A UK company is considering filing a lawsuit against Google over its use of the Gmail name.
After 15 months of negotiations with Google, Independent International Investment Research has been unable to reach a settlement with the search giant on use of the trademark and may sue, according to Shane Smith, chief executive of Independent II Research.
Independent II Research, a provider of investment research, has been using the "G-Mail" name for its Pronet subsidiary's Web-based email product since May 2002, Smith said. That was two years before Google launched its Gmail web-based email service in April 2004. The "G" in Independent II Research's product name stands for "Graphiti", an integrated text and graphics feature, he said.
Smith said: "We have applied for registration as a trademark, and we believe we have priority over Google in that application process. We think Google is a good company with good products but we have a pre-existing right to this name — and we have to. On the grounds of it [being] in the interest of our shareholders, we have to defend that right."
Independent II Research may file a lawsuit against Google in collaboration with a German company that has a similar complaint against the use of the Gmail name, he said. A court temporarily ordered Google to change the name of its Gmail product in Germany, after Google was sued by Giersch Ventures. The product is now called "Google Mail" in Germany, pending the outcome of that trial.
Google has made settlement offers to Independent II Research but none that were deemed reasonable, Smith said.
Google did not return an email seeking comment. (Google representatives have instituted a policy of not talking with CNET News.com reporters until July 2006 in response to privacy issues raised by a previous story.)
The problem is just one of several legal headaches for Google. Last week, the company settled a lawsuit with car insurance firmr Geico for an undisclosed amount. Geico had complained that Google was responsible for trademark infringement for displaying advertising paid for by Geico's rivals when Internet users searched for the word "Geico" on Google's search engine. The judge ruled late last year and issued a written ruling last month that said Geico had established a likelihood that the practice could cause confusion for Web surfers.
On Tuesday, a Washington state judge ruled that a former Microsoft executive could do very limited work for Google in China in a lawsuit filed by Microsoft against the search giant. Kai-Fu Lee can begin recruiting staff for a Google development centre in China, rather than waiting until after a January trial but he can't do other management functions or work on computer search or speech-recognition technologies, the ruling said.
Talkback
Since the disputed name is not “registered”, the “prior use” of it will be the deciding factor. If a name is not “registered” then the Common Law remedy of “Passing off” is still available to the prior user of the name. The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of some body. In other words a man is not to sell his goods or services under the pretence that they are those of another person. The modern tort of passing off has five elements i.e. (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. The trademark is essentially adopted to advertise ones product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing off action, the plaintiffs right is against the conduct of the defendant, which leads to or is intended or calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation, which other has established for himself in a particular trade or business. The action is regarded as an action for deceit. Salmond & Heuston in Law of Torts (Twentieth Edition, at p.395) call this form of injury as injurious falsehood and state: - The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off ones goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves, which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition, which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff.