You don't have to give in to trademark 'blackmail'

Googles renaming of its Gmail service as Googlemail in the UK is being widely reported. Apparently the other company picked Gmail a full 2 years before Google for GMail, so barring inside info it would seem probable that it was just innocent good luck. I say ‘good luck’ because with this prior registration under their belt they seem confident Google will have to pay through the nose for the marks use; to the tune of £35million - ouch.

Google have neatly sidestepped the ‘blackmail’ by the simple expedient of renaming. Of course to call it blackmail where the trademark has been properly attained is unduly pejorative: it is the proper right of a trademark holder to licence it on commercial terms. Nonetheless if you are the one having built a successful product elsewhere and then find yourself being put to these harsh terms seems unfair.

The advice, as usual, is that if you do intend to brand a product or service then you should do adequate checks on its availability in your chosen markets. For smaller companies not to do so is sometimes understandable but for a company of Google’s size not, apparently, to have done so is surprising and perhaps an indicator of their reputedly chaotic management style.

The other lesson is that rebranding or parallel branding is sometimes a viable option: it is very much a last choice but it can be workable.