Google loses European GMail trademark battle

25 comments

Google is not allowed to use the trademark "GMail" in Europe. According to an article on The Register:

The Office for Harmonisation in the Internal Market (OHIM), the body which is responsible for European community trademarks, rejected Google's appeal after a stiff battle with German-born venture capitalist Daniel Giersch.

I am sure that Google does not like that at all, but I could live with that. The real Problem is that you cannot get a proper @gmail.com address. When you register for an account you will get an @googlemail.com e-mail. This sucks (at least for all those who do not know how to use a proxy server).

Comments

Can anyone spot why that

Can anyone spot why that link is so sad? Come on brits!

can anyone explain?

why does google need permission to use the name in each country where it has users? it's all hosted in the U.S., fer chrissakes..

Sad?

Steve Marks - you need to losen up.

There are certain issues with Trademarks

I'm sure there is part of the legislation that says if you don't defend your trademark, you can lose the trademark rights.

universal trademarks

>> it's all hosted in the U.S., fer chrissakes..
Let me get this right: Because they are hosted in the US they get worldwide trademark over the term and can roughshod any previous rights people may have acquired elsewhere (even if those rights were acquired prior to Google existing)?

re: Yes

>>Because they are hosted in the US they get worldwide trademark over the term and can roughshod any previous rights people may have acquired elsewhere (even if those rights were acquired prior to Google existing)?

no, my point is, it's based and hosted in the U.S., what does the German trademark office have to do with it? I don't see how German trademark laws are relevant to a US-based, US-hosted service... on what base can they force google to serve googlemail.com to the german visitors? I don't see how gmail.com infringes on gmail.de's trademark...

"I don't see how German

"I don't see how German trademark laws are relevant to a US-based, US-hosted service"

If the service is delivered into Germany, though...

re: Brian Turner

define 'delivered into Germany', please.

am I really responsible for trademarks in every country that my site is visible from? what if someone's registered my personal name as a trademark in Papua New Guinea, where it means 'really cool company'? do I have to change my given name?

I'm not saying 'screw trademarks', I'm just asking for a simple explanation on what grounds does Google have to redirect german and UK users to googlemail.com... I mean, we could just go ahead and remove all TLDs in favor of .com and have them assigned on trademark registration then...

"define 'delivered into

"define 'delivered into Germany', please."

sure... it means that they are giving a service to someone in germany. it´s not a web page, they are serving germans an therefore, german rules apply...

think about it the other way. if U have your enterprise, and a gigantic german company serves american customers with your name. would you consider that american rules don´t apply??

re: nixgore

you're nuts. are you seriously expecting me to filter who has access to my application just because there's a company with the same name on the other side of the planet?!

no, im not expecting you to

no, im not expecting you to filter who has acces to anything, im just saying that if someone has the rights for that namem you can´t use it! its not so complicated...

re: nixgore

yes but my whole argument is that the gmail dispute is in germany and the gmail service is in the US... and that I don't see on which basis google has to surrender the use of gmail for german users, if the servers are in the US

and I was just asking if someone can explain in a simple way how the german trademark dispute court has jurisdiction over a US-based service

Bargain

>>>so what you are saying, if i want to infringe any trademark, i just need to get the server in a different location to where the real business is based....bonus :-)

Personally, ukgimp, I'm going to start up an offshore gambling service and sell it to US punters. (shurely shome mistake. Ed.)

So are we going to balkanize

So are we going to balkanize the internet to make sure comply with every trademark in every country someone might have ?

RE: So are we going to balkanize

nop, you should make sure you comply with every trademark in every country YOU ARE GIVING A SERVICE. Not in every country in the world. Unless I want to give a world wide service, in which case, yes...

You know there's this thing

You know there's this thing called the "internet" and on it there are "websites", that are reachable by anyone in the world. Its really neat check it out sometime.

No kidding... really??

No kidding... really??
let me ask you something... if you go to a web page. Are getting any kind of service? or you are just looking at information?? on the other hand gmail... is it a service or a web page??

See the difference??

re: nixgore

let me ask you something... if you go to a web page. Are getting any kind of service? or you are just looking at information?? on the other hand gmail... is it a service or a web page??

See the difference??

not really, no.

websites offer information. finding information is a service. plus, every friggin two page website now offers search and commenting functions... that's interactivity and by my definition 'service'.

I think you're 10 years late with your argument... it could've worked in '97, but not in 2007.

like... are blogs a service? is threadwatch (not technically a blog) a service? what about forums?

