OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)

The Boards of Appeal

DECISION
of the Second Board of Appeal
of 26 February 2008

In Case R 252/2007-2

Google Inc
Building 41, 1600 Amphitheatre Parkway
Mountain View, California 94043
United States of America Applicant/Appellant

represented by Grünecker, Kinkeldey, Stockmair & Schwanhäusser,

Maximilianstr. 58, D-80538 Munich, Germany

Daniel Giersch
14 bis Rue Honoré Labande
MC-98000 Monaco
Monaco Opponent/Respondent

represented by Thomas Götz, Breitenburger Str. 31, D-25524 Itzehoe, Germany

APPEAL relating to Opposition Proceedings No B 795 569 (Community trade mark

application No 3 753 621)

THE SECOND BOARD OF APPEAL

composed of T. de las Heras (Chairperson), H. Salmi (Rapporteur) and G. Humphreys

(Member)

Registrar: J. Pinkowski

gives the following

Language of the case: English

DECISION OF 26 FEBRUARY 2008 – R 252/2007-2 – GMAIL/G-mail…und die Post geht richtig ab. (FIG.
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Decision

Summary of the facts

1 On 14 April 2004, Google, Inc (hereinafter ‘the applicant’) filed an application to

register the following sign as a Community trade mark

GMAIL

2 The registration was sought for the following services:

Class 38 – Telecommunications; communications by computer terminals; message sending;
electronic mail services.

3 The application was published in Community Trade Mark Bulletin No 03/2005 of

17 January 2005.

4 On 10 February 2005, Daniel Giersch (hereinafter ‘the opponent’) filed a notice

of opposition against the mark applied for, based on the following earlier right:

– Earlier German trade mark registration No 300 25 697 for the figurative mark
depicted below, which has been registered for the following services:

Class 38 – Telecommunications, particularly services in and for electronic communication

networks, like Internet or World Wide Web, electronic mail service,
dissemination of information.

Class 39 – Transporting; particularly postal services, collection, storage, sorting, franking

and delivery of mail; courier service; parcel service.

Class 42 – Development of programs for data processing; particularly development of

programs for electronic communication networks, like Internet or World Wide
Web, as well as for electronic mail.

5 The opposition is directed against all the services applied for and based on the
services covered by the earlier registration.

6 The opponent invoked Article 8(1)(b) of Council Regulation (EC) No 40/94 of

20 December 1993 on the Community trade mark (‘CTMR’) (OJ EC 1994
No L 11, p. 1; OJ OHIM 1/95, p. 52).

7 On 23 January 2007, the Opposition Division issued decision No B 795 569 (‘the
contested decision’). The Opposition Division upheld the opposition for all the

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contested services and ordered the applicant to bear the costs. The reasoning
underlying the decision was, in essence, the following:

– The applicant argues that the opposition should be rejected on the grounds of
inadmissibility due to the non-translation of the colour indications from the
original German certificate. However, the applicant provided the Office with
a colour copy of the mark in question in which the colours would be clearly
appreciated. Furthermore, in the opponent’s statement of grounds, the colours
of the mark are clearly indicated. Therefore the opposition is admissible.

– The contested services are identical to those of the earlier right or indeed
included within the broader terms of the earlier right’s specification since
they are all telecommunications services.

– The earlier figurative mark is protected in Germany. Therefore, it is the

impression that the signs make on the German public and their meaning and
pronunciation in the German language which are relevant for their
comparison.

– Both marks start with the same verbal element ‘GMAIL’ and due to its
prominent positioning and lettering within both of the marks in dispute it can
undoubtedly be called the dominant element of the verbal elements.
Furthermore, since this element contains the word ‘MAIL’ the relevant
German consumers will recognise it as being connected to ‘email’.
Therefore, in view of the fact that the services at issue are
telecommunications services in Class 38, it could be deemed that this
element is of a limited distinctiveness. However, bearing in mind the ‘G’ at
the beginning of this word, it has to be said that this letter endows a certain
amount of distinctiveness to the word as a whole, thus diminishing the effect
that the more descriptive ‘mail’ element may have.

– Visually, the marks coincide in the five letters GMAIL which indeed is the
totality of the contested mark itself. Although the letters of the contested
application are written in uppercase as opposed to the capital G and lower
case MAIL in the earlier right, this has no relevance for the purpose of
comparison, since for this mark protection is sought for the word itself and
not for the specific representation thereof. The earlier right includes other
wording but it is written in a much smaller script making the ‘G-MAIL’
predominant in the mark. Regarding the use of the hyphen in the earlier right,
the only visual consequence is that it separates the G from the word. Indeed
the use of colour and the additional elements mentioned, do little to cloud the
undeniable, strong visual identity of the verbal elements in the mark.

