Google loses battle over GMAIL trademark in Germany

The Hamburg Higher Regional Court has confirmed the decision of the Hamburg Regional Court preventing Google Inc from using the term 'Gmail' for its webmail service in Germany.

The search engine provider Google launched its email service worldwide under the brand name 'Gmail' in 2004. However, German entrepreneur Daniel Giersch had already registered the trademark G-MAIL - UND DIE POST GEHT RICHTIG AB (which may be roughly translated as 'G-Mail - the best way to go postal') in Germany. Giersch operates a German website located at 'www.gmail.de' for hybrid postal services ('hybrid' means that the services include online and offline components).

Giersch sued the search engine provider for trademark infringement and won at both the preliminary stage and the final stage before the Hamburg Regional Court in 2005 and 2006.
Google appealed the final decision of the Hamburg Regional Court, alleging that the trademark G-MAIL - UND DIE POST GEHT RICHTIG AB does not prevent Google from using the term 'Gmail' for its email service. Google argued that G-MAIL is not to be considered as a defining part of the trademark G-MAIL - UND DIE POST GEHT RICHTIG AB. As a consequence, there would be no likelihood of confusion between the term 'Gmail' for the webmail service and the G-MAIL trademark.

Moreover, Google alleged that Giersch had acted in bad faith when registering the trademark G-MAIL - UND DIE POST GEHT RICHTIG AB in 2000. According to Google, Giersch registered the trademark only for the purpose of preventing Google from launching its webmail service in Germany and claiming payments in consideration of a transfer of the G-MAIL trademark to Google.

Google also lost on appeal. The Hamburg Higher Regional Court had no doubt that Giersch held prior rights in the term 'G-Mail'. Therefore, Google was ordered to refrain from using the term 'Gmail' for its webmail service in Germany. Referring to the European Court of Justice's decision in Thomson Life, the court took the view that 'G-Mail' is a distinctive element of the trademark G-MAIL - UND DIE POST GEHT RICHTIG AB. As a result, using the term 'Gmail' for an email service would create a likelihood of confusion with that trademark. The court also rejected the bad-faith argument, stating that Giersch could not have predicted the launch of Google's webmail service in 2004 when he applied for protection of his trademark in 2000.

As the Higher Regional Court has not allowed a second appeal against the decision, it is expected that Google will give up the fight for the name Gmail in Germany. According to recent press releases, Google has announced that it regrets the decision of the Hamburg Higher Regional Court, but that it will continue to provide its webmail service to customers in Germany under the brand 'Google Mail'.

Moritz Hüsch, Freshfields Bruckhaus Deringer, Hamburg