Google loses Gmail trademark case in Germany

A German court has ruled that Google cannot call its Web-based email 'Gmail' in Germany due to a pre-existing trademark on the name

Google can't use the Gmail name in Germany because doing so would infringe on someone else's trademark, a German court has ruled.

Google regrets the decision by the Hanseatic Higher Regional Court but said the ruling will not affect its ability to offer the Web-based mail service in Germany, Google Senior Legal Counsel Arnd Haller said in a statement.

As in the U.K., where it likewise doesn't own the Gmail trademark, Google provides the service under the name "Google Mail" in Germany.

"We have also applied for the registration of 'Gmail' as a EU-trademark on the territory of the European Union and are allowed to use it with one exception in Germany and one in the U.K.," said a Google spokeswoman in the U.K.

Google launched its Gmail Webmail service in 2004 and owns the "Gmail" trademark in more than 60 countries, according to the company.

In Germany, Google launched its Webmail service in 2005, initially under the "Gmail" brand, said Kay Oberbeck, Google's head of communications and public affairs for Germany, Austria, Switzerland, and Scandinavia.

However, Google changed the service's name to "Google Mail" after Daniel Giersch objected to the use of the name in Germany and successfully sued the company.

The appeals court that sided with Giersch on Wednesday will probably take several months to publish its reasons for reaching its decision, Oberbeck said in a phone interview Thursday.

Once Google has had a chance to read the court's grounds for Wednesday's decision, it will decide whether it will drop the matter or try to take it to Germany's Supreme Court, Oberbeck said.

Giersch, a 33-year old entrepreneur, said that the German court declared that Google can't use the name "Gmail" in Germany because it would infringe on his "G-mail" trademark.

He registered the "G-mail" trademark in Germany in 2000 and has been battling Google in German courts for the past three years, according to Giersch.

There are ongoing legal proceedings between Giersch and Google over the "Gmail" name in Spain, Portugal, and Switzerland, according to Giersch.

Oberbeck said Google recently took Giersch to court in Austria to prevent him from setting up a business under the Gmail name there.

As part of that case's resolution several weeks ago, Giersch signed a cease-and-desist declaration stating he would not offer any services under the "Gmail" name in Europe, excluding Germany and the non-EU countries of Monaco, Norway, and Switzerland, the U.S. spokesman said.

However, Giersch takes issue with this account, saying he didn't sign any cease-and-desist declarations as a result of the Austrian case. Giersch said he told the Austrian court what he has told the Switzerland court: That he's only interested in using the "G-mail" name in Germany, Monaco, Norway, and Switzerland. "That's where I registered my marks, that's where I do business, and that's all I want," he said.

Google disputes Giersch's assertion that he owns a trademark for "G-mail" at all in Germany. "He owns a colored, succinctly designed word/device mark for the black/yellow logo 'G-mail,'" the Google U.S. spokesman said.

That logo can be seen on the home page of Giersch's G-mail company Web site. G-mail, operated by Giersch's P1privat near Hamburg, Germany, provides what Giersch describes as a "hybrid" mail service that combines e-mail and regular mail.

Giersch, who is based in Monaco, isn't interested in selling Google ownership of the name in dispute but rather is interested in growing his G-mail business, whose commercial operations he launched in 2000, he said. The G-mail operation has about 10 full-time employees and 45 part-timers and subcontractors.

Google doesn't use the Gmail name in the U.K. because it is currently trademarked by someone else. Google representatives didn't know who the owner of the Gmail name is in the U.K. nor whether Google is currently making any attempts to secure the name there. They confirmed the owner isn't Giersch.

In Switzerland, both Google and Giersch have the right to use the Gmail name, Oberbeck said. According to Giersch, he will seek to prevent Google's use of the Gmail name in that country.

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