Official Law Firm of the Australian Open
3 November 2006
By Express Post
By Email: one@goog lebay. corn. a u
Mr Dmitri Rytsk
16 Jocelyn Street
NORTH CURL CURL NSW 2099
Dear Mr Rytsk
Melbourne | Sydney
Our reference
JAFABW.1781284
Google Inc. Potential Trade Mark Opposition and Trade Mark Infringement, Misleading & Deceptive Conduct and Passing Off
We act for Google Inc.
Google Inc. is a public company incorporated in the United States of America and its main business is focused on internet search services. Google Inc. operates web sites at many international doma ins with the most visited being www.google.com. The Google search engine is widely recognised as the "world's best search engine" because it is fast, accurate and easy to use. Google Inc. also services corporate clients, including advertisers, content publishers and site managers with cost effective advertising and a wide range of revenue generating search services.
Google Inc. is the registered owner of the following trade marks in Australia for the mark "GOOGLE":
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Australian Trade Mark No. |
Trade Mark |
Class(es) |
Priority Date |
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788234 |
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9: Computer hardware; computer software including |
1610911998 |
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computer software for searching, compiling, indexing |
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and organizing information within individual |
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workstations, personal computers or computer networks; |
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computer software for electronic mail and facilitating |
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workgroup communications over computer networks; |
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computer software for creating indexes of information, |
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web sites or other resources |
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38: Providing electronic mail and workgroup |
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communication services |
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Level 29
200 Queen Street
GPO Box 4388 .1 bourne VIC 3000 Partner Contact
Melbourne VIC 3001 Australia Tony Watson Jonathan Feber
DX 405 Melbourne telephone: +61 3 9206 2000 telephone: (03) 9205 2000 telephone: (03) 9640 4375
www.middletons.com.au facsimile: +61 3 9206 2055 tony.watson@middletons.com.au jonathan.feder@middletons.com.au
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Australian Trade Mark No. |
Trade Mark |
Class(es) |
Priority Date |
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42: Computer services in this class, including on-line |
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personalized information services; information extraction |
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and data mining; providing access to proprietary |
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collections of information; creating indexes of |
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information, web sites and other information sources; |
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providing information concerning a wide range of text, |
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electronic documents, databases, graphics and |
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audiovisual information |
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1049124 |
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16: Books; manuals; notebooks; notepads; pens; |
0410412005 |
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greeting cards; stickers; decals; sticky notes |
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25: Clothing; footwear., headgear |
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35: Dissemination of advertising for others via the |
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Internet |
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(the Google Trade Marks).
It has come to our client's attention that you have applied to register the following trade mark which was advertised for acceptance in the Official Journal of Trade Marks on 19 October 2006:
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Australian |
Trade Mark |
Class(es) |
Priority Date |
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Trade Mark |
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No. |
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1118972 |
GOOGLEBAY |
35: Consumer market information services |
16106/2006 |
(the GOOGLEBAY Trade Mark).
Our client has instructed us to oppose registration of the GOOGLEBAY Trade Mark on the basis that it is substantially identical with andlor deceptively similar to the Google Trade Marks in relation to the same andlor similar services for which they are registered. Google Inc. is concerned that should the GOOGLEBAY Trade Mark proceed to registration and be used in Australia then this will result in confusion within the marketplace due to the similarity between the GOOGLEBAY Trade Mark and the Google Trade Marks and the services being offered by reference to these marks.
Our client has also become aware that you have registered the domain name www. goog lebay. com. au (the Domain Name), and that you are using the Domain Name to host a website (the Website which features the GOOGLEBAY Trade Mark and includes a search page that adopts a similar layout to our client's "Google" search engine.
Your use of the Domain Name and the GOOGLEBAY Trade Mark, and the layout of the Website constitute an unashamed attempt to take advantage of our client's reputation and goodwill, and are aimed at confusing and misleading consumers into thinking that the Website andlor the business run by you share some connection or relationship with our
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Our client is totally committed to protecting its legal rights which stem from its established reputation, goodwill and trade mark rights.
The conduct described above and carried out by you constitutes:
1 an infringement of the Google Trade Marks in breach of s120 of the Trade Marks Act
1.995 (Cth) by using the Google Trade Marks (or any of them) andlor marks which are
substantially identical to or deceptively similar with the Google Trade Marks (or any of
them) in relation to the same andlor similar goods;
2. passing off our client's reputation and goodwill at common law by using the Domain
Name, the GOOGLEBAY Trade Mark and by adopting the layout of the Website's
"Search" page;
3. misleading and deceptive conduct in breach of section 42 of the Fair Trading Act 1987
(NSW) (the FTA). Your conduct has misled or deceived, andlor is likely to mislead or
deceive consumers into thinking that the Website and any services you provide by
reference to the GOOGLEBAY Trade Mark are associated with our client, andlor that the
business operated by you is marketed, promoted andlor advertised by our client, or with
its approval or consent; and
4. the making of false representations that you have a sponsorship or approval or
association with our client that you do not have in breach of section 44 of the FTA.
In light o f the above information, our client has instructed us to demand that you comply with the following by 4pm on Friday 10 November 2006:
1 That you immediately file a Notice of Withdrawal with respect to the GOOGLEBAY Trade
Mark. We have attached the completed Notice of Withdrawal Form and demand that you
sign and file this form with IP Australia and provide a copy of this correspondence to
Middletons confirming that the GOOGLEBAY Trade Mark has been withdrawn;
2. That you provide the following written undertaking:
1, Dmitri Rytsk, whether by myself, my employees, servants, agents or otherwise will immediately cease and forever refrain from using any marks which are substantially identical with andlor deceptively to the mark "GOOGLE" andlor any other marks which are registered to Google Inc. 1 will also refrain from filing any trade mark applications with IP Australia for any marks which are substantially identical with andlor deceptively to the mark "GOOGLE" andlor any other marks which are registered to Google Inc; and
3. Thatnk you immediately assign ownership of the Domain Name to our client.
The written undertakings in item 2 above can be provided by executing the enclosed document.
If you do not comply with our client's demands within the time specified then we are instructed to file a Notice of Opposition with respect to the GOOGLEBAY Trade Mark. In addition, we will
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obtain our client's instructions regarding issuing proceedings in the Federal Court of Australia seeking, inter alia, interlocutory and permanent injunctions restraining your wrongful conduct.
Our client reserves its rights in relation to the recovery of damages suffered or recovery of profits made by you as a result of your wrongful conduct.
Yours faithfully
Tony Watson
Partner
encl
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GOOGLE INC.
DMITRI RYTSK
UNDERTAKINGS
1, DMITRI RYTSK of 16 Jocelyn Street in North Curl Curl in the State of New South Wales undertake that:
1, whether by myself, my employees, servants, agents or otherwise will cease and forever refrain from using any marks which are substantially identical with andlor deceptively to the mark "GOOGLE" andlor any other marks which are registered to Google Inc. 1 will also refrain from filing any trade mark applications with IP Australia for any marks which are substantially identical with andlor deceptively to the mark GOOGLE andlor any other marks which are registered to Google Inc.
Date: 2006
Signed by DMITRI RYTSK
in the presence of:
. .
Signature
. .
Signature of witness
. .
Name of witness
(please print)
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