Presence of same word in two marks insufficient for them to be similar

European Union
In Galileo International Technology LLC v Office for Harmonisation in the Internal Market (OHIM) (Case T-488/08, October 6 2011), the General Court has agreed with the Fourth Board of Appeal of OHIM that there was no likelihood of confusion between Galileo Sistemas y Servicios SL (GSS)’s  figurative mark GALILEO and Galileo International Technology LLC (GIT)'s earlier word and figurative marks GALILEO. 
 
GSS applied to register as a Community trademark (CTM) a figurative sign containing the words ‘GSS Galileo sistemas y servicios’:
 
 

Registration was sought for “nautical, surveying and life-saving apparatus and instruments; apparatus and instruments for signalling, in particular antennae and radio beacons” in Class 9 and "telecommunications” in Class 38 of the Nice Classification.
 
GIT opposed this application, maintaining that, on account of the similarity of its own earlier marks to that of GSS and the identity or similarity of goods and services for which they were registered, there was a likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation (40/94). Use without due cause under Article 8(5) was also alleged.
 
GIT relied on two CTMs consisting of the word ‘Galileo’, as well as the two figurative marks below:
 
These marks were, broadly speaking, registered for telecommunications and electronic communications goods and services. The opposition was subsequently widened to include various national unregistered rights, but nothing appeared to turn on them.
 
The Opposition Division of OHIM upheld GIT's opposition, agreeing that there was a likelihood of confusion between the mark applied for and two of GIT's marks: the word mark GALILEO and the ‘Powered by Galileo’ figurative mark. No decision was taken on the issue of use without due cause.
 
This decision was reversed by the Fourth Board of Appeal. The board agreed that the respective goods and services ranged from the identical to the similar; however, the marks were neither identical nor similar "in so far as the ‘Galileo’ component was not dominant within the overall impression of the sign of the mark applied for". GIT appealed.
 
The General Court dismissed the appeal, agreeing that the parties' respective marks were dissimilar. The board was right to conclude that, phonetically, the letters "G, S and S" of GSS's mark were the main elements that the relevant public would take into account: only rarely would they even appreciate the presence of the word 'Galileo’ when the expression ‘Galileo sistemas y servicios’ was articulated in full. Nor was there any visual similarity, thanks to the stylised nature of GSS's mark and the prominence of the letters ‘GSS’.
 
Conceptually, the court held that:
 
"... the word ‘Galileo’ will only be perceived as an element of the expression ‘Galileo sistemas y servicios’ which constitutes the meaning of the dominant element ‘GSS’ and refers to systems and services from an entity whose name incorporates the name of the 16th century Italian astronomer and mathematician. On the other hand, the public will understand the words ‘Galileo international’ as referring to an entity whose name incorporates the name of the Italian astronomer and which is concerned with a business covering several countries."
 
This raises the question as to whether ‘conceptually’ means:
  • what the consumer understands as the meaning of the word;
  • what the consumer understands as the meaning of the word in the context of the entire mark; or
  • what the consumer understands as the meaning of the word in the context of the entire mark and in relation to the goods or services to which it is applied.
The more general the test, the easier it is to find a likelihood of confusion - it is submitted that, since the correct approach is the third, much time and trouble can be saved by not seeking to persuade a court or examiner to contrary effect.
 
Jeremy Phillips, IP consultant to Olswang LLP, London

Get unlimited access to all WTR content