Michael Pollitt | freelance technology journalist

When the news broke on the Gmail – sorry, make that Google Mail – rebranding exercise in the UK last week, I remembered an e-mail program called Gmail that I’d come across in 1994 (yes, I was using e-mail then). A few phone calls and e-mails later, I had an exclusive story that other journalists appear not to have picked up. My piece in today’s Guardian newspaper shows that Independent International Investment Research plc was not the first to use the Gmail name. The credit goes to Gallagher & Robertson AS, a Norwegian company that was founded in 1982. Michael Sandøy told me that the company had developed an e-mail program in 1984, later changing the program’s name to Gmail in 1989 but never applied for a trademark. Google’s press office dismissed Gallagher & Robertson’s claim in a rather terse statement while Shane Smith at IIIR said he was unaware of the latter’s long-standing use of the Gmail name. I also consulted media and internet lawyer David Engel of Addleshaw Goddard for a quick opinion. This interesting three-way dispute is unlikely to end quickly.

At least my Gmail Google Mail is still working, for now. But how long will existing UK users have a working @gmail.com address? If Google doesn’t win its fight, will they be switched to @googlemail.com like the new sign-ups? Both domains work for my e-mail address so Google is keeping its options open.

Update: 31 October 11.00am: News just in from Gallagher & Robertson’s Michael Sandøy who is now challenging what Google said last week: “Norway is a country that requires registration in order to acquire trademark rights. Gallagher & Robertson does not own a registration for Gmail.”

Gallagher & Robertson has now issued a statement refuting Google’s claims and here is part of it:

Although we have not formally registered ‘Gmail’ as a trademark, we have marketed G&R Gmail under the Gmail name for 15 years, and believe that we have common law right to the name, at least in Norway, USA, Great Britain, Sweden, Denmark and other European countries where our distributors actively marketed Gmail.

The company’s views are backed by a statement from Oslo Patentkontor (Oslo Patent Office):

“In Norway the exclusive right to a trademark can be achieved by registration (Trademarks Act Section 1) or by usage (Trademarks Act Section 2). A trademark is regarded as acquired by usage when, in the marketing sector where it is used, it is recognized as a label for someone’s goods or services. There can be no doubt that Gallagher & Robertson’s continuing use of the name Gmail for their e-mail service for 15 years has resulted in their acquiring the right by usage, and that Gmail is therefore a protected trademark under Norwegian law. This is confirmed by the fact that among Gallagher & Robertson’s and Google’s customers doubt has arisen about which supplier stands behind the Gmail name. This has happened both in Norway and abroad. According to the Trademarks Act Section 14 first paragraph sub-paragraph 7 it is illegal to take into use a trademark that is already in use by another if one is aware of the prior usage. A party such as Google must be expected to know of, or find out about, what is in fact already in use by other parties in this sector before launching a new trademark.”

A comment (11.58am) from Shane Smith at IIIR in response to the above:

…as we have previously said, that if another party emerges with superior rights to a trade mark that is confused with ours, we would concede to that party. Google’s problems, on the other hand, seem to be compounding with the emergence of G&R in addition to the owner of the rights in Germany and IIIR.

and there’s more detailed comment from IIIR here and here which show IIIR’s continued determination to protect its use of the Gmail name.

Update 1 November. Here’s Google’s response: “Nothing further to add to our previous statement”.

More news when I get it…