Just a few weeks away from launching, web startup and alcohol search engine Groggle has been hit with a cease and desist letter from Google.
The Groggle trade mark has been accepted for registration so the first step looks to be opposition proceedings before the Trade Marks Office.
Read on to find out some of the problems Google will face.
Google’s opposition will be based on a number of grounds but they’ll primarily have to convince the Registrar that:
- GROGGLE is substantially identical or deceptively similar to GOOGLE, or
- GROGGLE will confuse people because of the reputation of the Google brand.
Substantial identity is a straightforward side-by-side comparison of the key elements of the competing.
The test of deceptive similarity is not a side by side comparison but a test of whether ordinary people with ‘imperfect recollection’ would look at (or hear) the Groggle mark and think it is the same as Google.
Here are Google’s problems.
GROGGLE doesn’t look like GOOGLE. And when spoken it doesn’t sound like GOOGLE.
Are people really going to be caused to wonder whether Groggle and Google are one and the same? Probably not.
There’s also the problem that all successful brands face – being a victim of their own success.
This is partly what happened to Mars when it unsuccessfully argued that Delfi’s MALT BALLS was similar to its MALTESERS mark. Because the Maltesers brand is so well known, the court considered it unlikely that people would associate Malt Balls with Mars / Maltesers and be confused (note that there were other compelling reasons why Mars was unsuccessful).
The Maltesers case could also mark a slow shift in how courts approach deceptive similarity. The traditional legal approach to the test of deceptive similarity is to compare the marks without regard to actual reputation.
According to some, Google has built itself into the most valuable and recognisable brand in the world. But reputation is a two-edged sword. The strength of the Google brand is such that an ordinary internet user who sees the word Moogle, Doogle, Joogle or, well, Groggle, will probably know that it has no relation to Google.
So, are things looking good for Groggle? Possibly. Google faces some significant problems in opposing the Groggle mark and the spat has brought Groggle a heap of PR, both in IT publications and the general press.
But if Google decides to play hardball, bring on Federal Court proceedings and apply for the injunction they’ve been threatening, they could stymie the Groggle launch and force the startup to come to the table to avoid the costs of going to court.
Tags: google, groggle, maltesers
