General Court applies narrow interpretation to Class 42 services

In Galileo International Technology v Office for Harmonisation in the Internal Market (OHIM) (Case T-450/11), the General Court has upheld a decision of the First Board of Appeal of OHIM in a case involving a trademark application filed by the European Commission.

In 2002 the European Commission (on behalf of the European Union) filed a Community trademark (CTM) application for GALILEO (and logo) (No 2742273) in Class 42 of the Nice Classification for “research and development in the field of satellite radionavigation”:

This mark was later transferred into joint ownership with the European Space Agency.

Opposition was filed by Galileo International Technology LLC, representing a group of airlines, based on various earlier CTMs including the word mark GALILEO (CTM No 2157501), covering Classes 9, 16, 35, 38, 39, 41 and 42, including:

• “computer programs for use in connection with... market research for the travel industry” in Class 9;
• “information collection and electronic collection, processing and distribution services for data, images and electronic messages” in Class 35;
• “telecommunications services” in Class 38; and
• "collection, processing and distribution services for data, images and electronic messages” in Class 42.

This was dismissed by the Opposition Division. With respect to the applicant’s Class 42 services, the Opposition Division stated that “this could refer to any aspect of satellite radionavigation, from the technical functioning of such systems to their practical applications”, also noting that the applicant had a “project of exceptional expenditure”. The Opposition Division found that Galileo International’s mark had established a reputation for global distribution services, including connecting travel agency locations to airlines, car rental companies, hotel properties, tour operators and all major cruise lines throughout the world. However, neither its registered rights nor its reputation in the goods/services provided was considered similar to the applicant’s services. This decision was appealed.

In other proceedings, the Galileo group of companies (including Galileo International) had brought an action against the European Commission based on the law of commercial and domain names in accordance with Article 8 of the Paris Convention, which was rejected by the Court of First Instance in 2006. The court found that “while the actions of the Commission may be indicative of an intention to carry out an activity in the course of trade, that is not so in the particular circumstances of this case”. The court also observed that by choosing the name of the renowned medieval scientist Galileo, the applicants had opened themselves to the risk that another party could legally use the same famous name. An appeal against this judgment was rejected.

In the present case, the Board of Appeal dismissed Galileo International’s appeal and endorsed the Opposition Division’s finding of dissimilarity between the goods/services, also noting the Court of First Instance’s comments. Interestingly, the Board of Appeal did not address Galileo International’s contention that, by seeking trademark protection, the applicant sought the right to use the mark in the course of trade for services provided to third parties and it was a legal fiction to suggest that the right should be granted because the applicant was not going to use the trademark in the course of trade – as argued by the Commission, which appeared to claim that its mark was to be used more for research than development.

Galileo International appealed to the General Court, claiming that insufficient consideration was given to the “complementarity” of the goods/services in question. This has now been dismissed.

The court held that the activity of research and development (R&D) in the field of satellite radio navigation was not an industrial activity aimed at the production of goods, but was focused on scientific innovation, and no complementary connection existed between the goods/services used for operating a commercial undertaking and those produced by that undertaking - the former being used by the undertaking itself while the latter would be used by its customers. This seems to indicate the R&D services were assumed to be conducted for the benefit of the joint owners rather than R&D provided as a service to third parties.

The court also endorsed the Opposition Division’s position that goods are, by nature, generally dissimilar to services. Rejecting Galileo International’s argument that GPS devices which can process data, collect data and communicate data were complementary to the services offered by the Commission, the court held that:

• the purpose of the Commission’s mark was not the marketing/manufacture of GPS devices, but solely that of R&D in the field of satellite radionavigation; and
• the potential applications of any research having a connection with the communication of data was insufficient to establish complementarity.

In addition, no competition existed between the services because a consumer of data communications services cannot simply replace them with R&D services. Furthermore, a specialist public knows that undertakings and institutions engaged in research and development do not themselves manufacture any end products.

The assessment of the services in this case is not unusual per se, but it is interesting to note that all adjudicating bodies involved applied a narrow interpretation to the broadly drafted Class 42 services, namely “research and development in the field of satellite radionavigation”. While there is some justification in the conclusion that R&D for third parties is at most weakly similar or dissimilar to data-related services, the assumption that the applicant’s services would not be provided to third parties but offered only as 'internal' service is unprecedented. If the applicant’s mark was not intended for third-party use, surely it would be vulnerable to attack in due course and would defeat the purpose of registration. In addition, no account seems to have been taken of the fact that the subject mark, once registered, could be sold to a third party who might have different intentions.

The role of any adjudicating body is to objectively assess the services in normal and fair use (ie, as provided to third parties) - and to disregard the background of the parties involved in the dispute. In this case, it appears that there was some difficulty in divorcing the assessment from the very well-known parties involved. For better or worse, this has set a precedent for future cases.

Sumi Nadarajah, FRKelly, Dublin and Belfast