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To succeed on the ground of opposition based on its GOOGLE registrations, Google needed to establish that at least one of its registrations covers similar services or closely related goods to consumer market information services, and that the marks GOOGLE and GOOGLEBAY are deceptively similar.
The Registrar’s delegate took the view that consumer market information services is a broad claim, which conceivably covers advertising services, and therefore found that it covered services similar to services in Google’s registration 1049124, which includes dissemination of advertising for others via the Internet.
The Registrar’s delegate noted the distinctiveness of the coined word GOOGLE, the fact that EBAY also has no dictionary definition, and the fact that both coined marks have strong associations with the Internet. Consequently, it was concluded that consumers would view the mark GOOGLEBAY as a simple combination of the coined marks GOOGLE and EBAY and, as no other meaning is available, would expect the mark to indicate an association with Google’s business. It was considered likely, in the circumstances, that consumers would consider the GOOGLEBAY mark to be part of Google’s "family" of marks.
Google was also successful in persuading the Registrar’s delegate that its GOOGLE mark had achieved a massive reputation in Australia, in large part due to its highly successful and profitable GOOGLE branded search engine. Having already found the marks to be deceptively similar, this finding of a significant reputation in the GOOGLE mark enabled the Registrar’s delegate to also find a likelihood of deception or confusion based on that reputation.
Changes to Australian law mean that a finding of deceptive similarity is no longer a pre-requisite to a finding of a likelihood of deception or confusion based on prior reputation, under the relevant ground of opposition.
Therefore, Google established that:
• the GOOGLEBAY mark was deceptively similar to the GOOGLE mark and that consumer market information services are similar to dissemination of advertising for others via the Internet.
• Due to Google’s reputation in Australia in relation to its GOOGLE mark at the time of Rystk’s filing date (16 June 2006) use by Rystk of GOOGLEBAY mark would be likely to cause deception or confusion.
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