THE GOOGLE EMAIL SERVICE "GMAIL" HAS TO CHANGE ITS NAME IN EUROPE.

On 14/04/2004 Google Inc, filed a CTM application to register the Word mark “GMAIL” for services in class 38. Mr. Giersch filed an opposition based on his earlier German trademark registration “G-MAIL… UND DIE Post geht richtig ab” and the grounds were those laid down in Article 81 b) of Council Regulation No. 40/94.

The Office has decided in favour of the owner of the prior right on the bases of the identity regarding the services covered and the aural similarity of the trademarks.

The OHIM pointed out in the decision issued that both trademarks start with the same verbal element, “GMAIL”, which has been considered to be the prominent element in the trademarks in dispute. For the Community Office, even if the mentioned element contains the word “mail” which is descriptive part of the services protected by both signs, and is therefore of very limited distinctiveness, the letter “G” at the beginning of both trademarks endows a certain amount of distinctiveness to the word as a whole, thus diminishing the more descriptive effect of “mail” element may have.

Aurally, both marks are identical, as far as the “GMAIL” element is concerned. As for the “UND DIE Post geht richtig ab” the OHIM is of the opinion that this element is more of a promotional slogan which is meant to highlight the speed of the service.

Therefore, when taking into account that the services in comparison are identical, the Office concluded that there is a strong likelihood of confusion given the existing visual and phonetic similarity between the marks in dispute.

In view of the decision GOOGLE cannot use the word mark GMAIL in Europe in reference to its email services.

The OHIM is not the first Office to deny the registration of the trademark “GMAIL”, as Mr. Giersch has also obtained a favourable decision in Germany, Norway, Monaco and Switzerland.

The above-mentioned decision should not affect the users and the denomination of their mail accounts, even if in Germany Google offers its mail under the domain googlemail.com.



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