Google successfully opposed the marks "GOOGLE CAR" before the EUIPO invoking its reputation

On 1 February 2023, the General Court of the EU issued two judgments (T-568/21 and T-569/21 – Zoubier Harbaoui v EUIPO) on two trade mark oppositions filed by Google with the EUIPO against the trade mark applications for the signs "GOOGLE CAR" and "GC GOOGLE CAR". The company was successful in both judgments on the basis of Article 8(5) EUTMR.

Background

In 2018, a French individual filed two applications with the EUIPO to register the word sign "GOOGLE CAR" and the above figurative sign "GC GOOGLE CAR". Both applications covered goods in class 12, that is vehicles and means of transport, and associated parts.

Google opposed both applications, relying on Articles 8(1)(b) and 8(5) EUTMR and invoking 13 earlier EUTMs, including its EU word mark No 1104306 "GOOGLE", filed on 12 March 1999.

The earlier marks cover goods and services in classes 9, 35, 38, and 42.

The EUIPO Opposition Division upheld the opposition on the basis of Google's reputation for all the contested goods in class 12.

The applicant appealed and the Fifth Board of Appeal of the EUIPO dismissed the appeal in its entirety. The Board found that Google met all the necessary (and cumulative) conditions to rely on Article 8(5) EUTMR. First, the earlier mark GOOGLE had a solid reputation in the field of information technology, especially as it referred to a search tool used on a daily basis. Furthermore, the signs in question showed a high degree of similarity. Finally, the opponent was able to prove the "link" in the mind of the relevant consumers and that the contested marks were capable of taking unfair advantage of the reputation of its marks. The applicant brought an action for annulment against the Board's decision before the General Court, which dismissed the action in its entirety. The Court upheld the reasoning of the Fifth Board.

The judgment(s) of the Court

The applicant put forward as its single plea in law that the Board of Appeal of EUIPO had failed in its assessment of Article 8(5) EUTMR - in particular with regard to an erroneous assessment of the existence of a link between the marks at issue and an erroneous assessment of the risk of unfair advantage.

Comparison of the signs

In the judgment concerning the figurative "GC GOOGLE CAR", the Court first assessed the comparison of the signs. The arguments of the Applicant relied on the fact that consumers pay more attention to the beginning of word signs. Therefore, the word element “Google” in the contested (figurative) mark would be negligible due to its size and position. Therefore, according to the applicant, the Board did not correctly assess the dominant element of the figurative mark, which was the stylization “GC”.

Nevertheless, the Court agreed with the reasoning of the Fifth Board and concluded that the Board correctly found that the word element ‘Google’ does not go unnoticed in the figurative application – therefore the signs are visually similar to an average degree.

The phonetic similarity was not contested. Conceptually, although the Board admittedly stated that the word “Google” has no specific meaning as such, it added that the term is, however, generally associated with the intervener’s internet search engine. Therefore, the Board correctly found that there was a high degree of conceptual similarity.

Link

The applicant argued that the reputation of Google is merely for search engine services. Therefore, consumers would not understand the term “Google” in relation to vehicles. They could do so for the mark “WAYMO” (owned by Google) for the automotive sector. Furthermore, the parties’ business ‘focus’ is far from each other.

The Court did not accept these arguments, finding that consumers will clearly recognise the term “Google” and assume that the vehicles and means of transport incorporate the company’s technologies and tools. The existence of the separate mark “WAYMO” for Google’s self-driving cars does not affect the arguments regarding a link to the earlier marks in the proceedings at issue.

On the risk of unfair advantage

The main argument in defence of the contested applications here was that the existence of Google’s mark "WAYMO", covering "cars" in Class 12, prevents the applicant from taking unfair advantage or diluting the opposing marks "GOOGLE". However, the Court stated that the risk of free-riding is the case at issue was obvious, given that one of the three elements making up the sign of the mark applied for is identical to the earlier mark, the reputation of which is extremely solid. Given the similarities between the marks at issue (especially for the contested word mark "GOOGLE CAR" and the link which the relevant public will establish between those marks, the Board had not erred in finding that the use of the marks applied for carries a risk of taking unfair advantage of the reputation of the earlier marks.

Comment

The assessment of both the existence of a "link" in the minds of the consumers concerned and the risk of unfair advantage was straightforward in the present case. The Google trade mark is currently one of the best-known marks in the world. Many companies and individuals would certainly like to benefit from this notoriety for their own activities. However, trade mark law and, in particular, the provisions on the protection of the reputation of well-known marks, prevent such aspirations, as they are primarily intended to benefit consumers and secondarily, in the interest of fairness, to protect companies' investments in the protection and promotion of their own trade marks.