Google drops Gmail name after 18-month trademark dispute

LONDON - Google has had to change the name of its Gmail service to Googlemail.com following a trademark dispute with London-based Independent International Investment Research.

From today, users signing up to Google's email service will get an @googlemail.com address. However those that have already signed up will keep their @gmail.com addresses.

The decision follows an 18-month dispute between the US search engine, which has a stock market value of $54.4bn (£31.3bn), and the UK financial research company with a market value of just £3.23m.

In September, Google had to switch its service in Germany to the Googlemail name after a court ruled that a Hamburg-based company had already registered the Gmail name.

IIIR has been using the "G-Mail" name for its Pronet subsidiary's web-based email product since May 2002, two years before Google launched its Gmail web-based service.

Google apparently made settlement offers to IIIR, but none that were deemed reasonable, according to Shane Smith, chairman and chief executive of IIIR.

Nigel Jones, senior European counsel for Google, said that the company decided to change the name to avoid any confusion to Google users. Google's service is free and comes with just over 2.6 gigabytes of storage space.

IIIR is believed to still be looking into its legal options after talks between the companies broke down months ago. With existing Gmail customers able to keep their addresses, IIIR may also continue to argue that the Google service has infringed on the trademark of its own G-Mail service in some 80 countries.

According to Mike Lynd, partner at patent and trademark attorneys, Marks & Clerk, Google's best bet is now to rebrand in Europe as Googlemail.

"While Google has successfully built the Gmail brand in the mind of consumers, it will now be forced, as a result of inadequate IP searching and protection, either to give up, or to substantially curb its use, of its brand.

"My advice to Google would be to cut its losses now and to look at rebranding to Googlemail within the whole of Europe. For other companies, it is a salutary lesson in how not to adopt a new trademark," he said.

If you have an opinion on this or any other issue raised on Brand Republic, join the debate in the Forum.

You have

[DAYS_LEFT] Days left

of your free trial

Subscribe now

Become a member of Campaign from just £46 a quarter

Get the very latest news and insight from Campaign with unrestricted access to campaignlive.co.uk ,plus get exclusive discounts to Campaign events

Become a member

Looking for a new job?

Get the latest creative jobs in advertising, media, marketing and digital delivered directly to your inbox each day.

Create an Alert Now
Share

1 Why creative people have lost their way

What better way to kick off Campaign's relaunch than with another think piece on the current failings of our industry, written by an embittered, pretentious creative who misses "the way things used to be"...

Share

1 Job description: Digital marketing executive

Digital marketing executives oversee the online marketing strategy for their organisation. They plan and execute digital (including email) marketing campaigns and design, maintain and supply content for the organisation's website(s).