Google Facing New Gmail IP Scrap

by Glen Shapiro, LawAndTax-News.com, New York

13 September 2005

It emerged this week that Google is facing a new legal battle over the ownership of the Gmail trademark.

In May 2002, a subsidiary of UK-based Independent International Investment Research PLC launched a new version of its “Pronet” suite of products including “G-Mail™ web based email”.

On 1 April 2004 Google announced the launch of its e-mail service, which it branded as “GMail™”.

Action, on behalf of IIR and its operating companies, was then taken to protect their intellectual property through the filing of applications to register the trade mark, the filing of oppositions to Google’s CTM applications, and also through notification to Google that its use of the trade mark was inconsistent with IIR's intellectual property rights.

Additionally, following a request from Google, the Group also commissioned an independent valuation report of the trade mark.

In a statement released on Monday, IIR announced that:

"The directors...came to the view that Google’s greater marketing reach and wide promotion of the Gmail brand had already made it impractical for the Group to continue to use its trade mark in the long term. Subsequent evidence of confusion in the marketplace bears out this conclusion."

"Correspondence and negotiations with Google have now been taking place for some 15 months, but agreement on how to resolve this situation has not been reached, although proposals for settlement have been made both by the Group and Google."

"Although Google has not informed us directly, the Board learned on 22 August that discussions were at an end. On 23 August Google announced its plans to launch “Google Talk”. Subscribers are required to have a Gmail account. The Board anticipates that Google may now change the name of Gmail to establish some uniformity in branding across product lines."

Although the valuation report estimated that a royalty claim against Google for its use of the Gmail trademark could be worth between £25 million and £34 million, IIR has stated that it would be prepared to settle the matter for a lesser amount.

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