Google loses fight for Gmail trademark

Google Inc, owner of the world's most-used Internet search engine, lost its bid to get European Union-wide trademark protection for "Gmail," the name of its Web-based e-mail service.

The Gmail name is too similar to an existing German trademark, according to a ruling by the EU's trademark agency published on its Web site this week.

Bloomberg News reported that Google has been blocked from getting the EU rights to the name because of the trademark owned by German businessman Daniel Giersch for a slogan that includes the name G-Mail.

"There is a likelihood of confusion" between the two trademarks, the Spain-based trademark agency ruled in the February 26 decision. The common element Gmail is so similar that people "will be misled into thinking that the marks indicate a shared commercial origin."

Giersch, who received his German trademark in 2000, has been entangled in a series of European court cases against Google since the California-based company started its email service in 2004.

Giersch, chief executive officer of P1 Private GmbH, uses the name for a mail business that lets users send electronic files and messages through a central email system. The G stands for his last name, he says.

Google can appeal the decision to the European Court of First Instance in Luxembourg, the EU's second-highest court. Google spokesman Kay Oberbeck had no comment on that likelihood yesterday.

Giersch's full slogan - "G-mail ... und die Post geht richtig ab," which translates as "G-mail ... and the mail really takes off" - helps promote the 33-year-old German's electronic mail-delivery business.

The trademark agency rejected Google's argument that there was no risk of confusion with its Gmail name when looking at Giersch's slogan as a whole.

The main element of his trademark is the word G-mail, according to the agency, the Office for Harmonization in the Internal Market. The second part of the slogan and the black and yellow colors, which are different from Google's, are of secondary importance, it said.

"The common element Gmail, with or without a hyphen, gives the signs an overall visual, phonetic and conceptual similarity," the agency ruled.