Google Loses Gmail Trademark Case

amigoro writes "A court in Germany today banned Google from using the name 'Gmail' for its popular webmail service following a trademark suit filed by the founder of G-Mail. Daniel Giersch, started using the name G-Mail in 2000, four years before Google released 'Gmail'. "Google infringed the young businessman's trademark that had been previously been registered," said the Hanseatic Higher Regional Court in its judgement."

Legitimate Case?

[GizmoToy (450886)]

Sounds like the guy had a legitimate case. I'm sure that it cost him a fortune to defend a suit against Google. I'm surprised Google thought they could win this one. Isn't case law in this area pretty strong? Nissan.com I think is the traditional example.

Re:Legitimate Case?

[fosterNutrition (953798)]

I agree, it sounds to me like the issue is completely in Mr. Giersch's favour. Apparently the courts thought so too:

"As far as the Hanseatic Higher Court is concerned, the legal situation is unambiguous to the extent that it has not allowed an appeal to the Federal Court of Justice"

What bothers me about this issue, though is the following:

Google has filed lawsuits against Giersch in Spain, Portugal and Switzerland.

"Google has announced, at least in writing, to 'fight' my client abroad for as long as it takes before he drops the legal claims lodged in Germany," Eble confirmed.

In other words, the case seems completely in the German fellow's favour, both from a common-sense point of view (G-Mail versus GMail, started using it four years earlier), and from a legal point of view (see the court decision quoted above), yet Google is still fighting the issue. As much as I love the GMail service, I have got to say that to me, this reeks of big money betting they can wear this guy down. He can't afford to retain a lawyer for ever, and I'm sure they know that. Hardly not evil, Google.

Re:Legitimate Case?

[wikinerd (809585)]

Hardly not evil, Google.

The funny thing here is that as long as this legal battle continues, more and more people learn about the young businessman's services, while at the same time Google's reputation as a "do no evil" company is challenged. I can't see any profit for Google here, monetary or otherwise. I wonder why they continue pursuing this case. Furthermore, the name they chose for their email services is wrong. GMail says nothing. They should have made it GoogleMail, since this would allow people unfamiliar with the service to quickly apply Google's reputation on GoogleMail. Surprisingly as it may seem, there are A LOT of people who do use the Internet and still do not know about GMail. But I'm sure they would know it better if it was named GoogleMail, since most Internet users have at least heard of Google.

Re:

[timmarhy (659436)]

why does any super rich company waste their time? ego. the top guys don't like to be told what to do, because once you have all the money you will ever need, there's nothing but ego to fight for.

Re:Legitimate Case?

[samkass (174571)]

If 10 years ago someone told me the biggest company on the internet would be an advertising agency that used the phrase "do no evil" and people believed them I would have said they were on crack. Alas, it seems to be the case.

Re:Legitimate Case?

[Tim C (15259)]

the name they chose for their email services is wrong. GMail says nothing. They should have made it GoogleMail

The funny thing is that they do in fact own the googlemail.com domain, which redirects to mail.google.com (as does gmail.com), and all their branding calls the service "Google Mail". In fact, the log in page says that mobile access is available "by pointing your phone's web browser to http://googlemail.com/app [googlemail.com]".

Re:Legitimate Case?

[AlecC (512609)]

They have already been locked out from the name gmail in the UK, and have to give googlemail.com names to UK users.

Re:Legitimate Case?

[ozbird (127571)]

What bothers me about this issue, though is the following:

Google has filed lawsuits against Giersch in Spain, Portugal and Switzerland.

"Google has announced, at least in writing, to 'fight' my client abroad for as long as it takes before he drops the legal claims lodged in Germany," Eble confirmed. In other words, the case seems completely in the German fellow's favour, both from a common-sense point of view (G-Mail versus GMail, started using it four years earlier), and from a legal point of view (see the court decision quoted above), yet Google is still fighting the issue.

