OT: Google drops Gmail address in UK

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Source : http://news.bbc.co.uk/2/hi/business/4354954.stm

Google drops Gmail address in UK

Gmail, the free e-mail service run by internet search giant Google,
will change its name for new UK users.
Following a trademark dispute the mail account will be renamed

London-based Independent International Investment Research says it
started using the Gmail name for a web-mail application two years
before Google.

Current UK users of Google's service will be unaffected, but a
separate trademark dispute forced Google to drop the Gmail name in
Germany in May.

Talks between both companies broke down several months ago, after they
failed to agree a financial settlement.

Gmail v Googlemail

Google's Gmail e-mail account is free, comes with just over 2.6
Gigabyte of storage space and allows users to view their e-mail with
all messages on a single subject linked together.

In return, users have to live with the fact that Google's search
engine analyses their e-mail and places small context-driven internet
links next to their mail, some of which are paid-for adverts.

The service, launched on 1 April 2004, is officially still in "beta",
a technical term to describe the test phase of a product.

In most countries Gmail accounts are available on an invitation-only
basis, although existing Gmail users have been offered as many as 100
invitations to distribute to friends and family.

From Wednesday morning, new users in the UK signing up with the Google
service will be given an e-mail address that ends with

German users with this address report that e-mail sent to their
username but ending with "@gmail.com" instead of "@googlemail.com"
will still arrive at its destination.

Trademark dispute

The dispute between Google and Independent International Investment
Research (IIIR) centres on who owns the Gmail trademark.

The London-based research firm, with a £3.24m ($5.6m) stockmarket
value, says it has used the name "Gmail" since 2002 to describe the
mail function of its online information tool Pronet, mainly used by
investors in currency derivatives.

Companies like Citigroup, Deutsche Bank and Bank of America are among
the British firm's clients.

After Google announced its Gmail plans in spring 2004, IIIR rushed to
register the Gmail trademark with Ohim, the European Union's trademark
office, and the US Patent and Trademark Office.

Google, with a stockmarket valuation of $54.4bn (£31.1bn), disputes
the trademark claim. IIIR "has failed to provide evidence of its
common law rights to the name", said Nigel Jones, Google's senior
European counsel.

But to "avoid any distraction to Google and our users", the company
would switch to the Googlemail brand in the UK while the dispute was
being resolved at the various trademark offices.

The case could still go to court, though. IIIR's chairman and chief
executive Shane Smith told BBC News that Google broke off negotiations
"unilaterally", and that his company was now investigating its legal

"For our clients, Gmail is the most prominent function of the Pronet
tool, it's a big green button that says 'Gmail'," said Mr Smith.

Google's rival Gmail service had created confusion and uncertainty
amid potential clients of his firm, said Mr Smith.

In Germany, Google is already in the courts over the Gmail name. On 13
September the US search firm lost an appeal against a court injunction
that stops Google from using the Gmail brand in Germany.

There a Hamburg-based company had registered the term "G-Mail" to
advertise what it describes as a "hybrid mail service", bridging the
gap between electronic and hardcopy mail.

'Exorbitant sum'

The breakdown of negotiations between Google and IIIR ultimately comes
down to money and a disagreement about the value of the Gmail

IIIR boss Shane Smith points to an independent valuation of the brand,
compiled in December 2004 by Valuation Consulting Limited, which
suggests a value of between $48m and $64m, although he says his
company would have settled for much less.

Google's Nigel Jones, however, says IIIR demanded an "exorbitant sum"
in exchange for dropping its claim on the Gmail trademark.

Both sides are cagey about how much was at stake, but BBC News
understands that a settlement worth millions of dollars had been

For now, though, Google will not be able to promote one of its most
high-profile brands in two of Europe's largest economies.

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Re: OT: Google drops Gmail address in UK

Paul wrote:

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Had 3IR already TM'd it in the UK then?


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Does anybody on Googles staff have a clue about intellectual property
rights at all?



Re: OT: Google drops Gmail address in UK

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I am not quite sure, but I believe they didn't have to. Unless UK law is
different here. IIRC if you are able to prove you have used the name before
and it was known to general public before, you are on the winning grounds.
Of course if you have TM'd the name before you will be spared the need to
prove your rights.

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Re: OT: Google drops Gmail address in UK

Borek wrote:
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Yeah, its the same...

I was pointing at a giant hole in the reporting rather than the legal

They say that 3IR rush to get E and $ tm's *after* they'd heard about
Googly-mail, without even mentioning the UK tm. To me, this implies i3R
either already have the UK tm, but this doesn't matter, or i3R are being
greedy and reactionary, trying to cut in on Googly. Either way it
illustrates BBCs bias towards Googly.

(BTW Googly have filed for UK tm of gmail - before anyone else)



Re: OT: Google drops Gmail address in UK

Paul wrote:

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That will need some adjustment to Google Talk client too, as that one
doesn't accept anything else than gmail addresses..

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