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Tuesday, 25 January 2011

Galileo and the case of the ventilating hearing officer

The original Galileo
There has been a fair bit of bad blood between Galileo -- not the astronomer but the company -- and the European Commission in recent times over use of the word 'Galileo' by the EU for its satellite navigation system project (for samples of bad blood click here, here and here). The latest twist in the saga occurred last week, in the majestic surroundings of London's Royal Courts of Justice.  The event in question was Galileo International Technology LLC v European Union (formerly European Community) [2011] EWHC 35 (Ch), in which Mr Justice Floyd in the Chancery Division, England and Wales, delivered his judgment last week.  Still not yet on BAILII, this is an appeal by Galileo against the decision of a hearing officer at the UK Intellectual Property Office (IPO) to revoke one and partially revoke two of its UK trade mark registrations of the word GALILEO (Classes 9 and 42: goods and services relating to computer hardware and software) for lack of genuine use.

The original European Community
The European Union had sought revocation of Galileo's marks under the Trade Marks Act 1994 s.46(1)(a) for non-use.  Galileo said it had used its marks and submitted evidence to support this contention.  This consisted mainly of what the judgment describes as "the exhibiting, without description, of a large number of documents". The hearing officer thought this evidence lacked clarity and specificity regarding the use claimed, concluding that there had been no genuine use in relation to computer hardware and only a limited use in respect of software. Accordingly he revoked one mark in its entirety and partially revoked the other two by restricting the specification of goods.  Galileo was generously given four weeks to suggest alternative specifications for its registrations, based on the hearing officer's findings, but failed to do so.

On appeal, Galileo argued that the hearing officer had got it wrong.  First, he had applied the incorrect legal standard to his assessment of the evidence in relation to genuine use by imposing a quantitative threshold rather than a qualitative one.  Secondly he shouldn't have partially revoked the trade marks since the pleaded attack on the marks extended only to the entire specification of goods, providing an inadequate opportunity to deal with the proposed limitations.

Floyd J allowed the appeal in part.  In his view

* It was common ground that "there was no qualitative quantitative threshold" that use had to satisfy before being taken into consideration when establishing genuine use of a trade mark. It was therefore for Galileo to establish that the hearing officer had imposed a quantitative threshold when evaluating the evidence of use. In this case it was plain that the officer had not.

* Nor was there any no basis on which to suggest that the hearing officer had applied any special standard of proof to his evaluation of the evidence: all he did was to make the best determination of what use had been made of the mark in the difficult circumstances presented by the manner in which Galileo's evidence had been prepared.

* An applicant for revocation who believes that a mark had not been used at all within the relevant period in relation to any of the goods or services for which it is registered is entitled to plead that case, following which it is for the proprietor to plead what use it had made of the mark. While the burden of proof and the obligation to plead facts were different things, the burden of proving use was on the proprietor. The battle between the parties in revocation proceedings would thus usually be over the categories of goods on which the proprietor claimed to have used the mark. If the claim to actual use covered anything less than the entire specification, the unused portion was vulnerable to revocation, as every proprietor had to appreciate.

* A proprietor faced with an unrestricted application for revocation could not seriously claim to be taken by surprise by the suggestion that if it failed to prove use across the entire specification of goods, its mark would be revoked in respect of those goods for which use was not shown.

* On the other hand, procedural fairness had to be ensured in all proceedings, particularly where a hearing officer "ventilates possible restrictions to a specification at a hearing which had not previously been addressed in writing".

* A party who was faced with a restriction which took it by surprise -- or which it considered required further evidence which could not otherwise have been anticipated as being necessary -- needed time to ensure that an adequate opportunity was provided to deal with it.

* In this case the hearing officer had not excluded the possibility of further evidence being adduced or of a widening of the specification. It would accordingly have been open to Galileo to make submissions to the hearing officer about the width of the restrictions, even though the officer would not have been bound to accept them.

* Galileo's appeal would be dismissed except for one small triumph, where it was agreed that the words "consultancy in the field of computer hardware" could be included in the formula for the specification in Class 42 of the following  services: “rental of computer hardware, rental and leasing of computer software, installation, maintenance and updating of computer software; consultancy in the field of computer hardware; all for use in relation to travel and accommodation reservations".

The IPKat senses that Mr Justice Floyd was somewhat disappointed that the status of the European Union as a litigant in these proceedings was not challenged, or at least discussed: "No point is taken about the identity of this somewhat unusual party", he said at para.3 of his decision, which rather suggests that someone should make the effort to do just that whenever the European Union is next a litigant in his court.  Merpel is still trying to decide why the judge used the unusual term "ventilate"; still, she muses, it's better for a hearing officer to ventilate an issue than to give himself airs ...

The Kats agree that the word "ventilate" is actually a contraction of "venti" and "latte", which means that a nice fresh coffee is called for.

Galileo and cats here

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