Summary
Google’s announcement of using ALPHABET as its holding company name has prompted legal discussions about potential trademark issues in India. Multiple entities, including BMW, have existing registrations for the mark ALPHABET across several classes. While Google’s intended use appears limited to corporate identity, the digital landscape may blur lines between corporate and commercial use, increasing the risk of trademark disputes. Trademark infringement or passing off actions may face challenges, but dilution could be a concern if BMW can establish a strong reputation for its mark. The situation is evolving and will contribute significantly to intellectual property debates.
Background
Google’s announcement that it would be using the house mark “ALPHABET” for its holding company sparked a series of debates about the trademark implications of using the said word. While numerous companies operate under the name “ALPHABET” as part of their name, the most prominent among them appears to be BMW. BMW’s representative stated that Alphabet, a fleet services company operated by BMW, is an important part of its business, and that BMW was considering the matter but did not plan to take any action immediately.
Google’s Existing Trademark Registrations in India
A trade mark search on Google’s marks in India disclosed that Google Inc. has registered its mark in classes 3, 9, 16, 20, 25, 35, 36, 38, 39, 41, 42 and 45. The marks of Google in the said classes include:
- Google and its logo
- Google Chrome (logo)
- Google Plus
- Google Fiber
- Google Wave
- Google Plus word mark and logo
- Google Mirror
- Google Chrome Book Pixel
- Google Chrome Base
- Google Chrome Cast
- Google Keep
- Google Drive and its logo
- Google Mail.com
- Google Play
- Google Glass
- Google Nexus
Existing Registrations for the Mark ALPHABET in India
The mark ALPHABET is registered in classes 16, 24, 25, 30, 36, 37 and 39. Under class 16, it is registered by Ravindra Kumar Choudhary and by Kavita Saraf. Under class 24, it is registered by Duguy Creations, and applied for under class 25 by the same entity. Under class 30, it has been applied for by Nijari I. Panjwani. Under classes 36, 37 and 39, it is registered by BMW.
Trademark Implications for Google
Google has been an aggressive trademark filer in India, and these search results are not entirely surprising. What is significant, however, is that the mark ALPHABET has been registered by several persons in India, including BMW, and this could have an impact on how Google may use the mark for its business.
If Google uses the word solely as part of its corporate name, and not as a mark for its products or services, there may not be an immediate issue with its use. That said, in the digital and internet age, a corporate name tends to be associated, directly or indirectly, with products or services offered by its subsidiaries, and trademark disputes may arise over time.
Based on Google’s announcement, if the trade mark is to be used merely for a holding company, the most relevant class would be 35, which typically covers general business services. This assessment may, however, vary based on the specific description of the business.
Risk of Trademark Infringement
The first risk is a trademark infringement action by one of the registered proprietors. In a trademark infringement suit, likelihood of confusion among consumers must be established. It would be difficult for any of the registrants to make out such a case if Google aggressively differentiates and consumers are able to distinguish Google’s ALPHABET mark from others’ marks.
Risk of Passing Off
Passing off may not be easy for trademark owners, including BMW, to prove, as it requires proof of misrepresentation in the course of trade, and consequent injury and damage to goodwill. Google would be well positioned to contest any claim of misrepresentation.
Risk of Trademark Dilution
Trademark dilution, however, may be more difficult for Google to avoid. Although the standard of proof for establishing a reputed mark is high, BMW may not find it overly difficult to prove dilution if its ALPHABET mark is in use in India or if it has trans-border reputation in India. Whether BMW has sufficient material to prove dilution is a matter for assessment on the facts.
Conclusion
It appears that Google intends to proceed with its ALPHABET mark, and the days ahead are likely to add considerable interest to the IP debate around corporate house marks and their interaction with existing trademark registrations.
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.