Google concedes GMail trade mark in UK.

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Author: Moshinsky, Ben1

Google faces a struggle to hold on to its GMail brand across the EU, after settling a trade mark dispute in the UK over the name of its email service.

After an 18-month battle with Independent International Investment Research (IIIR), Google has renamed its email service in the UK. From October 19, new Google email addresses end with googlemail instead of gmail.

IIIR applied for the G-Mail trade mark in the US on April 3 2004 â€" a few days before Google's April 7 application. IIIR then applied for a Community trade mark (CTM) in Europe on October 4 2004, citing the US application for a priority date.

Google also has CTM applications pending, but neither company has so far received a CTM registration.

Google's decision to change the GMail name comes after negotiations aimed at a monetary settlement failed. IIIR valued the G-Mail name at £25 million ($44 million), leading Google to say in a statement that it "went back and forth trying to settle on reasonable terms, but the sums of money [sought by IIIR] … are exorbitant".

Shane Smith, chief executive officer of IIIR, told MIP: "They made no attempt to come up with an alternative valuation. We actually offered a heavy discount, proposing a payment of $500,000 a year with a cap of 10 years."

Google now faces the same trade mark battle across Europe. Smith commented: "We're not terribly sure why Google made the change in the UK at all as we applied in the EU, not just in the UK."

Daniel Girsch, an entrepreneur from Hamburg, registered Gmail â€" und die Post geht richtig ab with the German Patent Office in 2000. Smith said that, if IIIR's CTM application fails, the company will seek national trade marks in the other 24 EU jurisdictions.

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By Ben Moshinsky, London