Google LLC was unsuccessful in opposing the registration of the mark “grMail” by Green Radar, a Singapore incorporated company mainly engaged in the distribution of IT security products and the provision of IT security services. Google had opposed the registration on various grounds, including confusing similarity, anti-dilution and unfair advantage.
On the ground of confusing similarity, the legal decision concluded that “grMail” and “GMAIL” were only moderately similar, as “there are points of similarity between the two marks, yet the overall impression given to an average consumer may be that there are also certain key differences that are sufficient to easily distinguish between the two”. Their respective services were also not similar (Google’s telecommunications services, as compared to Green Radar’s IT security services and non-IT security services).
On the ground of dilution, the IP Adjudicator found that “GMAIL” was sufficiently well known to the public at large. However, any mental link between “grMail” and “GMAIL” would not lead to any real and serious likelihood of damage to the distinctive character of “GMAIL”.
On the ground of unfair advantage, the IP Adjudicator found that there was no evidence to prove that Green Radar would gain any unfair advantage from using “grMail”.