– Aurally both marks are identical as far as the ‘GMAIL’ element is concerned.
Although the earlier right has the additional ‘und die Post geht richtig ab’
which would make the overall aural effect substantially different from that of
the mark applied for, the relevant consumer would not refer to this element
since it is more of a promotional slogan. Additionally, this element is
positioned below ‘GMAIL’ and since signs are read from top to bottom, then
it is the GMAIL element which will receive more attention. Moreover, the

DECISION OF 26 FEBRUARY 2008 – R 252/2007-2 – GMAIL/G-mail…und die Post geht richtig ab. (FIG.
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beginnings of the marks are identical and since it is the beginnings of signs
that have more of an impact on the public as has been established, then the
remaining wording becomes less important. Thus, the marks are very similar
aurally.

– Conceptually the dominant element of the marks, ‘GMAIL’, has no meaning

in German. However, the fact that this element contains ‘MAIL’ will lead
consumers to link the marks with electronic messaging services since the
term ‘e-mail’ is used in Germany to refer to these services, as well as the fact
that the relevant public is more than used to seeing these kind of services
being marketed with ‘MAIL’ suffixed terms. In the case of the ‘und die Post
geht richtig ab’ this is a typical German idiom meaning ‘and off the Post
goes’ or ‘the post is moving’ which here is meant to highlight the speed of
the service.

– There is a likelihood of confusion.

8 On 9 February 2007, the applicant filed a notice of appeal. The statement of

grounds of appeal was received on 21 May 2007.

9 The appeal was forwarded to the previous instance for consideration pursuant to
Article 60(a) CTMR and remitted to the Boards of Appeal on 1 June 2007.

10 On 2 August 2007, the opponent filed its observations.

11 On 22 October 2007, the applicant filed its reply.

12 On 20 December 2007, the opponent files its rejoinder.

Submissions and arguments of the parties

13 The applicant requests the Board to annul the contested decision and accept the
mark applied for. Its arguments are summarised as follows:

– The connotation made by the slogan ‘…und die Post geht richtig ab’ in
particular in combination with the specific yellow/black colouring were not
sufficiently taken into account. Both elements are intended to jointly create a
connection to postal services like those offered by Deutsche Post AG. Taking
into account that the relevant consumer circles are German consumers which
are used to the fact that this specific colour combination has been used by
Deutsche Post AG (or its predecessor, Deutsche Bundespost) for decades in
connection with postal services, it becomes obvious in which direction the
opponent initially aimed with his choice of logo and colouring of the
opposing mark. The Opponent chose a highly distinctive colour combination
and logo, further stressed by the use of the element ‘Post’, to allocate its
mark in the immediate environment of Deutsche Post AG. The opposing
mark was initially intended to be used for postal delivery services and not for
electronic communication. In particular, it was meant for use in direct
competition with the services provided by Deutsche Post AG. The opponent

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briefly used its mark for those services until it had to stop due to the fact that
its economic concept failed.

– The conceptual meaning of the trade marks at hand is different.

– The conceptual and visual dissimilarities of the marks neutralize any possible
aural similarity.

– The low degree of distinctiveness of the element G-mail given the descriptive
character of the element ‘mail’ in connection with ‘telecommunication and
electronic mail services’ was not given enough weight. The clearly visible
separation of the elements ‘G’ and ‘mail’ made by the hyphen has to be taken
into account when an overall impression of the Opposition Mark is made, as
this strongly stresses the purely descriptive character of the element ‘mail’
Given this low degree of distinctiveness, the further word and design (colour)
elements of the Opposition Mark have, at least, equal weight to the word
element G-mail within the overall impression created by the Opposition
Mark.

– Numerous trade marks containing the element ‘mail’, in addition to a single

letter, can coexist on the Community Trademark Register, the International
Trademark Register as well as the German Trademark Register, which is of
particular relevance here as the strength of the Opponent’s mark depends on
the understanding of the German consumers.

– There is no likelihood of confusion between the marks.

– The Opposition Mark is a word/device mark filed in yellow and black.

Therefore, the Opponent should have filed, for the purpose of proving the
existence and scope of its prior right, a colour copy of the registration
certificate of German Trademark Registration No 300 25 697 or an
equivalent official document. As the Office informed the Applicant at a later
stage, such colour copy was provided by the Opponent. Nevertheless, this
does not remedy the fact that the applicant was informed of the Notice of
Opposition by fax (and thus in a black and white version) only, and that the
Notice of Opposition was partly filed using German words without providing
a translation thereof.

