Google renames Gmail for UK users

Google could be forced to give up its Gmail brand across Europe after voluntarily dropping it in the UK, following a trademark dispute with Independent International Investment Research (IIIR), the quoted financial information service.

The dominant search site has begun issuing new users email addresses that end ‘,’ after it refused to bow to “exorbitant” demands from a company claiming to own the Gmail name.

London-based IIIR says it used Gmail to describe the Web mail function of its Pronet financial analytics software since May 2002 - two years before Google named its email service.

After the California giant rolled out the first accounts of its email product in April 2004, emblazoned with the Gmail name, Shane Smith, IIIR’s CEO, filed a trademark application in the US for the name Gmail.

Smith then contacted Google in June, claiming to own the rights to Gmail and seeking a “business solution” to settle the dispute over the trademark, worth between £27m and £36m according to an independent valuation.

Google disputes Smith’s “tenuous” claim to be the owner of the Gmail name and stated, “We are still working with the courts and trademark office to ensure our ability to use the Gmail name, but this could take years to resolve, and in the meantime, we want our users to have an email address and experience they can rely on.”

“Starting October 19, 2005, all new accounts will have addresses. We believe this is the most simple solution rather than having what could be years of distracting negotiations and disputes for the company and uncertainty about the name for our users.”

In a statement to Freelance UK, the search colossus said it had volunteered the change to the Gmail name for its UK users after a period of tough negotiations with the London-based firm.

“This company has been very focused on a monetary settlement. We went back and forth trying to settle on reasonable terms, but the sums of money this company is demanding are exorbitant.”

Meanwhile IIIR told the BBC that Google “unilaterally” cut off negotiations after fifteen separate attempts to settle the dispute, at a monetary level Smith claims was well below the independent valuation (which stretches up to £36m).

Mr Smith said. "We are a gnat biting the ankle of a giant but that shouldn't stop us defending the intellectual property rights of our shareholders."

The search company was last week sounding upbeat about any future court confrontation with IIIR, pointing out not only does the finance firm not have a trademark application (its pending), but also their Pronet system is not used as an email service, and moreover it runs on the term ‘G-mail’ – differing from Google’s Gmail by a single hyphen.

However, trademark lawyers believe IIIR and Google have already been beaten to the Gmail brand name.

Mike Lynd, a partner at Marks & Clerk, the patent and trademark lawyers, said: "Earlier this year, Google lost the right to use Gmail in Germany, following a dispute with Daniel Giersch of Hamburg who had registered ‘Gmail’ with the German Patent Office in 2000.

Though IIIR, Google and a few hopeful opportunists have rushed to file a Community Trademark for the Gmail mark, Mr Giersch's existing German registration will undermine all of these applications, Mr Lynd told The Times.

“IIIR - because of rights acquired as a result simply of its use of the Gmail mark in the UK since May 2002 - seems likely to end up with the ability to prevent Google from using Gmail in every EU country other than Germany.”

Google maintains that the normal procedures of a trademark dispute such as asking the offending company to stop using the disputed name was ignored.

In a statement, the Mountain View-based company said: “In usual circumstances, when a trademark owner who cares about and wants to protect the rights of their mark approaches the user of the mark with a claim, they take a fairly standard number of actions: they seek to prevent further use (often through a cease and desist or an injunction) and determine ways to reduce consumer confusion.

“IIIR did not take any of these standard courses - they did not ask us to stop using the name until almost a year after first contacting us and never went to court to ask for an injunction – they just asked us for money.”

Google declined to tell Freelance UK how much IP research the company carried out before naming its flagship e-mail product.


26th October 2005

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