Google is locked in a trademark battle in Germany for the right to use the name Gmail for its mail service.
For now, Google email is called “Google Mail” in Germany, and all Germans have an @googlemail.com email address. The reason: a 14-year old company called G-mail, short for Giersch mail, run by 32-year old Daniel Girsch, and the trademark he registered for it in 2000.
The story at CNet is worth reading in its entirety, which seems to indicate Google will have a real tough time proving anyting. G-mail is a long-standing, albeit small company with a registered trademark. Giersch seeks to stop Google from using the Gmail name entirely in Germany. See, if you email a German user to @gmail.com instead of @googlemail.com, the mail will go through, which Giersch contends is still a violation. Interestingly, Google could have bought the G-mail name from Giersch, but he decided to refuse their money because of Google’s arrogance.
More interestingly is G-mail’s business. In order to speed up physical mail delivery, G-mail scans mail at one end, electronically transmits it, prints it out at the destination and hand-delivers it. It is a really great idea for the mail, since transporting all that mail in trucks, trains and planes around the world does seem silly when dealing with just sheets of paper.
I don’t see how Google could have any cause for taking away Giersch’s trademark. They just need to make him a public apology and hand him a million dollars.
The appeals court will weigh not only whether Google should continue to be barred from using the Gmail name for its German service, but also, at Giersch’s lawyers’ request, whether it should be paying fines for alleged defiance of the district court’s injunction.
Specifically, Giersch and his lawyers are concerned that any German user with a googlemail.com alias can still seamlessly receive e-mail addressed to a gmail.com alias-a situation that Google confirms. For instance, a German user who registers the address “johndoe@googlemail.com” can also receive mail addressed to “johndoe@gmail.com.” The question that remains is whether, as Giersch and his attorney Sebastian Eble claim, this represents “a severe infringement of the injunction.”
Although Giersch vigorously disputes it, the matter has already been settled in Google’s eyes. The court has already ruled that Google is “not responsible for people sending mail to @gmail.com’ when they should be sending it to @googlemail.com,'” the company representative said, adding that even if people send e-mail to gmail.com suffixes, the user can only reply from a googlemail.com suffix.
If Google is, in fact, using the “Gmail” term internally, as a sort of “relay” service, then it may not be running afoul of the injunction, said Laura Heymann, a trademark-law professor at the College of William and Mary in Virginia.
At least one U.S. court “has concluded that that kind of internal use does not qualify as trademark use under U.S. trademark law and so therefore is not prohibited; and at least one German court has held similarly with respect to the use of trademarks as metatag,” she said in an e-mail interview. “It would be interesting to see if the German court here adopts similar reasoning.”
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Nathan Weinberg writes the popular InsideGoogle blog, offering the latest news and insights about Google and search engines.
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