Teamdrive Systems GMBHvGoogle Ireland Ltd
| Jurisdiction | Ireland |
| Judge | Mr. Justice Tony O'Connor |
| Judgment Date | 05 May 2017 |
| Neutral Citation | [2017] IEHC 853 |
| Docket Number | [2017 No. 3001 P] |
| Court | High Court |
| Date | 05 May 2017 |
[2017] IEHC 853
THE HIGH COURT
Tony O'Connor
[2017 No. 3001 P]
AND
Interlocutory injunction – Trade mark infringement – Liberty to renew – Plaintiff seeking an injunction restraining the defendants from infringing the plaintiff’s European Union Community trade mark – Whether the plaintiff ought to be given liberty to renew its application for an interlocutory injunction
Facts: The plaintiff, Teamdrive Systems GMBH, applied to the High Court seeking an injunction pending the determination of the proceedings restraining the defendants, Google Ireland Ltd and Google Commerce Ltd, whether individually or by its officers, servants or agents from infringing the plaintiff’s European Union Community trade mark ‘TeamDrive’, which was registered in Class 9: computer hardware and computer software, and Class 38: data transmissions via computer networks. Nothing more specific was sought in the notice of motion issued on 3rd April, 2017.
O’Connor J delivered judgment on 5th May, 2017. The following order was made on 9th May, 2017: (i) refusing the plaintiff’s application for an interlocutory injunction; and (ii) giving the plaintiff liberty to renew its application for an interlocutory injunction, including liberty to rely on the affidavits filed in the High Court for that application following the conclusion of the challenge to the ex parte order obtained in the District Court of Hamburg on 27th January 2017, or in the event of the plaintiff wishing to contend that there had been undue delay in the prosecution of that challenge.
On the 1st December, 2017, on the consent of the parties before Gilligan J, the proceedings were struck out on terms as agreed between the parties and no order as to costs.
Application refused with liberty to renew.
This judgment concerns an application by the plaintiff for an injunction pending the determination of these proceedings restraining the defendants, whether individually or by its officers, servants or agents from infringing the plaintiff's European Union Community trade mark ‘TeamDrive’, which is registered in Class 9: computer hardware and computer software, and Class 38: data transmissions via computer networks, (“EU trade mark”). Nothing more specific was sought in the notice of motion issued on 3rd April, 2017, which was the last Monday of Hilary term, with the Easter term beginning on 24th April, 2017.
It was submitted that the defendants, in replying affidavits, indicated the steps which would have to be taken if such an order was made. I will deal with that later in the judgment.
The trade mark application filed on 15th December, 2005, led to registration on 26th October, 2006, of the EU trade mark. The name of the registered holder was changed on 2nd February, 2011, to the plaintiff. The Court has learned from uncontradicted affidavit evidence that the customers of the plaintiff have used the plaintiff's services for working collaboratively on electronic files and documents from different locations, computers and mobile devices. The Court also notes the uncontroverted averment that the United Nations' Accredited Diplomatic Council Security Forum has singled out the services provided by the plaintiff under the EU trade mark for its security and high level of encryption.
The plaintiff's target market is accessed throughout the European Union by the internet, while the plaintiff itself is incorporated in Germany. The plaintiff's software is further available to download on platforms such as Amazon Web Services or Microsoft Azure, while original equipment manufacturers resell the plaintiff's products under various guises.
The plaintiff is also the registered holder of a German and United States federal trade mark for similar classes which have been deemed incontestable at law by the plaintiff's trade mark attorney for those jurisdictions. This Court does make any finding in that regard.
The affidavit evidence before the Court refers to global turnover for the plaintiff in 2015 being in excess of €800,000 and an expectation for €1.1 million in turnover in 2016, with further growth in 2017. The plaintiff has registered various domains which provide an English language version of its website. All domains redirect to the English language version of www.TeamDrive.com.
The chief executive of the plaintiff, Mr. Oboda, explained on affidavit that most of the plaintiff's turnover occurs in Germany, with some 3% to 1% in the Netherlands, Austria, Finland, United Kingdom and Belgium and a tiny percentage in Ireland. About €100,000 of turnover has arisen from global sales outside the European Union.
