Tim Clarke, Shelston IP, Sydney

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