Google's GMAIL application fails

European Union

The Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has upheld an opposition against Google Inc's application to register the mark GMAIL as a Community trademark for telecommunications, communications by computer terminals, message sending and electronic mail services.

German individual Daniel Giersch registered the G-MAIL … UND DIE POST GEHT RICHTIG AB (and device) mark for services in Classes 38, 39 and 42 of the Nice Classification in Germany in 2000. Based on this mark Giersch lodged an opposition against Google's GMAIL Community trademark application.

The Opposition Division first noted that the services covered by the two parties' marks were completely identical. It also rejected Google's argument that the mark GMAIL would immediately be associated with Google because of the inclusion of the letter 'G'. Further, it dismissed the contention that Giersch's mark allegedly took unfair advantage of the typical colours of the German Post Office (yellow and black) and of the word 'post'. These factors were not relevant to these opposition proceedings. Moreover, the opposing mark, G-MAIL … UND DIE POST GEHT RICHTIG AB (which means 'G-Mail…and the post really takes off'), was still within its five-year grace period - meaning that questions of use could not be raised by Google.

The Opposition Division stated that the word 'mail' in both marks would be recognized by the relevant German consumers as being connected to 'email' so the word 'mail' has only a very limited level of distinctiveness. However, the additional letter 'G' at the beginning of both signs would diminish the effect of the more descriptive element 'mail' allowing the full marks GMAIL and G-MAIL some scope of protection. The OHIM also held that the slogan '… UND DIE POST GEHT RICHTIG AB' in Giersch's mark is printed much smaller and is rather descriptive, and would therefore only play a minor role for the comparison of the two signs.

The Opposition Division then came to the conclusion that the two signs are strongly similar from a visual point of view and very similar aurally. The hyphen between 'G' and 'MAIL' in the opposing mark was not relevant and it referred to the well-established fact that the relevant consumers very rarely have the opportunity to compare signs side by side; the imperfect recollection of the earlier mark would result in confusion.

After an overall assessment, the Opposition Division affirmed that there was a likelihood of confusion between G-MAIL … UND DIE POST GEHT RICHTIG AB & DEVICE and GMAIL taking into account the identical services, and the strong similarity in sound and in appearance. Google's application for GMAIL was therefore rejected. It remains to be seen whether Google will appeal this decision.

Carsten Albrecht, Lovells, Hamburg

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