No. Here's where I am coming

No. Here's where I am coming from, I sell marketing data via the web. Lets just say the domain is Widgets.com. If I apply your thoughts ( as I understand them ) on this then if a random German customer comes to my site and tries to buy my data then I have to stop them, double check there are no companies in Germany that have a trademark on "Widgets.com". If there was intent to infringe on a mark thats in the same sphere of business or the mark was sufficiantly famous ( like Nike or Nissan ) I could see it. Otherwise I am going to have to nofollow that line of reasoning.

its all about intent, right?

google not only provide their e-mail service into Germany, thay actively promote their e-mail service into Germany. Thus by promoting a service called G-mail into Germany (and the UK in fact) they are actively and intentionally infringing upon a trademark for that product in that area.

If you setup a service called widgets.com in the US promoted only to the US population, and a random German happens upon it and buys it, then that would be a fact of life, especially so if the service is one which is available by electronic delivery (ie; you do not have special arrangements to delivery to Germany, you cannot be said to be promoting your product to Germany).

But as soon as you start to a) provide that site in the German Language, b) promote the service within Germany or c) list on your site that you will deliver a physical copy of that product to Germany it is YOUR responsibility, surely, to check that you aren't infringing any trademarks and, if you are, to undertage not to infringe them (ie; change the name, refuse to provide the service to that area or something along those lines).

Under any other circumstances (eg; you do not intend to sell to a country but the trademark owner in that country asks you not to infringe their trademark because they think you may be doing inadvertantly) then its easy to remedy by saying clearly "not available for sale to Germany"

So its not really rocket science to comply with the law is it? If you provide the service to a country you check that you aren't infringing trademark. If you don't provide the service there you don't have to check. If you don't provide the service but the trademark owner still contacts you you do the polite thing.

And before you say "but how do I know where my electronic download is going to" - well you don't, but if someone from Germany wants to buy from you so badly they lie, then there's probably nothing you can do, but equally you also probably won't get sued.

ROFL

Quote:
I'm just asking for a simple explanation on what grounds does Google have to redirect german and UK users to googlemail.com.

...and put all those expensive trademark lawyers out of work!

I've looked at trademark law on a few occasions over the years and it is a palpable nightmare, for instance the Wikipedia article on McDonalds cites trademark disputes as being the majority of litigation entered into by McDonalds - loads of other major brands have similar histories of trademark legal actions.

http://en.wikipedia.org/wiki/McDonald's#Legal_cases

The whole area has just got even more fraught with the globalisation that has been brought about by the internet.

re: Gurtie

But as soon as you start to a) provide that site in the German Language, b) promote the service within Germany or c) list on your site that you will deliver a physical copy of that product to Germany it is YOUR responsibility, surely, to check that you aren't infringing any trademarks and, if you are, to undertage not to infringe them (ie; change the name, refuse to provide the service to that area or something along those lines).

can you draw a parallell with an OFFLINE company selling... car parts... called 'woohoo'... are you telling me they can't ship to a country where a 'woohoo' has existed longer than them, or that they should rename their packaging so it's 'carpartsbywoohoo'?

I find the idea of owners of content having to actively monitor who accesses it absolutely DISGUSTING

plus, the examples that you gave are either horrible examples or just show how the whole idea is even more sleazy than I already think it is... you're saying that I have to comply with german law if I have a section of it in german or if I will ship to germany? ok the promotion thing might be tricky, I agree with that one...

I'm sorry if I'm boring everyone here but I feel that this is an important issue as I myself own and/or operate (or am in the process of starting to) many different web sites, some of which are of the gmail kind (have user accounts and such). if the general consensus is that the discussion is useless, I will gladly drop it.

Boring - Definitely not

allixsenos - this discussion is really quite interesting and to those of us who run web sites that can cross international boundaries a VERY important medium term concern.

Even for those who only run sites targetting their own country, I would suggest that it is still a concern - though from the opposite angle. Would you like a foreign website to come into your country using your sites name to come into your market space with a big marketing campaign.

I find the idea of owners of

Quote:
I find the idea of owners of content having to actively monitor who accesses it absolutely DISGUSTING

ok - well I guess you've never run a small business then, or at least not in a country with many regulations. There are a lot of things about the whole 'making money' thing which are a pita and conforming to law is one of them. Generally speaking, if you do your best to comply then no one is going to throw you in jail if you make a mistake.

I don't think the argument that you should be able to do anything you like if its too much effort to try and comply with international law is a very good one, to be honest, despite the fact that I have a domain name which I am desperate to use but am locked in negotiations with the slowest responding trademark owner ever in Australia, to be sure they don't mind me using it in the UK.

you are not seen the problem...

All the service is in US, it is hosted there and all, and doesn't matters if the site is in English, German, or any other language, neither if people are using it from Germany or not...

The problem is that the German owner of the trademark gmail can ALSO use the name ... IN GERMANY... so Google can still have something like www.gmail.com/de , and redirect via ip... but the German owner can have a www.gmail.de domain... and of course Google won't be able to market gmail inside Germany.

That won't be the end of the world, but would be confusing for users, or at least will be confusing to some users.

In fact, that would be valid all over European Community, so over almost all the old continent.

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