A case that emerged recently has reminded us of the significance of understanding the extent to which safeguard is provided to “well-known” marks under EU trademark law. The mark involved in this particular case was undoubtedly one of the most renowned brands across the globe: Google.
What’s the background to this case?
In 2018, a French individual filed trademark applications with EUIPO (the European Trademark Office) for “Google Car” (word mark) and “GC: Google Car” (figurative) in class 12 of the Nice Classification, which includes vehicles and related products.
Predictably, Google LLC opposed these trademark applications because they had their own “Google” trademarks in different classes, such as 9, 35, 38, and 42. Despite the anticipated trademark application rejection by the examiner and EUIPO’s Board of Appeal, the French individual subsequently chose to appeal the decision, and the case eventually went to the General Court of the Court of Justice of the European Union (CJEU), which issued its ruling at the beginning of February.
Despite the fact that the trademarks in question covered distinct products and services, the French individual argued that although the marks were similar, the examiner and the Board of Appeal had not shown that there was a legitimate likelihood of confusion.
The EU General Court rendered two judgments (T-568/21 and T-569/21 – Zoubier Harbaoui v EUIPO) on the 1st of February 2023, concerning the two trademark oppositions filed by Google.
Google successfully opposed both applications under Article 8(5) EUTMR, relying on 13 earlier EUTMs, including its EU word mark No. 1104306 “GOOGLE” filed in 1999, covering goods and services in various classes.
The EUIPO Opposition Division upheld the opposition based on Google’s strong reputation for all the contested goods in class 12. The French individual appealed to the Fifth Board of Appeal of EUIPO, which dismissed it in its entirety, finding that Google met all the necessary conditions to rely on Article 8(5) EUTMR.
Google’s mark has an extremely strong reputation in information technology as its internet search engine is an everyday research tool. The signs at issue had an average degree of similarity, and there was a link between the two marks. Consequently, the use of the mark applied for was likely to take unfair advantage of the reputation of the Google’s mark due to the strength of its reputation and the similarity of the marks.
The applicant brought an action for annulment before the General Court, which was dismissed in its entirety, upholding the Board’s reasoning.
Comparing the signs
The Court found that the Board correctly assessed the similarity of the signs, which were visually and conceptually similar, and that consumers would recognise the term “Google” and assume that the vehicles and means of transport incorporate the company’s technologies and tools.
The Court also upheld the Board’s judgement regarding the use of the contested marks, stating that the similarities between the marks at issue and the link the relevant public will establish between those marks would risk giving the applicant taking unfair advantage of Google’s reputation.
The Court’s assessment of both the “link” in the consumers’ minds and the risk of unfair advantage was straightforward in this case, given the solid reputation of Google’s trademark and the similarity between the marks at issue.
Thankfully, trademark law is very clear in its protection of the reputation of well-known marks in order to prevent companies and individuals from benefiting from their notoriety. This not only promotes “fairness” in these matters, but also protects companies’ investments in the promotion and protection of their own trademarks.
In conclusion, the EU General Court’s decision to uphold Google’s opposition against the “GOOGLE CAR” and “GC GOOGLE CAR” trademark applications highlights that companies/individuals cannot simply benefit from the reputation of another’s mark. This also underlines the importance of protecting well-known marks and preventing unfair advantage in the market. The Court’s assessment of the similarity between the marks and the potential for consumers to associate them with Google’s established reputation reinforces the significance of trademark law in safeguarding companies’ investments in their branding and reputation.
This ruling sets a precedent for future cases where the use of established marks are challenged, emphasising the need to consider the potential impact on the market and the rights of the trademark owner.
This ruling provides a valuable reminder of the extensive scope of protection afforded to well-known trademarks. 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. Such protection extends beyond the categories of goods and services specified in the trademark registration and can supersede any apparent visual or conceptual dissimilarities when it comes to figurative trademarks.
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As an IP Counsel, I specialise in legal brand protection and intellectual property law. I am a qualified Attorney at law and advise clients on all kinds of IP matters, with a particular focus on trademark management and strategy, competition law and innovation as well as private and tech law.
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