A trademark dispute has compelled Google to rebrand its free Gmail webmail service in the United Kingdom (UK). It has dropped the "Gmail" tag from the logo and new account addresses of its service yielding to the demands of a small British company that claims the US giant has infringed its trademark.
Google replaced "Gmail" with Googlemail" after negotiations with London-based Independent International Investment Research (IIIR) over the rights to the name came to a nought. IIIR, which has a market value of around £3 million ($5.3 billion) and specialises in providing research on international companies and currencies for clients including investment banks, hailed the name change as a win.
This is the second time Google has voluntarily withdrawn the "Gmail" name in a European country it had to drop the trademark in Germany in June this year following a similar dispute there. The German case is still before the courts. There a Hamburg-based company had registered the term "G-Mail" five years ago, to advertise what it described as a "hybrid mail service", bridging the gap between electronic and hardcopy mail.
IIIR had claimed that the Google service, launched in the UK in April 2004, was confusing to would-be clients of its own "G-mail" service, the mail function of its online information tool Pronet. That service, mainly used by investors in currency derivatives, has been in operation since 2002. IIIR had registered the "Gmail" trademark with Ohim, the European Union's trademark office, and with the US Patent and Trademark Office.
Google has insisted that IIIR's claims are "tenuous", and that the services are different. Although Google plans to pursue the matter further in the courts and with the European trademark office, Google said in a message to UK customers on its website that the issue could take years to resolve.
The name change, as of now, applies only to UK users. New addresses created by UK users would end with "googlemail.com." Existing users will be redirected from the "gmail.com" site to a new page with the Google Mail logo. Google told its UK users that while holders of existing accounts will retain the "Gmail" address until the trademark issue was settled by the courts or further negotiation, it could not guarantee that they would be able to hang on to the "gmail" address forever.
"This company has been very focused on a monetary settlement," Google said in a separate statement. "We went back and forth trying to settle on reasonable terms, but the sums of money this company is demanding are exorbitant."
IIIR's chairman and chief executive Shane Smith said that IIIR had written to Google when its Gmail service was first announced and the company should have voluntarily desisted from using the mark then. "That option has now gone," he said. "We want either a sensible offer and we'll sell the rights, or they stop using the mark and pay us some sort of compensation for the fact we can no longer use it ourselves."
"Google asked us at one point what it would cost to make the problem go away. We had an independent valuation commission assess what the value of the trademark actually is, but we couldn't reach a settlement," Smith told Reuters. The IIR-commissioned assessment pegged the value of the Gmail name at a minimum of £25 million ($43.64 million), but Google descibed it as "exorbitant".
Smith countered this saying, " We see substantial irony in this complaint from a company whose business model, based as it is on the auctioning of advertising space, is explicitly about getting paid the highest possible fee levels for its web property."
"Our stock market value is probably the weekly coffee bill at Google," Smith was quoted as saying in the Independent. "We are a gnat biting the ankle of a giant but that shouldn't stop us defending the intellectual property rights of our shareholders." Companies like Citigroup, Deutsche Bank and Bank of America are among the British firm's clients.
Smith said in an open letter to Gmail UK users, "We have no desire to disrupt your use of Google's service, but we do have a duty to shareholders to protect the company's assets. We are defending those rights, in the same way as Google very aggressively defends its own trademarks around the world upon which, if you were a shareholder of either company, you would insist."
IIIR had said in an earlier statement that, although it was not anticipated that the Gmail trade mark would become an intellectual property asset licensable in its own right, it has nonetheless become such an asset and under the circumstances it is the responsibility of the directors to protect this asset from unauthorised use, or alternatively to obtain fair value through a sale or licensing arrangement.
Google's email account comes with just over 2.6 gigabytes of storage space and allows users to view their email with all messages on a single subject linked together. The service is still technically in the trial phase and in most countries is available on an invitation-only basis.