14 The opponent requests the Board to dismiss the appeal and order the applicant to
bear the costs in the appeal proceedings. It stated the following:

– The services included in two of three International Classes of the earlier right
are not claimed in the field of postal delivery services but in the field of
telecommunications and electronic mail services.

– The average German consumer will understand the component ‘und die Post
geht richtig ab’ as an advertising slogan, but not as reference to the origin of
the services. The simple and common figurative element, i.e. the yellow
colour of the letters of the verbal components surrounded by the highly
contrasting black rectangle, is merely an eye catcher for directing the

DECISION OF 26 FEBRUARY 2008 – R 252/2007-2 – GMAIL/G-mail…und die Post geht richtig ab. (FIG.
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attention of the consumer to the mark and especially to the more prominent
and therefore more contrasting ‘G-mail’. However, the figurative element
does not have any indication with respect to the origin of the claimed
services. This is fact was confirmed in an Appeal Decision by the Hanseactic
Regional Appeal Court.

– The sign ‘GMAIL’ of the mark applied for is fully included in the earlier
right being visually very similar and phonetically identical with the latter’s
dominating component ‘G-mail’. The applicant’s opinion that the ‘G-mail’
component has a low degree of distinctiveness, due to the descriptive
character of the element mail and due to the coexistence of numerous trade
marks containing a single letter plus the element mail, is contrary to the
decision of the Hamburg District Court.

– On 23 May 2005, the Office noted that ‘as the applicant had been notified by
mail instead of by fax, we have added 12 days to the two-month period’.
Therefore, apparently, the applicant actually should have received by mail a
copy of the Notice of opposition which included two colour reproductions of
the earlier rights. Even though in the registration certificate of German
Trademark Registration No 300 25 697, the designation of the colours is in
German, this designation is positioned immediately below the colour
reproduction of the earlier right, showing the colours yellow and black.
Furthermore, the applicant’s representative is a German lawyer.

15 The applicant stated in its reply the following:

– It is within the Office’s discretion to decide on the validity or applicability of

language rules. If a particular rule has not been followed by a certain party,
such party has to bear the consequences, not having provided a complete
translation of the document providing the scope of protection of the earlier
right. In the case at hand therefore it must lead to the result that the opponent
has not sufficiently proven its earlier right (see, in that respect, Decision of
the Boards of Appeal dated 21 September 2006, in Case R 74/2006-1 –
Neurim Pharamaceuticals (fig. mark) at paragraph 51). Therefore, the Office
had no alternative but to reject the Opposition.

– The opponent almost exclusively relied on a Court decision rendered by the

Hanseatic Appeal Court in Germany. It has not filed any arguments but
exclusively cited what the Hanseatic Appeal Court said about the similarity
of the two trade markss which are also at issue in the proceedings at hand.
However, it has neglected that a German Court decision is not part of the
case law on which the Office and the Board of Appeal can rely.

– The earlier right contains six additional words as well as figurative design
elements in colour, so that the certain resemblances between the elements
GMAIL and G-mail can only be of ‘little consequence’ in the context of a
global comparison and it is not in itself sufficient to justify the conclusion
that the signs are visually similar.

DECISION OF 26 FEBRUARY 2008 – R 252/2007-2 – GMAIL/G-mail…und die Post geht richtig ab. (FIG.
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– An applicant who files a complex colour trade mark in the form of a logo
will have its reasons to do so and cannot later on, whenever it suits it better,
try to argue that its trade mark is basically to be considered a word mark for
G-mail.

16 The opponent stated in its rejoinder, in its essence, the following:

– The Decision of the Boards of Appeal R 74/2006-1 mentioned by the

applicant refers to admissibility of an appeal and not to the proof of the
existence, validity and scope of protection of an earlier mark. Furthermore,
this decision is based on Rule 48(2) of Commission Regulation (EC) No
2868/95 of 13 December 1995 implementing Council Regulation (EC) No
40/94 on the Community trade mark (‘CTMIR’) (OJ EC 1995 No L 303, p.
1; OJ OHIM 2-3/95, p. 258) CTMIR whose wording is not at all comparable
to the wording of Rules 19(2) and 19(4) CTMIR applicable in the present
case.

