Techcrunch recently reported that Google bought the trademark rights to Gmail from the German entrepreneur Daniel Giersch, who had registered the ‘G-mail’ trademark (short for Giersch mail) for his physical and electronic mail service in Germany in 2000.
In my blog post in 2008: Google loses Gmail trade mark case, I mentioned that this is a salutary lesson about the importance of registering rights to a brand before launching it. Although Google had appealed that decision they lost the case. Giersch reportedly turned down an offer to sell his trade mark rights to Google in 2006 for $250,000, so he presumably received a higher offer to agree to transfer the rights.
Google has clashed with other Gmail’s before, in fact 2 years ago, it finally settled a dispute with Independent International Investment Research in the UK, saving Brits 5 extra characters each time they type their email address in the switch from @googlemail.com to @gmail.com.
Missing a registration in a crucial jurisdiction can mean litigation for the best part of a decade. Yet a trade mark search can involve a turnaround of less than 24 hours.
What’s important for small business owners to take on board is that they would not have the same ability as the likes of Google to buy their way out of trouble. So, they should do their due diligence before proceeding to use a name. When you apply for a European trade mark, an opposition from a single country is enough to block the application’s success. This costs valuable time and money, which is far better spent checking the landscape before launch.