And? Giersch has proven that his trademark is valid in Germany. Google are within their rights to test it in neighbouring countries to determine whether whatever steps they need to do in Germany (e.g. call in "GoogleMail") also have to be done elsewhere. That in and of itself is not "evil".

Re:

[ClosedSource (238333)]

Well, it's not Hitler evil, but it's the same degree of evil that MS is often accused of. Besides, if you're going to stand up on your high horse and say that your motto is "do no evil", than you'd better hold yourself to a higher standard than those who make no such claim.

Re:Legitimate Case?

[phulegart (997083)]

The logic as I see it, is something like this...

Police officers should be held to a higher standard than the rest of us, since it is their duty to represent the law for the general public. They should lead by example, and therefore be MORE law abiding.

A dry cleaning company has to be held to a higher standard than a roommate doing you a favor, when it comes to doing laundry. This is because their business is based on guaranteeing and delivering that higher standard. If they do not provide it, they lose business and eventually are forced to close.

Any business that uses a promise to "do no evil" is therefore expected to shine the big "DO NO EVIL" floodlight all over anything they do to make sure that it isn't going to be seen as evil, or isn't in fact evil. They themselves have set that higher standard by which they are to be judged, by saying "We will do no evil. Really, take a good look. No eeEee-ville here."

Now, of course, evil is subjective, and all depends on which side of the line you live on. One man's good is another man's garbage. It's not like the Force though, for after a certain point the followers of the dark side know the evil which they do. Most people would agree that a large corporation obviously in the wrong that intends to use its finances to wear down the little guy in the right, is an "eeEee-ville" thing.

Re:Legitimate Case?

[IamTheRealMike (537420)]

More to the point he only started registering his trademark abroad after GMail itself launched. Read the article, he registered G-Mail as a trademark in Switzerland in 2005.

Re:Legitimate Case?

[timmarhy (659436)]

the benifit to society is greater? who gives a fuck? personal property is not society's to control, or are you a dirty commie?

Re:Legitimate Case?

[mulvane (692631)]

Sadly, I agree with you at the same time I disagree. Google being the type of company it is surely was aware of G-Mail before they ever even launched gmail and were betting the odds nothing would happen. surely they thought this guy would concede to the great do no evil google. I haven't trusted google since they went public. I don't have a gmail account, and I rarely use any google services except for search. Even those I have done through tor and anonymously as I have never signed up for ANY google service. This case goes on to further prove my point and I hope google is forced to change its service name. There is an easy way to do this. google could be allowed used of gmail for one year and all emails sent from a gmail account will autonomously be fixed to send from googlemail.com instead. Any mail sent to gmail will also send a reply back to originator that all future mail should be sent to googlemail instead. No harm done to anyone.

Re:

[munrom (853142)]

So we get rid of this guy's legal right because google didn't bother to check that GMail didn't conflict with any trademarks of the markets they entered? It's the guys choice if he wants to sell the name or not. Also why would 5 million users have to change their email address?

Re:Legitimate Case?

[loganrapp (975327)]

Exactly. This was a case of poor planning. Not that hard to go, "okay, let's make sure that gmail isn't taken in all the major NA and European countries. Oh, dude in Germany? Well, let's make him an offer."

Something tells me they could have made an early offer that both parties would have been happy with - I mean, dude could make millions just by luck of naming something with a letter. But instead, Google just goes ahead with it and tries to fix it after the fact. Not necessarily evil, just crappy planning and then a desperate attempt to fix it.

I wonder if they even tried the carrot before they used the stick. Maybe they made an offer and the guy wanted more. No excuse for what they're doing, but I'm curious.

Re:Legitimate Case?

[stimpleton (732392)]

Nissan.com I think is the traditional example.

Quick link to why this is a traditional example:
http://nissan.com/Digest/The_Story.php [nissan.com]

Re:

[josh washington (1104565)]

[e-mail] [mailto] and [e-mail] [mailto]

Try both; supposedly either one will reach your account. And both sites gmail.com and googlemail.com should reach your account to login. So I assume that your "@gmail.com" will be fine.