– The omission of a translation of the literal expression of the colours of a trade

mark cannot adversely affect the proof of the scope of protection of the
earlier right according to Rule 19(2) CTMIR.

– The earlier right is protected in Germany and therefore in the present case,
the decisive question will be whether there is a likelihood of confusion on the
part of the German public.

Reasons

17 The appeal complies with Articles 57, 58 and 59 CTMR and Rule 48 CTMIR. It
is therefore admissible.

Preliminary remarks

18 The first issue to be decided is whether the translation of the German extract of
the register in respect of the earlier mark complied with the requirements of Rules
16(1) and 17(2-3) CTMIR. In this respect the applicant argues that the opposition
should be rejected on the grounds of inadmissibility due to the non-translation of
the colour indications ‘gelb, schwarz’ from the original German certificate.

19 In its decision of 10 January – R 958/2004-2 – ALPHA / ALPHA TONTRÄGER

VERTRIEBES GMBH, the Second Board noted, at paragraph 25, that ‘a
translation is prescribed not merely to make sure that the applicant can find, in the
language of the proceedings, the elements of the registration of the earlier mark
which the opponent considers essential, but to allow the applicant to compare the
elements indicated by the opponent in the notice of opposition with the data
actually registered by the relevant authority’. Moreover, in its judgment of
30 June 2004, in Case T-107/02 GE Betz Inc. v OHIM (‘Biomate’) [2004]
ECR II-1845, the Court of First Instance stated at paragraph 72 that ‘…the rule
that evidence filed in support of the opposition must be submitted in the language

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of the opposition proceedings or be accompanied by a translation into that

language is justified by the necessity to observe the audi alteram partem rule and
to ensure equality of arms between the parties in inter partes proceedings’. The
Court noted that the requirement of translation does not mean that the opponent is
‘in any way obliged to provide a full translation of the registration certificates for
the earlier trade marks’ (see, Biomate, cited above, at paragraph 72). It therefore
follows that while the translation need not be complete, it must enable the
applicant to compare the indications in the opposition notice with the register and
ensure that the rights of the parties are properly balanced.

20 In the present case, the only words which were missing were the words ‘gelb,
schwarz’. In addition, as noted in the contested decision, the applicant provided
the Office with a colour copy of the mark in question in which the colours could
be clearly appreciated and the applicant does not seem to deny that a colour copy
of these documents was sent to it as well. Furthermore, in the opponent’s
explanation of grounds, the colours of the mark are clearly indicated. Therefore,
the absence of a translation of these words did not in any way affect the rights of
the parties and the applicant’s rights do not appear to have been prejudiced in any
way.

21 In view of the foregoing, the Board considers that rejection of the opposition on
the ground that two words of the extract of the register were not translated would,
in the circumstances of this case, be a disproportionate penalty. This is especially
so since there is no legal obligation on the opponent to translate absolutely every
element in the certificate of registration or extract of the register.

22 Article 8(1)(b) CTMR provides:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark
applied for shall not be registered:
…
(b) if because of its identity with or similarity to the earlier trade mark and the
identity or similarity of the goods or services covered by the trade marks there
exists a likelihood of confusion on the part of the public in the territory in
which the earlier trade mark is protected; the likelihood of confusion includes
the likelihood of association with the earlier trade mark.
…’

Relevant public / territory

23 Bearing in mind that the earlier trade mark is registered in Germany and that the
services in question are general consumer services, the relevant public in relation
to which the likelihood of confusion must be assessed, is the public at large in
this Member State.

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Comparison of the services

24 The Board concurs with the reasoning in the contested decision leading to the
undisputed finding that the services at issue are identical.

Comparison of the signs

25 The likelihood of confusion must be determined by means of a global appraisal of

the visual, phonetic and conceptual similarity of the marks, on the basis of the
overall impression given by the marks, bearing in mind in particular their
distinctive and dominant components (see judgment of the Court of 11 November
1997 in Case C-251/95 Sabèl BV v Puma AG, Rudolf Dassler Sport (‘Sabèl’)
[1997] ECR I-6191, at paragraph 18).

26 The only element of the mark applied for ‘GMAIL’ is included almost identically
in the opponent’s complex trade mark. The Board agrees with the contested
decision that although the letters of the mark applied for are written in uppercase
as opposed to the capital G and lower case MAIL in the earlier right, this has no
relevance for the purpose of comparison, since for this mark protection is sought
for the word itself and not for the specific representation thereof. Regarding the
use of hyphen in the earlier right, the only visual consequence is that it separates
the G from the word MAIL.

