Case Summary: Google LLC v Chitkara [2024] ATMO 27 (GOOGLE v KOOGLE)
This decision provides some useful takeaways for Applicant’s dealing with oppositions by well-known brand owners in unrelated fields of activity.
Although the marks in question here differed by only the first letter, the decision focussed on examining the nature of the claimed services (in this case ridesharing services) against the services for which Google was well-known for.
Google’s key arguments focussed on establishing that there was sufficient connection between the navigational services provided through its Google Maps services and the kinds of services provided by a rideshare provider. Ultimately, it was not able to establish a sufficient connection to make out any of the four grounds argued, and the KOOGLE mark was permitted to proceed to registration.
S44 (Deceptive Similarity of Marks and Services applied for)
S60 (Likelihood of Confusion based on Google’s reputation)
S42 (Use of mark would be contrary to law- Australian Consumer Law/passing off/trade mark infringement)
S62A (Application was filed in bad faith)
Rideshare, taxi, passenger service, and carpooling services are NOT similar to locational, mapping and geographical information services.
Online booking passenger services are NOT similar to electronic storage services.
Whilst Google’s extensive reputation was acknowledged, it was held not to extend to the provision of ridesharing, taxi, passenger and carpooling services.
Google’s reputation in Google Maps was not likely to lead to consumer confusion in respect of use of the name KOOGLE for a rideshare service.
Google was not able to establish that use of the KOOGLE trade mark would amount to misleading or deceptive conduct or a false and misleading statement under the Australian Consumer Law, or constitute passing off.
Further, there was insufficient evidence to establish that use of the KOOGLE trade mark would be likely to infringe registration of GOOGLE as a well-known mark.
Mere awareness of a well-known trade mark did not constitute bad faith.
Evidence as to the reasons for selecting the name KOOGLE were provided by the Applicant which did not indicate any intention to associate the name KOOGLE with Google’s trade marks.
