Google – do you own your ABC?
Google’s surprise decision to restructure under a new umbrella company called Alphabet has caused a flurry of interest in the trademark world. Why? Because “Alphabet” is the name of a business operated by BMW which they have also trademarked. BMW have already commented (in WirtschaftsWoche magazine) that they will need “to examine the legal trademark implications” of Google’s choice of name. BMW also own the domain name alphabet.com, which goes some way to explaining Google’s choice of abc.xyz as its new company’s URL.
So is there actually a problem for Google here? In reality, probably not. A registered trade mark is categorised into one or more of 45 different classes (according to the general nature of the product or service to which the mark relates) and, within each class, it is granted in respect of a detailed specification. In the UK alone, there are 41 trademarks for “Alphabet” or a phrase including the word “Alphabet” and a further 22 similar Community Trade Marks which are enforceable in the UK. BMW’s UK trademarks, for example, relate to vehicles, fuel use monitoring, credit cards, entertainment relating to vehicles and insurance services. Provided Google does not offer any of those products or services under the name “Alphabet”, simply calling its new parent company by that name is unlikely to constitute an infringement in the UK or European Union.
But what, actually, is infringement? The technical legal test is that a person infringes a registered trade mark if she uses a sign in the course of business which is:
- identical with the registered trade mark, and used in relation to goods or services which are similar to those for which the trade mark is registered; or
- similar to the registered trade mark, and used in relation to goods or services which are identical or similar to those for which the trade mark is registered;
- and, in each case, there exists a likelihood of confusion on the part of the public, which includes a likelihood of the public having the impression the sign and the registered trade mark are connected with each other.
In other words, if no-one thinks for a minute that the sign actually has anything to do with the registered trade mark, there may not be an infringement at all. It can be a very tricky area and the best advice is always to avoid using signs which sail close to existing registered trade marks for the same or similar products or services. A further consideration for a new brand is that if a registered trade mark has a strong reputation (such as Google, BMW but perhaps not (yet) Alphabet), even using a similar sign in an unrelated area might infringe the registered trade mark due to enhanced protection given to existing famous brands.
For anyone trying to come up with a new brand name in the UK, it is important, once a short-list has been selected, to check whether any of them overlap with registered trade marks on the UK or Community trade mark registers. This will not only ensure you stand a chance of registering the new brand yourself as a trade mark, but also help avoid inadvertently infringing an existing registered trade mark. Unfortunately, that check may not always be straightforward and you should think carefully about enlisting the help of a trademark attorney or solicitor.