Plus it only applies to gmail.de unless Google feels like that's enough to redefine the whole GMail trademark globally. Either way, if you're concerned, start referring people to your email @googlemail.com.

Oh yeah, you'll probably want to set a filter for those "mailto"s...

Re:Legitimate Case?

[Monsieur_F (531564)]

Google Mail itself still says it is Beta as well.
Actually I am wondering whether the word Beta is not a trademark registered by google :)

Smart businessman

[wikinerd (809585)]

This looks like a smart young businessman. Fighting Google instead of selling a name means he gets publicity, and it looks like he is sure that he can turn this publicity into profit for his company and himself. Bad to hear Google preferred to fight him in courts instead of trying to find a way to get him on board. This is the way of big bureaucratic corporations that lack innovation, and I would expect smarter choices from a company that seeks to employ the brightest engineers. I guess such a smart (and resourceful, for being able to withstand so long against a giant) businessman would be an asset if Google could persuade him to join them. Now thanks to this legal battle, more people than previously know about his business, and this is only good for him and I am sure he knows it. I wonder what he is going to release in, say, 5 or 10 years.

Re:

[chiraz90210 (961309)]

"This is the way of big bureaucratic corporations that lack innovation," Lack innovation? ummmm.... oh well, it's slashdot!

Re:Smart businessman

[TheDugong (701481)]

How are Google innovating?

Syndicated advertisements existed long before Google
Syndicated news existed long before Google
Search engines existed before Google
Web mail of various kinds existed long before Google
Online versions of desktop applications existed before Google had them, albeit in a more simple form (limited by the technology at the time) e.g. yahoo calendar, yahoo notepad etc - The concept was there though.
Deja news was bought by google and turned into google groups
Online photos had existed long before google acquired picasa
They bought google earth and online maps existed long before

In summary,Google seems to copy or acquire and occasionally improve rather than innovate.

They are very good at marketing though, much like MS really:

Google were very lucky with viral marketing early on.
MS was lucky with IBM and DOS.

Google, to their credit have not lost focus on their bread and butter - search.
MS have never lost their focus on OSes and Office Applications

MS were heros until they got too big.
Hmmm...

Note: I am not against Google, but like any business, they would rip anyone off if they could get away with its so I never really understand this worshiping of businesses some geeks like to engage in.

Major Suckage

[Anrego (830717)]

I sure hope google doesn`t change the name of gmail globally.

I personally use my gmail address for just about everything. It scares me to think about how long it would actually take to go around and change my email address on all the various services I use.

Re:

[wikinerd (809585)]

If this case was filled in America, I wouldn't be surprised if the judge reasoned that the "collective rights" of thousands of email users surpassed the rights of a single businessman, even if he started using the name 4 years earlier.

Re:Major Suckage

[Kristoph (242780)]

If this case was filed in America this 'single businessman' would probably be worth a discernible percentage of the NASDAQ.

]{

Re:Major Suckage

[arkhan_jg (618674)]

This has already happened to google in the UK for a similar trademark reason. Signing up for an account in the UK (you get a drop down box to select country) means you get a googlemail.com address rather than a gmail.com one. However, the site you goto for your email doesn't change - it's actually run under the google.com domain if you look at the address bar, but you are redirected there from both gmail.com and googlemail.com

Conveniently, you still receive [e-mail] email at your [e-mail] address, so despite the interface branding you can just use the gmail.com as your published address if you wish. I don't see them changing the gmail interface globally in those countries they don't need to.

Name change?

[Laukei (1099765)]

They call it Googlemail in Germany, and the UK, where the name Gmail was owned by another company. Pre-existing @gmail.com addresses registered by UK users were left as they were, while new signups changed to @googlemail.com.

G, Really?

[Seumas (6865)]

I'm sure laws like this will change over time. After all in an increasingly global market, you can't afford for your trademark to be diluted by having a different name in each of six different geographical regions. I'm sure that someday the WTO will have something arranged so that the guy producing the most benefit from the trademark will win. If you came up with the trademark (or a copyrighted idea) twenty years ago and are using it to generate a million dollars in business per year, you have to surrender it to the bigger company who comes along and is making a billion dollars per year off of it.

