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

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.

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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 groggle.com.au. 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.