Detriment to the reputation of the GOOGLE trademark by the GOOGLE CAR trademark

[15/02/2023]

By judgement of 1 February 2023, the CJEU considers that the Google Car trademark application is detrimental to the reputation of the Google trademark.

The decision states that "the earlier mark enjoys a world reputation and is an everyday tool for the general public and the specialised public in every sector” so that even if it is filed for vehicles, e.g.  products very different from the services for which the Google trademark is reputed, the consumer will establish a link between the contested application, Google Car and the Google trademark. Therefore, it seems, in the present case, that the degree of reputation of the Google trademark and its wide dissemination in all sectors, as well as the identity of the Google sign are sufficient to justify the existence of a link with any kind of goods or services. Accordingly, the fact that the Google company had developed a self-driving project "commonly referred to in the press as Google car, Google’s Waymo or Google’s self-driving” emphasises the existence of a link which the relevant public will establish between the marks at issue, but may appear overabundant.

The Court  also assesses the risk of detriment to the earlier trademark caused by the Google Car trademark and considers that "the risk of free-riding is obvious, given that one of the three elements making up the sign of the mark applied for is identical to the earlier mark, the reputation of which is extremely strong.”

The Court confirms the EUIPO’s decision which had considered that "the use of the mark applied for was liable to take unfair advantage of the reputation of the earlier mark thereby taking unfair advantage of that mark’s attractiveness.“