Google, Inc (Google) has successfully opposed an application for
registration of the GOOGLEBAY mark in the name of Dmitri Rystk
(Rystk), covering consumer market information services in
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
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
The Registrar's delegate refused registration of Rystk's
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