The General Court of the European Union has ruled in Case T‑ 569/21, Zoubier Harbaoui v Google LLC.
This dispute focuses our attention on a trademark application for GOOGLE CAR, filed by Mr Zoubier Harbaoui for class 12:
‘Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances;
Water vehicles; Cable transport apparatus and installations; Air cushion vehicles; Cars for cable transport installations; Drones; Cable transport installations; Conveying installations [ski lifts]; Conveying installations (Aerial -) for the transportation of people; Cargo carriers for vehicles; Ski lifts; Aerial conveyors; Chairlifts; Vehicles’.
Against this trademark, an opposition was filed by Google Inc. based on an earlier EU trademark Google in classes 9, 35, 38, and 42. In addition, a reputation was claimed under Article 8(5) of Regulation (EU) 2017/1001.
The EUIPO confirmed the opposition finding both signs confusingly similar against the backdrop of the proven reputation of Google’s mark in the EU. The decision was appealed.
The General Court upheld the EUIPO decision. The Court found that the earlier mark’s reputation was well-established in the EU.
That difference between the goods and services covered by the marks at issue is not, in itself, sufficient to preclude certain proximity between the goods and services for the purposes of Article 8(5) of Regulation 2017/1001; a direct and immediate link between the goods and services is not necessary.
Nowadays it is widespread practice for different information technologies to be implemented in vehicles (one small example is Google Auto available in many cars). The target consumers of information technologies and vehicles are one and the same.
The Court found both signs similar. The Car word in the mark applied for is descriptive because of which first element Google has greater importance for the comparison.
Google’s mark has a strong reputation amongst consumers and if it is used by someone else for transport vehicles it is possible for consumers to relate these vehicles to Google as a company.
As correctly noted by EUIPO, the public, when purchasing a vehicle or conveyance sold under the mark applied for, will clearly
recognise the term ‘google’ and assume that the vehicles and conveyances incorporate Google technologies and tools, or that they have been developed by Google or in cooperation with Google.
Regarding the applicant’s argument that the mark WAYMO owned by the intervener and covering ‘cars’ in Class 12 would prevent him from taking unfair advantage of the earlier mark, it must first be stated that that assertion is in no way supported. Second, the mere existence of an additional mark owned by the proprietor of the earlier mark cannot have the effect of reducing or
even eliminating the risk of free-riding to the detriment of the earlier mark, where the relevant public will establish a link between the marks at issue.
Given the similarities between the marks at issue and the link which the relevant public will establish between those marks, the mark applied for carries a risk of benefiting from the attractiveness of the earlier mark, which is part of many aspects of the daily life of consumers.