The power of a strong mark

The General Court recently also decided in third instance that you cannot just claim the well-known trademark GOOGLE for cars, despite the fact that Google had not registered its trademark for it.

European trademark law teaches that based on a registered trademark you can take action against an identical or similar trademark for the same products or for similar products (article 8(1) and (2) EUTMR). In addition, there is a separate article (8(5) EUTMR) about a ‘well-known trademark’. The proprietor of a trademark with a reputation may also act where the products are not similar, where the use of the later mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the earlier mark.

In 2018, a French individual filed two applications with EUIPO (the European Trademark Office) for the word mark “GOOGLE CAR” and the figurative mark “GC GOOGLE CAR” shown below. Both applications were for vehicles and means of transport in class 12.

Google filed opposition to both applications, relying on several earlier trademark registrations, which, however, did not cover products in Class 12, and also on the reputation of the GOOGLE trade mark (Article 8(5)). EUIPO’s Opposition Division awarded both oppositions based on GOOGLE’s reputation and notoriety.

The applicant subsequently appealed and the Fifth Board of Appeal (“the Appeals Division”) of EUIPO rejected the appeal in its entirety. The Appeals Division ruled that Google met all the necessary (and cumulative) conditions to invoke Section 8(5). First, the older mark GOOGLE had a solid reputation in the information technology field, mainly because it refers to a search engine that is used every day. In addition, the marks applied for showed a high degree of similarity. Finally, the opponent was able to prove the “link” in the minds of the relevant consumers and make it clear that the contested brands could take unfair advantage of the reputation of its brands. Based on all this, the Board of Appeal reached the same conclusion as the Opposition Division and therefore upheld the earlier decision.

Subsequently, a further appeal was lodged, now before the General Court of the EU, which dismissed the appeal in its entirety. The General Court followed the reasoning of the Appeals Division.

The applicant argued solely that the EUIPO Appeals Division had failed in its assessment of Article 8-5, in particular with regard to an incorrect assessment of the existence of a link between the marks in question and an incorrect assessment of the risk of unfair benefit. The General Court came to the following considerations.

Comparison of the signs

In the judgment on the figurative mark “GC GOOGLE CAR”, the General Court first assessed the similarity of the signs. Applicant had argued that consumers pay more attention to the beginning of word marks, which has indeed been confirmed several times in case law. Therefore, the word element “GOOGLE” in the figurative mark would be negligible, based on its size and position. According to the applicant, the Appeals Division has therefore not correctly assessed the dominant element of the figurative mark, namely the stylized “GC”.

However, the General Court agreed with the reasoning of the Appeals Division and concluded that the Appeals Division was right to find that the word element ‘GOOGLE’ does not go unnoticed in the figurative mark. The signs therefore have an average visual similarity.

The phonetic similarity was not disputed. While the Appeals Division has stated that in conceptual terms the word “Google” as such has no specific meaning, it did add that the term is generally associated with the opposing party’s Internet search engine. The Appeals Division therefore correctly concluded that there was a high degree of conceptual similarity.

Link

Applicant argued that Google’s reputation is for search engine services only. Therefore, consumers would not understand the term “Google” in relation to vehicles. They could do that for the “WAYMO” mark (owned by Google) for the automotive sector. Moreover, the business ‘focus’ of the parties is far apart.

The General Court did not agree with these arguments and ruled that consumers will clearly recognize the term “Google” and assume that the vehicles and means of transport contain the technologies and tools of this company. The existence of the separate “WAYMO” mark for Google’s self-driving cars does not alter the arguments regarding a relationship with the earlier brands.

Unfair advantage

The main argument in defense of the contested applications was that the existence of Google’s trademark “WAYMO”, covering “cars” in Class 12, would prevent the applicant from taking an unfair advantage of the GOOGLE trademark or be detrimental to it. However, the General Court held that the risk of free-riding was obvious in the present case, since one of the three elements making up the sign of the mark applied for is identical to the earlier mark, that enjoys a very solid reputation. In view of the similarities between the conflicting marks (in particular as regards the contested word mark “GOOGLE CAR”) and the link that the relevant public will make between them, the Appeals Division was not wrong to consider that the use of the marks applied for constitutes a risk of taking unfair advantage of the reputation of the earlier mark.

The conclusion of this case is that you cannot simply benefit from the reputation of another’s mark. GOOGLE is one of the best-known trademarks in the world, and an attempt to piggyback on that fame has now failed in three instances.