The plaintiff's principal activity, as described, is distributed under the EU trade mark and similar trade marks registered in Germany and the United States of America.
The defendants are indirect subsidiaries of Google Inc., which provide a range of services to users based in Europe, the Middle East and Africa. One of those services is called “G Suite”, formerly known as “Google Apps”, which is a suite of cloud-based applications which accommodate, inter alia, storage, filing and editing of shared e-mail, calendars, documents, PDFs and videos. “Google Drive”, launched on 24th April, 2012, is an application of the G Suite service which is utilised globally.
The defendants are at pains to describe the collaborative working of individuals through a feature of Google Drive known as “Team Drive”. The feature, according to the defendants, allows secure handling of large volumes of files which are created and stored in the cloud. Team Drive is listed as a feature in a taskbar on a web page which includes “My Drive”, “Recent”, “Starred” and “Trash”. The defendants maintain in these proceedings that “Team Drive” is a generic type term which they are entitled to use without infringing the EU trade mark. It is sold with the benefit of the goodwill and trade mark of Google and its various entities.
The following chronology is clearly not exhaustive and the parties, throughout the course of the last four days, have laid emphasis on many other facts. Considering the relevant legal issues for the grant of an interlocutory injunction, the Court believes that it is best to set out this type of summary first.
2013-2016 According to Mr. Vogenthaler, (group product manager for Google Drive at Google Inc.), his predecessor, in 2013, created the designation “Team Drive” without any knowledge of the plaintiff's products. He explained that the designation went from “Drive For Teams” to “Shared Drives/Team Ownership” in 2014 and remained “Team Drive” until 2016, when it became “Team Drives”. He then exhibited what he called a clearance search for Team Drive to justify the use of the designation “Team Drive” in the English language versions of Google Drive. That clearance search was conducted on 19th July, 2016, and the impression given to the Court, following exchanges with counsel, was that this was the first time that the principal person handling the development and distribution of Team Drive and Google Drive became aware of a potential conflict with the plaintiff. This fact may be the subject of specific evidence and cross-examination at the plenary hearing of these proceedings. Suffice to say that the information put forward on behalf of both parties in this application accentuated the best points in their favour, while the Court makes no finding about the extent of candour displayed by the various deponents for the parties.
29.09.16 A G Suite update alert was issued about the new Early Adopter Programme called “Team Drive” and a new hangout video meeting experience. The Early Adopter Programme envisaged trials by users of the Google Drive.
17.10.16 The senior vice president and general counsel of Google Inc. received a letter from the plaintiff's New York lawyers in respect of intellectual property matters which highlighted that “TeamDrive” was an international software manufacturer that specialises in creating solutions for secure and collaborative work online. The lawyers expressed surprise that Google Inc. had announced the proposed launch of a new product called “Team Drive” and gave various references with weblinks for the plaintiff's trade mark. There is no doubt that the plaintiff was asserting its intellectual property right through the trade mark at this stage.
This was also the date on which Google's enterprise-focused Cloud Next conference in San Francisco on 17th March was announced, with a further blog that the conference would include a presentation on Team Drives.
21.11.16 Lawyers in Washington DC, in reply to the letter of 17th October, referred to Team Drives within the Google Drive product. In short, the Washington lawyers asserted that the use of TeamDrive was “textbook descriptive use”. Interestingly, the letter kept repeating that it was for settlement purposes only. The letter, in the context of the issues now before the Court, referred to only one version of Team Drive as it is used in various forms within the Google Drive product.
21.11.16 A director of the plaintiff applied to Google to be accepted into the Early Adopter Programme where the new feature could be explored.
08.12.16 The plaintiff's New York lawyers replied to the Washington lawyers for Google Inc. referring to various cases in the United States which challenged the view expressed for Google that it was making fair use of the plaintiff's trade mark, before expressing extreme concern that the actions of Google would cause confusion and diminish the value of the plaintiff's intellectual property. Significantly, the lawyers did not allege that it would obliterate the...
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