27 It is evident that the complex trade mark also contains several other elements.
However, these elements do not stand out to such a manner that the component
‘G-mail’ would be considered of secondary importance. Of secondary importance
are the words ‘…und die Post geht richtig ab’. They are depicted in a
considerably smaller size as the other components and therefore play a rather
negligible role in the overall impression of the sign. Indeed the use of colour and
the additional elements mentioned do little to cloud the undeniably strong visual
similarity of the verbal elements in the mark.

28 However, notwithstanding the importance of the assessment of the several

individual components, it is the overall impression of the signs that is decisive. In
this respect the Board notes that the word ‘G-mail’ forms the beginning of the
opponent’s trade mark which is generally the part that primarily catches the
consumer’s attention and therefore will be remembered more clearly than the rest
of the sign. Moreover, the word component ‘G-mail’ in the earlier mark is
depicted in a considerably larger size as the rest of the text, which is far more
eye-catching than the words ‘…und die Post geht richtig ab’ below.

29 Furthermore, the Board agrees with the contested decision that even though the
relevant German consumers may recognise ‘MAIL’ as being connected to
‘email’, the ‘G’ at the beginning of the words endows a certain amount of
distinctiveness to the words as a whole, thus diminishing the effect that the more
descriptive ‘mail’ element may have. In addition the text ‘…und die Post geht
richtig ab’ is a typical German idiom meaning ‘and off the Post goes’ or ‘the post
is moving’ which highlights the speed of the service and would therefore been

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seen as an advertising slogan rather than a trade mark. The dominant element of
the earlier mark is clearly the word element ‘G-mail’.

30 In the light of the foregoing, from a visual point of view, the differentiating
elements of the earlier mark do not outweigh the common elements of the signs.

31 The public will pronounce the earlier mark merely by its verbal components. As
considered earlier the elements ‘…und die Post geht richtig ab’ are of secondary
importance. The component ‘G-mail’ in the earlier mark and the mark applied for
‘GMAIL’ are pronounced identically. In the light of the foregoing, bearing in
mind that the component ‘G-Mail’ forms the beginning of the earlier mark, the
differentiating verbal components do not outweigh the common verbal element in
the overall impression.

32 From a conceptual point of view the dominant element of the earlier mark, ‘G-
mail’, has no meaning in German. However, as noted in the contested decision,
the fact that this element contains ‘mail’ may lead consumers to link the mark
with electronic messaging services since the term ‘e-mail’ is used in Germany to
refer to these services, as well as the fact that the relevant public is used to seeing
these kind of services being marketed with ‘MAIL’ suffixed terms. There is no
reason to assume that a significant part of the relevant public will not make the
same association when it is confronted with the element ‘GMAIL’ in the trade
mark applied for.

Conclusion

33 There is a likelihood of confusion if the public might think that the products come
from the same undertaking or, as the case may be, economically-linked
undertakings.

34 Furthermore, the likelihood of confusion must be assessed globally, according to

the perception by the relevant public of the signs and the goods or services in
question, and taking into account all factors relevant to the circumstances of the
case, in particular the interdependence between similarity of the signs and
similarity of the goods or services designated.

35 In light of the foregoing, the Board considers that the common element
‘GMAIL’, with or without a hyphen, gives the signs an overall visual, phonetic
and conceptual similarity which is such that the relevant public in Germany
confronted with the marks at issue for the contested services that are considered
identical to the opponent’s services will be misled into thinking that the marks
indicate a shared commercial origin.

36 Consequently, the Opposition Division did not err in upholding the opposition on
the basis of Article 8(1)(b) CTMR.

37 The appeal is dismissed.

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Costs

38 Pursuant to Article 81(1) CTMR, the applicant, as the losing party, must bear the
costs of the appeal proceedings. Pursuant to Article 81(6) CTMR and Rule 94(3)
last sentence CTMIR, the applicant is therefore ordered to reimburse the
opponents costs of professional representation for the appeal proceedings at the
level laid down in Rule 94(7)(d) CTMIR (EUR 550). As to the opposition
proceedings, the Opposition Division ordered the applicant to bear the opponent’s
representation costs in the amount of EUR 300 and the opposition fee of
EUR 350.

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Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the total amount of EUR 1 200 in respect of
the costs of the opponent in the appeal and opposition proceedings.

T. de las Heras H. Salmi G. Humphreys

Registrar:

J. Pinkowski

DECISION OF 26 FEBRUARY 2008 – R 252/2007-2 – GMAIL/G-mail…und die Post geht richtig ab. (FIG.
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