Google locked in legal rumbles over Gmail in Europe

Company loses initial attempt to gain control over Gmail trademark in Switzerland, fights alleged cybersquatter in Poland.
Written by Anne Broache, Contributor
Google this week lost an initial attempt to gain sole control over the Gmail trademark in Switzerland, but the search giant said the ruling would not force it to rename its e-mail service there.

The Zurich Commercial Court on Monday dismissed Google's arguments in a lawsuit challenging a trademark registered by German venture capitalist Daniel Giersch, who runs an electronic postal delivery business in Germany and Switzerland that goes by the name G-mail (short for "Giersch mail").

The Mountain View, Calif.-based corporation had argued that Giersch had registered the name in bad faith, but the Swiss court disagreed. Google plans to file an appeal.

The outcome does not require Google to abandon use of Gmail for its Swiss service, Google representatives said. Both Giersch and Google received Swiss rights to the name in 2005, although Giersch applied for his trademark several months before Google did, and both remain in possession of those marks.

That's because Swiss trademark officials do not check to see whether a name has been registered before they award a trademark; they merely check to see whether it meets their standards on its own, said Rose Hagan, a senior trademark counsel for Google. Then they leave it up to the parties to file challenges if they wish, and Google chose to file such a challenge.

The ruling "has no affect whatsoever on our ability to use the mark, so basically we're just back to the status quo," Hagan said in a telephone interview Friday.

Giersch, however, viewed the ruling as another victory. He already prevailed last year in a suit lodged by Google against his German trademark, which dates back to 2000. After that loss, Google agreed to change the name of its mail service to Google Mail. (The company also renamed its service in the United Kingdom to Google Mail in 2005 to stave off a trademark battle there.)

"The amount of victories against Google speaks a clear language of what is right and what is not," Giersch, who has also registered the Gmail name in Norway and Monaco, said in an e-mail interview.

Polish poets or cybersquatters?
Meanwhile, a Google representative confirmed that the company is in the midst of a legal challenge against the Polish registrant of Gmail.pl, as previously reported by Agence-France Presse. Google insists the site belongs to a "cybersquatter" who acquired the domain name last November and at one point posted a for-sale sign on it.

Google spokesman Ricardo Reyes said the company in January began proceedings in a Polish arbitration body to determine the domain name's rightful owner. Around that time, Gmail.pl began housing a blog for a Polish organization that calls itself Grupa Mlodych Artystow i Literatow (GMAiL), or Group of Young Artists and Writers.

"The owner of the domain name today is the same as it was back in November--the same guy who tried to put it for sale, the same guy who tried to auction it off," Reyes said. "So we strongly believe that this creation of the Polish poets' Web page is a sham."

Attempts by CNET News.com to contact the Polish group on Friday were unsuccessful. But GMAiL member Izabela Krawczyk defended the group's rights to the domain name in a previous interview with the AFP.

"We bought the name legally, with our own money," she said. "Nobody gave it to us for free. We refuse to be deprived of what we consider is our property."

The latest legal developments arrive just weeks after a European Union trademark office denied Google the rights to register the Gmail name across all of its member countries. Company representatives maintain that the EU ruling has no effect on its use of the trademark Gmail in countries other than Germany and the U.K. and that user experiences will be the same regardless of the service's name.

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