In a decision that confused many, with the intention of separating it’s profit-making businesses from its ‘moon-shot projects’ (Nest, a maker of smart thermostats, Calico, a company focused on longevity, and others), Google is reorganizing into a conglomerate, and BMW might have reason to be peeved.
Why, you ask? Because they’re going to call the Silicon Valley giant’s holding company what BMW already calls one of its subsidiaries– Alphabet.
While the development amused/surprised/confused many, BMW decided to cash in on the hype rather peculiarly, soon after Google let the Alphabet out of the bag.
James B Stewart of the ET quite recently, aptly noted – G is for Google and G is also for genericization. The word ‘google’ looks like it is on the last leg of its journey to becoming cent percent generic, joining a select (privileged?) group of words, including but not limited to Band-Aid, Xerox, Skype, FedEx.
Considering that there are currently nearly 103 trademark registrations in the USA that include the word “alphabet” and its close variations, the uniqueness of this name might also very well be under question. Is the word ‘alphabet’ too lunging towards becoming a part of the common English vocabulary?
BMW’s Alphabet currently operates in atleast 18 countries, providing corporate vehicle fleet services and supplying nearly 530,000 vehicles to its customers. The company also owns the alphabet.com domain name – forcing Google to pursue other alternatives (it finally settled on abc.xyz). With Google now becoming a subsidiary of its holding company Alphabet Inc, has the company really infringed upon BMW’s trademark rights?
For trademark infringement to be successfully proved, the “likelihood of confusion” between the two brands amongst the consumers, must be established– something that looks to be rather difficult in the present scenario. While Google itself has indirectly entered the auto industry – a version of its Android operating system is used in cars, and it has carried out extensive research on the self-driving car model – the same cannot be said for Alphabet Inc. Larry Page, Google co-founder and recently crowned CEO of the Google’s new holding company has stated – “(We) are not intending for this to be a big consumer brand with related products – the whole point is that Alphabet companies should have independence and develop their own brands.” This makes it rather difficult to place the Alphabet business in one definitive class. Taking into account Page’s words and the situation as it stands today, it might be safe to presume, for the moment, that no product or service is intended to be manufactured or marketed under the ‘Alphabet’ brand – does this effectively dispel the very possibility of consumers mistaking one for the other?
Probably not, if you also take into account the fact that BMW has partnered with Baidu to start its very own version of the self-driving car. One way to look at this conundrum of sorts, is that where one of Alphabet Inc’s most significant subsidiaries, i.e. Google, might very well soon be a car company, this could give rise to legit ground for BMW to file a trademark infringement case on account of “likelihood of confusion”. The other, is that Alphabet Inc and Google have only but an owner/subsidiary relationship, each company having its own unique branding, separate and independent of the other – essentially implying that Google’s similarity with BMW’s Alphabet cannot automatically imply Alphabet Inc’s similarity with BMW’s Alphabet. This second approach would essentially imply that even if Google (not Alphabet Inc) were to create its self driving car and do what BMW’s Alphabet is doing in Europe – I,e,, lease out its cars, this cannot possibly create a likelihood of confusion even if the BMW-Baidu self-driving car becomes a reality, because Google is Google, Alphabet is Alphabet and Google is not Alphabet.
It is going to be rather interesting to see what BMW has to say about this – so far it only claims to be looking into the issue’s legal implications. Meanwhile, I cannot help but think that if the tables were turned, Google might very well have gone out of its way to crucify BMW for daring to infringe their trademark.
Readers, do write in with your take on this issue !
Great article. While your article does indeed cover the basics and theoretical aspects of trademark infringement such as the fact that one can claim infringement only if it relates to use of the same product class or field, in reality it is not so simple.
As we live in the age of constant globalization, where brands are known generically all over the world, even the use of trademark in an entirely unrelated product class or field will allow for an action for infringement since there will always be the aspect of “confusion to the public”. It will be interesting to see how this aspect of trademark law develops in the coming decade.