Who Owns the Gmail Mark ?
Google Inc., the world’s most widely used online search engine with a market cap hovering $90 billion, yesterday bowed to the demands of a British company just a fraction of its size (with a market cap of 2.32 million pounds or $4.1 million) and reluctantly changed the name of its free email service in the U.K., from Gmail to Google Mail. As of yesterday morning, new U.K. users signing up with Google’s burgeoning email service will be given an e-mail address that ends with "@googlemail.com".
The recent name change, which follows a trademark dispute between Google and London-based Independent International Investment Research (IIIR), while affecting new U.K. users, will in the interim, have no effect on current users based in the U.K. According to Google spokeswoman, Ema Kinaker, the new name change simply relieves new users in the U.K. of having to deal with the outcome of the research firm’s pending challenge to the Gmail trademark.
IIR claims it started using the Gmail name in 2002 for its web-based email application, specifically to describe the mail function of its online information tool, Pronet, which is primarily used by investors in currency derivatives. Upon Google unveiling its Gmail plans in the spring of 2004, IRR wasted no time in registering the Gmail trademark with Ohim, the European Union’s trademark office, and the U.S. Patent and Trademark Office.
Deliberations between both companies broke down several months ago and consequently, neither party has reached an agreement over a financial settlement. The breakdown ultimately stems from a disagreement over the value of the Gmail trademark. IRR, having gone to an independent appraiser by the name of Valuation Consulting Limited in December 2004, believes the Gmail name has a value between $48 million to $64 million. Purportedly, IRR would have settled for a figure much less, however Google’s senior European counsel, Nigel Jones, says IRR demanded an “exorbitant sum” in exchange for dropping its legal dispute over the Gmail trademark.
Google believes IRR is “very focused on a monetary settlement” and “has failed to provide evidence of its common law rights to the name”…but for purposes of “[avoiding] any distraction to Google and [its] users”, Google would switch to the Google Mail brand in the U.K. while the trademark claim was being resolved. In the mean time, Google will continue to work with the courts and trademark office in hopes of being able to use the Gmail name in the future. While IRR has thus far been “gratified” that the trademark issue has not entailed costly litigation, the case could still find its way to court. IIIR’s chairman and chief executive Shane Smith, informed BBC News that Google broke off negotiations "unilaterally", and that his company was now exploring its legal options.
For now, Google will not be able to promote its high-profile Gmail brand in two of Europe’s largest economies. In May, following a trademark challenge from a Hamburg-based company that claimed it had registered the term five years ago for it’s “hybrid mail service”, Google was forced to make a similar name change for its email users in Germany. Just last month, the search engine giant lost the appeal against a court injunction that prevented it from using the Gmail brand there.
Mike Lynd, a partner with Marks & Clerk, a firm specializing in patent and trademark litigation, foresees that "as a result of inadequate IP searching and protection" Google now has "a real battle on its hands in gaining the Gmail trade mark within the European Union". Facing formidable roadblocks in both the U.K. and Germany, Google might want to look into cutting their losses now and possibly re-brand its free email service throughout all of Europe. Besides, Google Mail doesn’t sound that bad, does it?
Sources:
http://business.timesonline.co.uk/article/0,,9075-1833527,00.html
http://news.bbc.co.uk/1/hi/business/4354954.stm
http://www.bloomberg.com/apps/news?pid=10000102&sid=aJPeSIo53cJs&refer=uk
