The significance of comprehending the scope of protection given to marks with a reputation in EU law was brought up again in a recent case. The trademark at issue in this case is unquestionably one of the most well-known brands in the world: GOOGLE. This judgment again confirms that well-known trademarks enjoy a much broader scope of protection.
A. Subject Matter of Dispute/Background
On 9 January 2019, Mr. Zoubier Harbaoui, a French citizen, sought to register the EU Trademark Application “GC Google Car” (word/device mark) to the European Union Intellectual Property Office (‘EUIPO’). The application was filed for ‘vehicles and conveyances’ in Class 12. The application was published on 21 February 2019. On 20 May 2019, Google LLC, based in the USA, filed an opposition.
Earlier EU Trademark No.
Contested EU Trademark Application No. 18007095
Google LLC filed an opposition against Mr. Zoubier Harbaoui. The opposition was based on EUTM registration No. 1104306 “GOOGLE” (word mark) and 12 other earlier EUTMs of the company containing the word Google (e.g. Google Chrome, Google Lens, Google Duo, Google Jump etc.). The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of European Union Trade Mark Regulation (EUTMR).
According to the opponent, Google LLC, the earlier trademark has a reputation in the European Union, therefore the grounds for refusal of Article 8(5) EUTMR are applicable to the case. In support of this argument, the opponent submitted documents showing how well-known the company is in the relevant market and how valuable the ‘GOOGLE’ trademark is. The mark is recognized as a search engine, but also as a mapping or a translation application/software; it has also been demonstrated that the opponent is at the forefront of technological innovation and has been actively involved in the research in the field of self-driving vehicles. The opposition division agreed that these arguments were valid and ‘GOOGLE’ is well-known worldwide.
The signs “GOOGLE” and “GC Google Car” have been found similar. The relevant public will establish a link between the signs, in other words “GOOGLE” will be perceived as the main badge of origin of the respective goods and services in both signs. The contested sign is likely to harm the earlier reputed mark in the sense that its capacity to arouse immediate association with the opponent’s company would be diminished. Furthermore, the use of the contested trademark would take unfair advantage of the distinctive character and the reputation of the earlier trademark and be detrimental to its distinctive character.
On 4 March 2020, the Opposition Division upheld the opposition for all the contested goods considering the distinctive character and repute of the earlier ‘GOOGLE’ trademark and the EUTM application was rejected in its entirety on the basis of Article 8(5).
On 13 May 2020, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The EUIPO’s First Board of Appeal examined the reputation of the earlier trademark and stated that the earlier mark enjoys a truly global reputation. Afterwards, the signs were compared and at least an average level of similarity between the conflicting signs has been found. It was also pointed out that the fact that the opponent is also developing its own project in the automotive sector, will necessarily make the consumers link the conflicting marks. In the present case, the applicant has used the term ‘GOOGLE’ together with a descriptive addition ‘CAR’ and the acronym ‘GC’, which is likely to be read as the initial letters of the words ‘Google Car’. The reference to Google is more than obvious. Therefore the use of the contested sign is liable to take an unfair advantage of the opponent’s reputation.
The Board concluded that the conditions for the application of Article 8(5) EUTMR are met in the present case. The appeal was dismissed on 18 June 2021.
D. Decision of the European General Court (EGC)
Mr. Zoubier Harbaoui, sought annulment of the decision (‘the contested decision’) of the EUIPO’s First Board of Appeal dated 18 June 2021 and filed a further appeal with the European General Court (EGC). The Court conducted its review under three headings: (i) incorrect visual and conceptual comparison of the signs at issue, (ii) incorrect assessment of the existence of a link between the marks at issue, and (iii) incorrect assessment of the risk of unfair advantage.
(i) Incorrect visual and conceptual comparison of the signs at issue
The applicant alleges that the Board of Appeal made an error of assessment in its comparison of the signs at issue, the similarity between signs in this context is not average but low. The applicant does not challenge the Board of Appeal’s assessment that the marks at issue have an average degree of phonetic similarity.
The court held that although the abbreviation “GC” was the dominant part of the mark, the Google Car words underneath were also prominent. In this respect, it found no error in the previous decision and concluded that the signs are averagely visually similar.
An acronym representing the initials of the other word elements of the mark can even support the relevant public’s perception of the word combination of those elements. In the present case, the element ‘gc’ emphasizes the reference to the earlier mark “GOOGLE” from the point of view of the relevant public. Another point to add is that the word “google” has no specific meaning as such, however, generally associated with the intervener’s internet search engine or internet searches in general, as shown by its inclusion in the online English-language dictionary Collins. The Board of Appeal found that the degree of conceptual similarity between the signs at issue was high. The Court decided that the Board of Appeal did not make an error of assessment in finding that the signs at issue have an average degree of conceptual similarity.
(ii) Incorrect assessment of the existence of a link between the marks at issue
According to the applicant, the reputation of the earlier mark is based on search engine services and not cars. Therefore, consumers will therefore not establish a link between the marks at issue. The applicant claims that consumers will recognize the specific mark WAYMO, which the intervener uses to operate in the automotive sector, as the mark under which the intervener markets cars and car services and not Google Car. Second, the applicant argues that the application for registration of the mark applied for covers cars in general, without specifying that they are self-driving cars. Third, he submits that the parties’ business focuses are different from each other, which strongly reduces the risk for consumers of making a link between the signs at issue.
The Board of Appeal observed, that although the goods covered by the mark applied for are not similar to the goods in respect of which the earlier mark enjoys a reputation, the relevant public will be aware of Google’s reputation and will therefore associate the mark applied for with a car linked to Google. The public will clearly recognize the term “google” and assume that the vehicles and conveyances incorporate Google technologies. First, the mere existence of a separate mark used by the intervener in connection with its cars (WAYMO) does not in any way affect the fact that consumers will establish a link between the signs. Secondly, vehicles, as a broader category, include cars, including self-driving cars and therefore the applicant’s argument that the fact that the goods covered by his application are not self-driving cars must be rejected. Thirdly, the argument that the business focuses of the parties are far from each other must also be rejected, because there is in actual fact an overlap between commercial activities owing to the intervener’s activity in the automotive sector. As a result, the Board of Appeal did not commit an error of assessment in considering that the relevant public will establish a link between the marks at issue.
(iii) Incorrect assessment of the risk of unfair advantage
According to the applicant, the Board of Appeal erroneously determined that there was a danger of unfair advantage. The strength of the mark's image, the degree of distinctiveness of the mark, the degree of similarity between the marks in question, and the nature and proximity of the products or services are just a few of the factors that must be considered in order to reach an unfair competition conclusion. The more quickly and strongly the later mark conjures up the earlier mark, the more likely it is that the later mark is being unfairly used now or in the future.
The Board of Appeal stated that the applicant would unfairly advantage the earlier mark's attractiveness given the more than clear reference to it and its extremely strong reputation. The intervener's mark, WAYMO, wouldn't stop someone from using the previous mark unfairly. The Court ruled that unfair advantage exists.
Having regard to all the foregoing considerations and given that none of the three parts of the single plea raised by the applicant in support of the form of order sought is to be upheld, the Court decided that the action must be dismissed. Consequently, the EU Trademark Application No. 18007095 “GC GOOGLE CAR” cannot be registered as a trademark.