Apr 29, 2010

Google’s got Groggle by the goolies, squeezing hard

Google threatens a tiny Australian start-up, alleging trademark infringement. It’s classic David versus Goliath... but does Google have a choice?

Stilgherrian — Technology writer and broadcaster


Technology writer and broadcaster

Google threatens a tiny Australian start-up, alleging trademark infringement. It’s classic David versus Goliath, reminding us far more eloquently than Senator Stephen Conroy’s ham-fisted attempts that under Google’s friendly exterior lies just another big corporation. But does Google have a choice? Google is the most valuable global brand, according to the latest BrandZ Top 100 issued yesterday. $US114 billion, up 14% on last year. Groggle, due to start operating in the next few months, is a Brisbane-based "location driven alcohol price comparison service". Punch in your postcode, find cheap booze. The name’s meaning seems obvious. But Google’s lawyers reckon the trademark Groggle "is substantially identical with and deceptively similar to the Google Trade Marks" and is "likely to mislead and deceive customers into believing that Groggle has a sponsorship, affiliation or approval with Google when this is not the case". Are they right? According to the Arts Law Centre of Australia (quoting IP Australia, who handles trademark registrations), a successful trademark infringement action must show that:
  • use of the infringing mark was use as a trade mark. That is, the infringing trademark was being used to indicate a connection, in the course of trade, between goods or services and the (infringing) trader or service provider; and
  • the infringing trademark is identical, substantially identical or deceptively similar to your trademark; and
  • the goods or services (or both) in relation to which the infringing trademark was used are the same or at least similar or closely related to the goods or services for which your trademark is registered.
For test one, that’s a yes. Groggle is trading. Test three is probably also a yes, thanks to Google’s comprehensive trademark registrations. Australian trademark 788234 grants the mark “GOOGLE” in class 9, which includes "computer software for creating indexes of information, web sites and other resources", and class 42, "computer services … providing access to proprietary collections of information; creating indexes of information, web sites and other resources" and more. Trademark 1049124 grants that same mark for class 16, "Books; manuals; notebooks; notepads; pens; greeting cards; stickers; decals; sticky notes", class 25, "Clothing; footwear; headgear" and class 35, "Dissemination of advertising to others via the Internet". Trademark 1130283 spreads the net even wider. So Google’s case comes down to test two. How similar is similar? No doubt Google has issued this demand as part of its continuing attempts to avoid brand genericide. If they don’t aggressively defend their trademark from potential infringement, they risk losing their exclusive right to use it. With the Oxford English Dictionary having already listed "google" as a verb in 2006, Google does risk joining the ranks of the generic, from Aspirin to Zipper. "Courts can and do take into account 'acquiescence' on the part of a trade mark owner," says Kimberlee Weatherall, who teaches intellectual property law at the University of Queensland. "Cadbury had trouble getting their purple trade mark in part because they’d acquiesced in Nestlé using the same purple for Violet Crumble. Even if Google like Groggle, if they allow that then the next person who comes along using something close has a better chance -- and gradually, Google’s mark becomes less distinctive." However Google’s demand seems designed to impose maximum pressure. The Groggle trademark was registered on September 28, 2009, and approved by IP Australia on February 4, 2010. The 90-day period to lodge an objection expires this coming Tuesday. Google has given Groggle just seven days to respond, by 4pm today. And Google wants more than just a change to Groggle’s business name and the internet domain name It wants a signed confession. It's demanding Groggle and its directors provide written acknowledgement that they’ve contravened sections 52 and 53 of the Trade Practices Act and committed the tort of passing off. Weatherall notes that Google’s letter of demand cites earlier cases, such as its win over Googlebay. “In a future dispute … there would be another paragraph stating that Groggle withdrew their mark and domain name and acknowledged that they had engaged in passing off and breach of section 52 of the TPA,” she told Crikey. "And settlement letters always ask for the world. This isn't unusual." Apart from genericide, Google is also worried about scams. While not commenting specifically on this case, a Google spokesperson told Crikey this morning that it wishes to maintain Google as a trusted brand, and reduce the risk of people mistaking a fraudulent website for a genuine Google site.

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10 thoughts on “Google’s got Groggle by the goolies, squeezing hard

  1. abarker

    I was sure we already had one

    That’s similar too!!!

  2. Socratease

    So far they seem to have left alone:

  3. Socratease

    ^ Oy, So easy to mistype that word.

  4. Tom McLoughlin

    google should buy it and license back to groggle

  5. Stilgherrian

    Socratease, I reckon the key words there might be “so far”. I shall make enquiries. And difficult to type? Yes. Curiously, both Renai LeMay of IT news agency Delimiter both mis-typed Groggle as “groogle” in our articles before correcting them. Not a good sign for Groggle.

    Tom McLoughlin, that would be a distinctly less nasty way for Google to operate, yes, but wouldn’t it open up a new kind of business? Thinking up names that Google doesn’t want out there, start setting up a website, then get Google to give you money! Easier than actually getting your website idea to fly on its own.

  6. CID

    A clear case of trademark infringement, and probably passing off under the TPA. Google will win in a heartbeat and I’ll cheer them on.

    Getting a little weary of all these “Big businesses want me to change my name” stories, mostly centered around Apple and Google. It’s easy to forget that both of these companies were started in garages by a couple of guys with a good idea.

    They’ve amassed fortunes by building a business around (amongst other things of course) a strong trademark which they have every right, and in fact an obligation to their shareholders, to protect most vigorously.

  7. AustralianNumerals

    Hmmm. I refer to Google in my number system that took me more than 20
    years to develop.

    Will Google let me refer to Google on my upcoming

    P.S. And yes, I have a trademark.

  8. CID

    @Australiannumerals… Do you refer to Google the company or googol the number? Either way, from a look at your link you’re not setting up any sort of search site using a name which is a clear play on the Google trademark.

  9. AustralianNumerals

    Hi CID, thanks for your comment. Yes “Googol” is the mathematical term for a 1 followed by 100 zeros. Google’s play on the maths term is based on Googol’s goal to classify the huge amount of content on the interweb. I seem to recall words that sound alike also get you into trouble Eg. the kid called Mike Rowe, who started ‘MikeRoweSoft’ware. Yet I have been working on the world’s 3rd major number system since the late 1980’s so I hope my Googol Maths Game will hopefully be worth the wait!

  10. Stilgherrian has reported that Google has asked IP Australia for an extension. I understand that an extension is usually routinely granted if the party is either “considering whether to lodge an opposition” or ‘”in negotiations”.

    @ AustralianNumerals: While I’m not a lawyer, just mentioning a trademark isn’t an infringement because you’re not attempting to trade under that mark. That’s the first of the three bullet-point tests listed in my article.

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