I would think that would fall into the whole imminent domain concept that they use to justify taking part of your property to build a strip mall or expand a road. Likewise, a billion dollars of business in your economy is more important to society than some piddly million dollar business using the same concept or trademark.

Sad, but . . . I think that might be in our future.

Re:G, Really?

[KarmaMB84 (743001)]

I don't know if letting large corporation drive smaller competitors out of business simply by taking their trademarks would be wise.

iMail?

[cashman73 (855518)]

I think I'm going to register iMail as a trademark,. . . and then sue Apple when they launch their new iPhone/iMac/iBook/iPod/iNausea email service! ;-)

Where?

[Raere (735369)]

So, does this only happen in Germany, or is Google banned from using Gmail internationally?

This doesn't actually affect anyone who uses Gmail

[santiago (42242)]

gmail.com and googlemail.com are the same place. If you get an address on either, you can receive mail on both and check your mail on both. All that happens is that based on which country you're in, you'll get redirected around and wind up with a slightly different logo in the top left. That's it.

Your Own Email

[p0tat03 (985078)]

And this is why I have my email hosted (along with web hosting) on my own domain name. First of all, it establishes a "non-generic" email address that's easy to remember ([e-mail] anyone?), instead of some weird randomuser127@hotmail or some other nonsense. Personally I recommend to everyone who is serious, especially contracting professionals, to get their own domain (or a family domain, or whatever) for email purposes. You never know if your current free email provider will one day start charging, or change their privacy policy, or in this case, be in danger of losing their domain name. For someone who is professionally connected, changing your email is an incredibly difficult task, and you stand to lose a lot of extremely valuable communication. I've been using my email address for years now, and I couldn't be happier. Since I host it, I get to connect to it however I damn well please. I can run the best webmail client on the server that I like, I can get at it with IMAP, POP, or any other method I see fit, and customize my spam blockers the way I like. It's truly miles above any of the free services out there, though Gmail probably has the best web client.

Where are the trolls?

[by Anonymous Coward]

I was waiting for some to suggest gnaaMail

Re:sort of makes me wish

[MyLongNickName (822545)]

[e-mail]

Re:sort of makes me wish

[by Anonymous Coward]

Does yours get spammed a lot?

I keep getting spam for new furniture and chair repair...
--
[e-mail]

Re:sort of makes me wish

[j0nkatz (315168)]

I get spammed a lot on mine from shampoo and soap sales.

[e-mail]

Re:sort of makes me wish

[by Anonymous Coward]

Let me help you with that typo: [e-mail] [mailto]. A very nice address it is, and I'd be happy to bid $0.75 if it is spam free.

Re:sort of makes me wish

[Errtu76 (776778)]

Now that's not very nice of you, mentioning [e-mail] [mailto] 's email address. Why, if i was [e-mail] [mailto] i would be very upset now. Imagine all the email harvesting bots that'll pick up [e-mail] [mailto] as a valid email address? Poor [e-mail] [mailto] and his inbox. Well, i won't participate in that, [e-mail] [mailto] !! Rest assured that i will never give away [e-mail] [mailto] on any website and i will say to anyone using or posting [e-mail] [mailto] that they should stop it, because [e-mail] [mailto] is getting enough spam as it is!

There. You're welcome.

Re:sort of makes me wish

[TheRaven64 (641858)]

Actually, if you had [e-mail], the automated email scrapers that people use to assemble these lists would probably assume the 'spam' had been added in as an anti-spam mechanism, and [e-mail] would end up getting all your spam...

Re:sort of makes me wish

[by Anonymous Coward]

It's good I never tried [e-mail]

Re:sort of makes me wish

[innocent_white_lamb (151825)]

I saw a guy a short while ago whose actual email included "NOSPAM", as in "[e-mail]". You have to include the NOSPAM in his address because that's really part of it. I thought it was a very clever idea; he told me that he gets very little spam.

