In simple terms, the ball does not go in the direction expected, namely away from the batter, but rather in, towards him. By all accounts, a Googly is a very difficult delivery for a bowler to perfect and equally difficult for the receiver to anticipate.
Unconvinced by how difficult a Googly might be, Sport Leadership Innovations (SLI) bowled one at Google Inc, and got smashed over the boundary for its trouble.
In 2009, SLI, the manufacturer of a cricket board game, and proprietor of three trade mark registrations for the word Googly launched an application in the Pretoria High Court for an interdict against Google Inc alleging, among other things, that the latter's use of its trade mark, Google, infringed its Googly trade mark. One of the trade mark registrations that SLI owned was in class 35 in respect of advertising services. Google's primary revenue stream flows from selling advertising space on the Internet.
The whole matter had the promise of an intriguing contest, redolent perhaps of a high octane cricket match between South Africa and India.
From a pure trade mark infringement perspective, the allegation that Google and Googly were confusingly similar was not entirely without merit. In infringement cases the test is an objective one, and theoretically, no regard is had to the surrounding circumstances — the court is asked to determine whether, having regard to the visual and audible structures of the two words, as well as any conceptual meanings, could the reasonable person believe that advertising services sold under the brand Google and those same services sold under the brand Google emanate from the same source.
Reverting to the cricket analogy, it should have been a quick fire 20/20 game. What made it into a potential five-day test arose from the facts.
Google contended,inter alia, that SLI had not used its trade mark Googly in South Africa or, if it had, it had not used the mark to sell advertising services, but merely to sell their Googly cricket board game. Marketing one's own product does not constitute 'advertising services,' and based on these contentions, a counter-application was filed to expunge of the Googly trade mark registration.
In response, SLI argued that it was indeed selling advertising services by virtue of advertising space offered on the board game itself, being a miniature version of the Wanderers cricket ground as it were, and that its website offered those services. The fact that not one board game had ever been sold did not, in SLI's estimation, obviate the fact that it was indeed offering valid class 35 services.
While acknowledging that SLI had been the first to file its trade mark, Google Inc alleged that its own trade mark Google had become known to Internet users not long after the date of filing of the Googly trade marks and it effectively had concurrent trade mark rights. On the strength of this argument, Google amplified its counter-application by asking that the main application be stayed, pending registration of its Google trade mark.
To complicate the case further, Google alleged that, even were SLI to succeed in the main case of infringement, a judgement against it would be without force of effect since its servers were stationed outside the jurisdiction of the court in the USA. With all these allegations and counter allegations the game was truly on but, as is often the case in cricket, the result was anti-climactic when, in March this year, the court simply found that Googly and Google were not confusingly similar. Part of the reason for the judgement was the fact that Googly had been registered in a logo format combined with a device, which, when compared to the word Google, bore no visual resemblance to the latter. This, plus the fact that the two marks were, as evidenced by their dictionary definitions, conceptually very different, assisted the court in concluding that the marks were not confusingly similar.
Having found a lack of confusion with regard to the marks, it was not necessary for the court to deal with the more complex questions that were posed.
Perhaps it could be said that SLI lost by an innings.
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