A German court has ruled that entrepreneur Daniel Giersch holds the “Gmail” trademark in that country, ending Google’s legal battle for the name.
A young German entrepreneur won a legal battle against internet behemoth Google on the use of its “Gmail” brand for free electronic mail service.
Corporate giant will not be allowed to appeal…
The company says it will still provide Web e-mail in Germany, even though a German court ruled that another firm owns the Gmail trademark in the country.
The Hanseatic Higher Regional Court in the northern city of Hamburg ruled that Google may not use the name in Germany, upholding 33-year-old businessman Daniel Giersch’s claim to have a copyright on the name for an email service he has been developing for seven years.
In doing so, Google infringed [Giersch’s] trademark that had been previously been registered, said the judgment.
Sebastian Eble, Giersch’s lawyer, said that the ruling was a victory for the many “Davids fighting Googliaths,” as the multi-billion dollar company would not be allowed to continue the case in Germany.
“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,” said Eble, from the office of Preu Bohling & Associates.
Giersch says he has used the name “G-Mail” since 2000, four years before the US giant launched its “Gmail” product.
Google launched its Gmail service on April 1, 2004. Giersch has been running his own G mail — “the best way to go postal,” as German news publication Heise Online translates the brand’s tag line — service since 2000.
Google owns the “Gmail” trademark in over 60 countries worldwide and we have used it ever since we launched the service in 2004, Google said in an e-mailed statement.
Arnd Haller, Google’s senior legal counsel, said that the company regretted the German court’s decision, but claimed that it would not affect Google’s ability to provide web email to German users.
“Google owns the Gmail trademark in over 60 countries worldwide and we have used it ever since we launched the service in 2004,” he said.
Our German users will continue to use “Google Mail” and enjoy the same experience as users of Gmail worldwide.
The battle for the trademark has dragged on for three years and has been fought in a number of State jurisdictions.
Eble said Google had subjected his client to a costly three-year legal marathon that is still ongoing because the company has suits pending against him in Spain, Portugal and Switzerland.
Google has filed lawsuits against Giersch in Spain, Portugal and Switzerland.
But a court in Switzerland threw out Google’s case and now Giersch will file a suit to prohibit Google from using the name in that country.
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.
Giersch said that he secured the G-Mail name in 2000, four years before Google, but denied Google’s claims that he only registered it to gain financially by selling it on.
“I have made it clear since the beginning that I will never sell the name,” Giersch said. "It is my sole intention to realize my idea for a hybrid mail system and I am absolutely convinced of its success. Neither G-Mail nor myself are for sale.”
Google lost a similar trademark case to U.K.-based financial services firm Independent International Investment Research (IIR) in 2005. IIR subsidiary Pronet Analytics.com Limited has been offering a Gmail service to currency investors since 2002, according to U.K.-based IT publication The Register.
IIR prepared a valuation report in 2004 for the Gmail brand. It concluded the name was worth $48 million to $64 million at the time. According to a 2005 BBC report, Google’s senior European counsel Nigel Jones characterized IIR’s price as “exorbitant.”
Google has reportedly been negotiating or litigating for rights to the Gmail trademark and/or for rights to the associated domain name in China, Poland, Portugal, Monaco, Norway, Spain, and Switzerland.
A Google spokesperson was not immediately able to confirm this list.
Gmail does not appear to be an active domain in a number of countries including Barbados (gmail.bb), Greenland (gmail.gl), and Moldova (gmail.md).
Google’s Gmail was an invitation-only service until February 2007.
After the Google lawsuits have ended, Giersch hopes to focus his energies into the further development of “G-mail,” which he touts as a new “standard of communication on the Internet.”
My hybrid mail system “G-mail” is an ingenious blend of innovative and well-tried communications solutions, he said. “It is subject to the principles of the sanctity of the post.
Google, on the other hand, scans the content of e-mails to blend in adverts. Criticism about this from data protectors that Google has to deal with harms my business. My employees and I are involved in mix-ups on an almost daily basis.”
The G-Mail trademark has already been upheld in action through the Austrian courts. Giersch said that each individual court process has required five-figure amounts to fight.