Re:sort of makes me wish

[simm1701 (835424)]

I use [e-mail] as a spam harvester - I registered it on several mailing lists and forums and then plugged it directly into my spam assassin learning filters since everything to that address is guaranteed to be spam - since I did that the accuracy of spam assassin has certainly increased.

I suspect I could do a little more with auto blacklisting of mail servers and such things but haven't got around to it yet

I also find it rather amusing to give that address to companies over the phone when they can't give me a sensible reason for wanting my email address (ie its purely for "marketing purposes")

Re:Trademarking a letter is ridiculous

[Jugalator (259273)]

Does anyone else find it ridiculous that a company, whether it be Google or someone else, thinks they can basically own the rights to a letter in the alphabet.

In trademarks, they are never trademarking only parts of the name, but the full name. Google is not trademarking "G", but "Gmail". They can't trademark "mail", but again, it's the full sequence of letters that is.

Re:

[Jugalator (259273)]

Only if the apple store would compete in something like the IT or multimedia business.

A windows cleaner service won't be put in a legal minefield with Microsoft, for example.

Sometimes these lines are blurred, and sometimes companies intentionally try to cross these lines, but I doubt Apple would be able to get a lawsuit of an apple store through.

One example that became a real case in court was the Apple Corps vs Apple one, but in that case it was because both shared a field of business (music entertainment)

Re:Trademarking a letter is ridiculous

[jkabbe (631234)]

It is also true that Apple owns Apple. I find it pretty ridiculous that the world has lost a fruit to the corporate world, and that a place that sells apples, could find themselves sued if they have this fact in their business name.

Remember that trademarks are restricted to a line of business. Apple can be used to sell computers [apple.com], vacations [applevacations.com], and music without any problem (at least until the first Apple started selling music!). I doubt any of those companies would be successful in shutting down a grocery seller using the name apple (barring other factors that might confuse consumers).

Re:Close it down!

[gweihir (88907)]

If I were Google I would simply shut down Google.de and the German GMail and give the whole country the big old middle finger. I bet it would only take months for local public pressure to force g-mail to get out of the way of the real Google GMail.

That is not how it works. The guy owns the trademark and Google is infringing. There is also no appeal, because the case is obvious. The only way for Google to get this resolved is to convince the trademark-owner. Public opinion and/or pressure does not play any role here.

Re:

[ForumTroll (900233)]

If I were Google I would simply shut down Google.de and the German GMail and give the whole country the big old middle finger. I bet it would only take months for local public pressure to force g-mail to get out of the way of the real Google GMail.

Tactics like this don't work in the real world. That would be nothing short of a publicity nightmare for Google and would force people in other countries to seriously question whether they should be relying on such a service. Do you honestly think that the peo

Re:Close it down!

[Balthisar (649688)]

If I were Google I would simply shut down Google.de and the German GMail and give the whole country the big old middle finger. I bet it would only take months for local public pressure to force g-mail to get out of the way of the real Google GMail.

And if I were the entire automotive industry, I'd refuse to do business in California!

Re:Close it down!

[Tom (822)]

If I were Google I would simply shut down Google.de and the German GMail and give the whole country the big old middle finger. I bet it would only take months for local public pressure to force g-mail to get out of the way of the real Google GMail.

You, sir, have absolutely no idea what you're talking about.

For starters, Germany is the export world record holder. Its 80 million people are one of the most important markets on this planet. It is also one of the leading countries of the European Union, the largest and most profitable economy around.

You don't walk away from that market, unless you have an (economic) suicide wish and want to be fired by your shareholders.

Re:

[TWDsje (1095947)]

I think the whole reason this came about was because Google tried to offer him cash and he refused saying he's certain his business will do well. Google wouldn't go to court without first trying to see if they can get it for less than it would cost to sue. Sure it gives the guy publicity, but honestly there's going to be a point where he'd be stupid not to sell out. At the same time he sounds pretty set on never selling. Some may call it smart business, but I think he's just kidding himself.