'Ungoogleable' removed from list of new words following objection by Google

Sweden

The Swedish Language Council publishes an annual list of new words used in the Swedish language, explaining how they are defined in common parlance. In the 2012 list, the council included the term 'ogooglebar' (which may be translated as 'ungoogleable' in English). The council defined 'ogooglebar' as "something that cannot be found on the Internet with a search engine”.

However, Google objected to the definition of the word - it asked that:

  • the definition be changed to show that the expression specifically refers to Google, rather than search engines in general; and
  • a disclaimer be added stating that GOOGLE is a registered trademark.

As a result of Google’s objection, the council - for the first time ever - deleted the word from the list. Prior to the removal, the well-respected Swedish Academy, which manages the Dictionary of the Swedish Academy, joined in the dispute, with Permanent Secretary Peter Englund stating rather aggressively: “Let Google bring its guns forward, because we've got some guns as well”.

Despite the removal of the word from the list and the media rumblings diminishing, another entity, Sweden's National Encyclopedia, decided to add an entry for 'ogooglebar', defining it as  “a word or phrase that cannot be found on the Internet using a search engine. Commonly referring to the search engine Google, but the term has come to be used for other similar services on the Internet”. A disclaimer was also added: “The word 'ogooglebar' was listed by the Language Council in its list of new words for 2012, but was deleted after objections from the company Google Inc.”

Google has received a lot of media criticism for its objection and attempts to influence the definition of 'ogooglebar'; however, from a legal point of view, Google’s actions are understandable and well within its rights.

The purpose of trademarks is to designate the goods/services of a certain undertaking and, for this purpose, the mark must be distinctive. If a trademark loses its ability to indicate origin, the trademark holder may lose its registration and the exclusive right to the trademark, since it has become a generic term. Such a risk is high when a trademark’s meaning expands and no longer identifies a product but, instead, a certain type of products. The public might thus reject the use of long or difficult words in favour of the trademark itself.

The use of a trademark in written form (eg, in dictionaries and manuals) can have an important role in legal proceedings in order to prove whether or not a trademark has become generic.

Further, according to Chapter 1, Section 17 of the Swedish Trademark Act, authors and publishers of printed scripts are required to ensure, upon request by the trademark holder, that it is evident in the script that the trademark is protected by a registration. This can be done by, for example, adding 'reg TM' or '®' after the mark or using capital letters. This also applies to publishers of printed scripts, such as book publishers, which make the scripts available electronically. Therefore, Google’s actions in this case were well grounded and, arguably, the statements of the National Encyclopedia (and other parties) can be seen as rather unnecessary and biased. 

Tom Kronhöffer and Rebecka Harding, von lode advokat ab, Stockholm

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