Google, GMAIL and Giersch ...

The IPKat has just heard from red-hot IP news-hound Stephanie Bodoni (Bloomberg) that Google has lost the latest round in its Community trade mark battle over GMAIL. Google applied to register the word in respect of internet mail services in April 2004, but earlier German businessman Daniel Giersch, chief executive of P1 Private GmbH, opposed the application on the ground that it was likely to cause confusion in Germany with a slogan used by his own company that translates as "G-mail ... and the Post really takes off". This slogan was registered as a trade mark in Germany in 2000.

In its ruling last week the Office for Harmonisation in the Internal Market's Opposition Division, Alicante, said:

"The high degree of similarity between the marks leaves little room for small differences to be observed by the general public. There is a strong likelihood of confusion, given the strong visual and phonetic similarity".

Giersch's own business lets consumers send paper, phone messages, faxes and mobile messages through a gmail.de e-mail address.

An appeal is likely, since Google and Giersch are also locked into litigation in Germany, Norway, Switzerland and Monaco (the three other countries in which Giersch trades). Google settled a similar dispute in the UK in 2005, after which it renamed its e-mail service in the country to Google Mail.

The IPKat admires Daniel Giersch's determination, but can't help feeling a little sceptical as to whether there really is a likelihood of confusion - even in Germany - between such a widely known service as Gmail and the activities of a local businessman. Merpel says, if there's a chance that German consumers can be confused by GERRI and KERRY SPRING soft drinks, they really need some help.