Google threatens wrath over booze startup Groggle

By Ry Crozier on Apr 28, 2010 1:38 PM
Filed under Oddware

Claims Queensland liquor site's trademark is too similar.

Google has taken issue with the name of Queensland liquor comparison startup Groggle, threatening legal action if the company doesn't change its name and withdraw a trademark application.

The startup has also been told to transfer its web domains to Google and provide "written acknowledgement" that Groggle infringed Google's own registered trademarks.

Groggle founder Cameron Collie told iTnews the company received a cease-and-desist letter from Google lawyers last Thursday.

It was received less than a fortnight before the Groggle trademark was due to be registered in Australia, Collie said.

Google provided no indication of its intentions to oppose the trademark application until the letter, according to Collie.

"We've had the Groggle.com.au domain for a good two years now," he said.

"We've also got the UK, NZ and Chinese domains."

Collie said he was awaiting legal advice before deciding whether to fight Google's demands in court although he described the past week as "out of control."

"I'm still pretty blown away by it all," he said.

"[The company name is] a play on the word ‘grog'. It isn't anything to do with Google.

"I'd like for Google to see this as a mistake and that no right person would think [get confused and think that Groggle] is a Google product. I think they're being a bit over-protective."

The company risked injunction orders stopping it from trading should it take up the fight against Google.

Google's lawyers said in the cease-and-desist letter - sighted by iTnews - that the search giant had successfully opposed other trademarks being registered in the past, including Googlebay.

It had also won cases requiring the domains Googler.com.au and Googlebay.com.au be transferred to it.

"[If Groggle does not... comply, we will seek our client's instructions to make an urgent application to the Court seeking interlocutory injunctions restraining Groggle and its directors from continuing with [their] conduct," Google's lawyers said.

"Should our client be successful in its case then Groggle will be liable to pay our client's costs and potentially damages."

13 comments in this discussion

"Thanks Ace, I was going to point that out yesterday but couldn't be bothered looking up the legislation. Anyone who thinks their trademark is being infringed is entitled to appeal to the regulator ..."

By Mordd

Tags

google, groggle, liquor, comparison, cease, desist, trademark, oppose

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Comments: 13

CyrusLesser Apr 28, 2010 4:01 PM	It's a bluff, but who can afford to call it these days? Money always wins. The law is an ass!
spark64 Apr 28, 2010 4:28 PM	How long do you think it will be till they sue Parker Brothers over the name Boggle?
meski Apr 28, 2010 4:33 PM	Sigh. Court cases should go through a 'no-lawyers' phase first. It might stop some of this absurdity and let the judge throw nonsensical cases out.
aussieboy Apr 28, 2010 4:55 PM	Sure, the grog part might be ok - but once you add a "gle" to show that the site is for -searching- there is a CLEAR reference to Google (the premier -search- engine). The word Google is a TM, it's unacceptable that a company should be able to draw allusions to the name in making the suggestion that their search engine is a good one. Without the existence of Google, the name would be a shit one that didn't make sense - in fact it (quite obviously) would not have been chosen at all.
Mordd Apr 28, 2010 5:35 PM	First of all I don't think the name is similar enough to Google, mainly due to the single "o" instead of the double "o" as well as the "r" in "Grog", the name is not similar enough to not be trademarked in its own right as far as I understand trademark law. That said, while I can see its a play on the word "Grog", I don't believe for a second that "It isn't anything to do with Google." as the owner says. Lets look at this in a creative fashion. We start with the word "Grog", now to get the play on words to what they come up with they have added "gle" to end to make "Groggle". Now what else sounds similar to groggle on the internet, lets see... "Google", "Boggle", um... thats really about it. Face it, Groggle is a play on Google, and its a good one at that. I am sure they intended it be a play on Google 100% and believed it to be unique enough to get away with it, and I think it is unique enough. They probably even hoped Google might challenge it and get them a whole heap of free publicity in the news, as has happened. I am willing to be they planned the whole thing from the beginning though and knew exactly what was likely to happen once Google found out. I hope they win the trademark case and get to keep the name, and I believe they will based on the differences between the two words, but you can't say for a second that the two words don't pronounce somewhat similar to each other.
frances Apr 28, 2010 11:18 PM	Aw, come on Google. Whatever happened to "don't be evil"?
Ace Apr 29, 2010 12:24 AM	It seems a pretty obvious infringement. It's a startup who can't claim to not have realised that Groggle and Google are obviously extremely similar. It seems pretty obvious that they factored in the likeness as being beneficial to them. How could you not. Having said that, there seem to be plenty of 'Stuff R Us' businesses that haven't been called to task by Toys R Us, and how bad has it been for them?
arcanedevice Apr 29, 2010 8:13 AM	I think Cameron Collie could have provided a better explanation of the name Groggle. So we know that the first part (Grog) is a slang term for alcohol, but sure the Groggle is also partly based on that confirmed medical condition that occurs after consuming too much alcohol - the dreaded Beer Goggles! So there we have it Google - case dismissed.
Shaun_73 Apr 29, 2010 10:31 AM	If you look at the fact that a lot of law is about perception, intent and interpretation I think to the average person the association between the two is pretty clear. But what about the already in use boozle.com.au? That's one that's slipped through the cracks of the Google legal eagles. Not only has Cameron tried to associate himself with another well known trademark, but he's also copying another identical service that's already highly successful. Way to go Cameron! Nice try, but get yourself a new idea and a unique identity and try again.
Bazwalt Apr 29, 2010 11:55 AM	Since when did similarity become illegal? The fact remains, they claim (and it's fairly obvious) that their play is on 'Grog'. Using the excuse that 'gle' is too close to Google is completely trash. What if I started calling myself 'Bazwaltgle' OMG is that too similar? The fact is that their play in marketing is focused elsewhere and they obviously have no intentions to counter Google in the IT sector given that they are a liquor store. Even if they did enter the IT sector - their name is still FAR from being close to 'Google'. Way I see it, unless they are using the exact same spelling - its legal.
Bazwalt Apr 29, 2010 11:58 AM	Adding to that - Google claims that they have won similar cases where company's have used the same or similar name to them. If that's the case, than they have set a precedence and therefore the onus should be on the 'Australian Business Name (ABN)' to thwart out any similarities. I don't see how it can be Camerons fault if he registered a name and wasn't stopped.
Ace Apr 29, 2010 10:31 PM	No @Baz, That is not quite right. In NSW, the dept of Fair Trading will not register a name that is already registered, but the onus is on the person registering the name to ensure it does not infringe on anothers trade mark etc. From copyright.org.au: "The Trade Marks Act 1995 (Cth) provides a formal system of registration for “marks”, such as names and logos, which are used in the course of trade. Unlike copyright, protection under the Trade Marks Act requires registration and payment of a fee. Only names and marks capable of distinguishing the trader’s goods or services from another trader’s mark or name can be registered. Registration stops other individuals or companies using the same or a deceptively similar name or mark in the course of trade. Trade marks are registered with IP Australia" and "“Passing off” and consumer protection laws A person may be able to take legal action against someone who “cashes in” on his or her reputation in a market, for example, by using the name of a product in a way that misleads customers about where the product came from, who has endorsed it, or who made it. In such situations, legal action may be available under laws such as “passing off”, the Trade Practices Act 1974 (Cth) or State or Territory fair trading legislation." It is perfectly within Googles rights to defend their trade mark.
Mordd Apr 30, 2010 2:01 PM	Thanks Ace, I was going to point that out yesterday but couldn't be bothered looking up the legislation. Anyone who thinks their trademark is being infringed is entitled to appeal to the regulator at any stage though yeh.