Could Google’s Alphabet infringe on a BMW trademark?

Google’s shock move yesterday (11 August) to separate its internet operations from its research divisions as part of an overhaul that will form new parent company Alphabet could “attract infringement action” from BMW.

BMW, which owns a vehicle leasing company called Alphabet, said yesterday that it is looking into whether Google is infringing on its trademark rights, according to reports.

BMW’s alphabet exists in 18 countries and provides services to companies with fleets of vehicles. In order to prove trademark infringement, BMW would have to prove that consumers are likely to confuse the two brands, which is most likely to happen if the companies offer the same services or products.

Tania Clark, partner and trademark attorney at intellectual property firm Withers & Rogers, says: “If BMW owns a trade mark registration, which covers the US, the company could be in a position to bring an infringement action against Google, particularly as Google has already declared an interest in driverless cars.

“If BMW decides to bring an infringement action and is successful, Google would be in the unenviable position of being forced to backtrack and find a new brand name.”

When making the announcement, Larry Page, Google co-founder, said that the company has no plans to develop products under the Alphabet brand name. He said the company chose the name because it means “a collection of letters that represent language, one of humanity’s most important innovations, and is the core of how we index with Google search”.

“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,” he said.

However, Clark adds: “It is surprising that Google should choose a new brand name for its parent company without considering whether other companies hold any potentially conflicting registrations.

“It is a distinctive and catchy name to choose and the fact that it has been chosen for a specific reason seems to suggest Google may intend using it as a brand name, which will have a presence in its markets, rather than simply as the name of a holding company for management purposes.”

There are 103 trademarks registered in the US that include the word “alphabet” and 12 in the UK and EU, according to Withers & Rogers.

“Regardless of whether Google is intending to use the word ‘alphabet’ as a brand name for any new products or services, this could be sufficient to attract infringement claims from companies that own trade mark registrations offering goods and services in similar market categories to existing Google offerings,” Clark adds.

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