Singapore Trademark Update: Singapore’s IPOS Rejects Google’s Opposition to “grMail” Trademark

In a recent decision, the Intellectual Property Office of Singapore (IPOS) ruled in favour of Green Radar, an IT security firm, allowing them to register the trademark “grMail” (Trademark No. 40202109944T) for their services under class 42 and class 45. This comes after tech giant Google filed an opposition against the mark, citing potential confusion with their own established trademark “Gmail”. The case centered around whether “grMail” was confusingly similar to “Gmail” and could potentially dilute the distinctiveness of Google’s brand.

Google’s Arguments:

Google opposed the registration of “grMail” on the following grounds:

1. Confusing Similarity:
   Google argued that “grMail” is too similar to its well-known trademark “Gmail,” leading to consumer confusion. They believed consumers might mistakenly associate “grMail” with Google’s email service.
2. Dilution and Unfair Advantage:
   Google contended that allowing “grMail” would dilute the distinctiveness of its “Gmail” trademark and potentially allow Green Radar to gain an unfair advantage by riding on Google’s brand reputation.

IPOS Decision:

IPOS acknowledged a moderate degree of visual similarity between the two marks. However, they ultimately sided with Green Radar, finding the following:

1. Sufficient Distinction:
   The addition of the prefix “gr” creates enough distinction for the average consumer to differentiate “grMail” from “Gmail”.
2. Dissimilar Services:
   The services offered under the respective trademarks are distinct. “Gmail” is an email service, while “grMail” relates to IT security services. This difference reduces the likelihood of confusion.
3. No Dilution or Unfair Advantage:
   IPOS determined that “grMail” wouldn’t likely damage the distinctiveness of “Gmail” due to Google’s brand strength. Additionally, they found no evidence that Green Radar intended to capitalize unfairly on Google’s reputation.

Conclusion:

This decision allows Green Radar to register the “grMail” trademark in Singapore for their IT security services and subsequently the mark has obtained registration in Singapore. Google was also ordered to pay Green Radar US$12,000.
This case highlights the importance of distinctiveness in trademark selection. While some similarity might exist, clear differentiating factors can be crucial in securing trademark registration.

(source: Biro Oktroi Roosseno Singapore)