Google’s new branding – trade mark issues for giants

Well, what do you think? Don’t tell me you haven’t noticed.

Looks pretty good to me. I particularly like the new G logo.

New google logo                New google G

It is interesting to consider the portfolio management issues the re-brand poses, in this case from an Australian perspective. Does Google’s fame help it or hinder it in terms of its trade mark portfolio?

Is it you, baby, or just a brilliant disguise?

We are now well used to seeing commentary about new brands, based on snooping around on trade mark registers (the Hayne Plane here, the Kardashians here).

Is this a case in which someone could just have identified a new filing by Google for these marks, thereby letting the cat out of the bag?

It seems not. Our searches against some major registers (USPTO, OHIM and … Australia and New Zealand!) did not find any applications or registrations for the new Google logo.

This is not surprising. Google likely filed in a far flung territory (without an online register) and will later claim priority within the 6 month period allowed for this when it makes new filings in other countries.

New registrations needed?

Does Google need to file for its new version of … Google?

Or can it just rely on what it already has (eg. its word mark registrations for GOOGLE)?

Can it amend its existing logo registrations (eg. as shown below) to reflect the new branding?

Former google logo

So many questions.

Regarding whether to separately register, a key role that registering a trade mark plays is in sending a message to the market about what you are claiming rights in. So, that alone provides a rationale for separately registering the new branding. For a brand owner that is “not quite Google”, this deterrent function is compelling in terms of seeking separate protection.

The answer regarding amendments is “it depends”, and it highlights one of the key differences between filing nationally and using the Madrid Protocol. The registered logo above is the subject of an International Registration. The representation of that mark cannot be amended.

If Google filed nationally, the issue of whether it can amend will need to be assessed against the local practice on a case by case basis. Under Australian law, the issue is whether the new mark differs in terms of matter that substantially affects the identity of the mark at the time when it was published. This is a highly subjective issue and involves a side-by-side comparison of the differences between the two and the effect the differences make. It would seem a difficult argument to convince the AUTMO that the changes do not affect the identity of the mark. Arguably the fame of each version of the mark reinforces the recognizable differences between the two (in fact, for most, the differences will clearly be noticeable relying on recall rather than a side-by-side comparison).

Ultimately, Google can rely on its word marks (and common law rights) pending registration of the new logo. Further, it may simply wish to leave the existing registrations for the old logo (it may wish to later use it in this way again), and will likely freshen up / broaden its specifications in its new filings for the new logo.

The G logo – secondary meaning / acquired distinctiveness?

Under Australian practice, a single letter mark (even if stylised) will often face an objection on the basis that it is insufficiently inherently adapted to distinguish. Australia in fact has three levels of distinctiveness:

(a)  distinctive enough, without more;

(b)  not distinctive enough, but you can obtain acceptance based on a combined consideration of use, intended use and “other circumstances” if the result is that the mark “does or will” distinguish;

(c)  no inherent distinctiveness whatsoever, in which case you must demonstrate factual distinctiveness as at the filing date.

It is here that Google’s fame will play in its favour. In fact, Google’s G logo raises the interesting issue of whether “overnight” fame (literally) is sufficient to satisfy (b) or (c) (though (b) is the more obviously relevant provision here if the mark does not fall into (a)). It would be an interesting test case if, for example, the G logo in its specific font was filed in black & white and an objection was raised under (c). Just how long would it take to satisfy the AUTMO that the G logo had become distinctive in fact? One day? One week? One month? Two months? In any case, the issue is likely to be academic.