IP, Technology & Data

Google has today reported that it will now be-introducing the Gmail brand to its email service in the UK, ending a long-running trade mark dispute.

When Gmail was first launched by Google, a number of organisations in a number of countries around the world claimed that they already had rights in the “Gmail” mark, and that Google’s new service would infringe those rights. In the UK, that organisation was a company called Independent Investment Research (IIR), which claimed that it had been using the mark (albeit in an unregistered form) since 2002 in relation to an online information tool. Although Google launched the service as a beta in April 2004, it did not seek community trade mark protection (CTM) in the European Union until March 2005.

In October 2005, following a failure to reach a settlement, Google announced that it was rebranding its UK service as “Google Mail”, and that new users would receive an “@googlemail.com” email address, rather than an “@gmail.com” address.

It appears that Google and IIR have now resolved their differences (or IIR has agreed an acceptable settlement fee with Google), and that Google Mail will now be rebranded once again as Gmail. Perhaps uncoincidentally, I see from the IPO‘s website that four and half years after the initial application “Gmail” was finally registered as a CTM on 22 December 2009.

Interestingly, although Google publicly rebranded Gmail in the UK in 2005, behind the scenes nothing really changed. This is because Google still owned the core gmail.com domain name (the ownership of which was not being challenged), and its systems are built around email addresses being allocated to @gmail.com – it does not allow separate users to have john.smith@gmail.com and john.smith@googlemail.com. I have had my Gmail address since 2004, and throughout the dispute continued sending and receiving email to my “@gmail.com” email address. Similarly, whilst when signing up in 2006 Joe Bloggs may have been given the email address joe.bloggs@googlemail.com address, and the webpage he used to access his account was branded “Google Mail”, he could still receive email sent to joe.bloggs@gmail.com – it just wasn’t promoted. From a passing off perspective, would probably have struggled to make a claim stick, as Google had ceased actively offering a service in the UK under the “Gmail” mark.

In the end, both parties have probably got what they want, but it is unlikely to have come cheap. Whilst Google may have decided from the outset to play the long game in its dispute with IIR, what the case does do is show the importance of carrying out diligence on your proposed brand name before you launch, and in each country where you intend to trade. The fact that you have secured the .com domain name does not mean that you are automatically entitled to use that mark in every country around the world. Local diligence is crucial.

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