Google fails to wipe out ‘grMail’ trademark in Singapore
IPOS dismisses tech giant’s opposition to IT security firm’s mark | Google had asserted rights over ‘Gmail’ but failed to prove marks were confusingly similar.
Google has failed to prevent the registration of a trademark in Singapore that it said was confusingly similar to its ‘Gmail’ mark.
The legal decision, published by the Intellectual Property Office of Singapore (IPOS) today, February 16, allows IT security company Green Radar to proceed with the registration of its trademark ‘grMail’.
The tech giant also opposed the mark on the grounds of anti-dilution and unfair advantage.
But while IP adjudicator Cheng Pei Feng found points of similarity between the two marks, she was unconvinced that consumers would fail to distinguish between them or that Green Radar would gain any unfair advantage.
Google’s opposition was dismissed and it was ordered to pay costs of $12,000 to Green Radar.
Tech giant asserts rights
Green Radar, a Singapore-based company that provides email security solutions, applied to register ‘grMail’ in April 2021 in Classes 42 and 45—"Electronic monitoring services being IT security services in the nature of protection and recovery of computer data", and "Security services for the protection of property and individuals", respectively.
Google filed a notice of opposition to the registration of the mark in November 2021. The tech conglomerate claimed that ‘grMail’ was confusingly similar to ‘Gmail’, that it could cause dilution regarding its own well-established mark, and hand Green Radar an unfair advantage.
In its analysis of the marks, the IPOS found points of similarity, but “certain key differences that are sufficient to easily distinguish between the two”.
Green Radar argued that its email security service was targeted at business email service providers and marketed to IT departments, whereas Google’s Workspace was targeted at businesses and its free Gmail service at general users.
While the IPOS found this distinction “somewhat artificial”, the adjudicator was satisfied that the specific services did not compete with each other.
A consumer who wants an email service will not look to Green Radar as it does not offer such a service, Cheng said.
Furthermore, it was deemed highly unlikely that the average consumer—“especially one who is exercising a greater degree of fastidiousness and thought in considering a standalone product that offers cybersecurity services for emails”—would be unable to differentiate the ‘grMail’ product from ‘Gmail’ or be mistaken that they were somehow linked.
No threat to ‘Gmail’ from new mark
Regarding opposition on the grounds of dilution, there was some disagreement over whether Google had proved extensive use of ‘Gmail’ in Singapore specifically rather than globally, but ultimately the adjudicator was satisfied that the mark was well known to the public there.
Google’s Workspace, of which Gmail is a component, allegedly has more than 3 billion users worldwide and the Gmail mobile app has been downloaded more than 10 billion times.
Cheng determined that there was no real or serious likelihood that Google’s mark would be weakened or lost over time by the use of Green Radar’s mark, nor that the Singaporean company would gain any commercial advantage from the perceived similarity between them.
In this trademark opposition matter Green Radar was represented by Ravindran Associates and Wilder Law, and Google by One Legal.
