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Sunday, 19 October 2014

Galileo sees stars as ESA logo marches on

Galileo back in court.  The original Galileo Galilei was no stranger to dispute, and it seems that one of the many businesses that has borrowed his name has been following in his footsteps -- with nothing much to show for it in the courts of Europe [you can get a feel for Galileo's recent track record in IP litigation by reviewing earlier Katposts here].  So let's take a look at Case T-450/11 Galileo International Technology LLC v OHIM, the European Commission and the European Space Agency (ESA). This is a decision from the General Court of the European Union (Ninth Chamber) last month which reflects the opinions long held by this Kat that (i) some appeals to the General Court are marked with a message in big red capitals that state "THIS APPEAL IS A COMPLETE WASTE OF TIME", in a magical letters that can be read by everyone except the appellant and that (ii) pretty well all appeals to the General Court in intellectual property disputes against the European Commission and its organs are destined to fail in any event.


What happened in this case to cause those big red letters to spring up? The facts are like this. Back in June 2002 the European Commission filed, on behalf of the European Union, an application to register as a Community trade mark the rather attractive figurative sign represented on the right.  The service for which registration was sought was unusually narrow: “research and development in the field of satellite radio navigation” (Class 42).  

In February 2003, following publication of the application, the Commission transferred half of the rights in the mark applied for to the European Space Agency. A month later Galileo opposed this application, citing  two earlier Community word mark registrations for the word GALILEO, for a large number of goods and services in Classes 9, 16, 35, 38, 39, 41 and 42. Most of the goods and services were quite dissimilar to “research and development in the field of satellite radio navigation”, while others -- while not being close -- were not so totally distant, for example 
Class 35: ‘Providing office and business management services and information compilation, storage and retrieval services in the travel field for others; electronic collection, processing and distribution services for data, images and electronic messages; electronic on-line information services, namely the provision of advertisements and business information in respect of travel, tourism and entertainment through a computer database by telephone link; advertising and promotion by data communications for hotels, hoteliers and the travel industry; on-line direct electronic marketing services and advertising services for hotels and the travel industry, for others’; 
 Class 38: ‘Telecommunication services in the nature of transmission of data, electronic data transfer services, network services, all relating to computerised information retrieval systems; communication services relating to the provision of on-line electronic data transmission facilities for the communication and distribution of information, images and electronic messages by computerised databases; data communications and bulletin board services’.
Said Galileo, on account of the similarity of the respective marks and the similar nature of the goods and services for which registration was sought or had been granted, there was a likelihood of confusion of the relevant consumers under Article 8(1)(b) of Regulation 40/94 (now Regulation 207/2009).

Never mind SatNav: with
CatNav, Pushkin is never lost
In September 2005 the Opposition Division rejected the opposition: the service covered by the mark applied for was not similar to the goods or services covered by the earlier marks, regardless of any similarity of the signs at issue.  In April 2011 the First Board of Appeal of OHIM dismissed Galileo's appeal, reiterating that none of the goods and services covered by those marks were similar to “research and development in the field of satellite radio navigation”.  Galileo then applied to the General Court to annul the decision of the Board of Appeal on the sole ground that the Board of Appeal did not take account of the fact that there was a high degree of similarity between the goods and services covered by the earlier marks and the service covered by the mark for which registration was sought, whether on the basis of actual similarity or on the basis that they were complementary.

The General Court dismissed Galileo’s appeal. In its view:

* It was not disputed that research and development in the field of satellite radio navigation covered by the mark applied for was aimed at a specialist public of undertakings engaged in research and development in the field of satellites and highly sophisticated localisation software [this must be one of the most specialised categories of consumers ever, thinks Merpel]; those services were not aimed at the general public even though the product resulting from that research could, in the long run, be used by the general public. Why? Because what was involved was not an industrial activity or a service aimed at the production of goods but an activity focused on scientific innovation. 

* Given the specialist nature of consumers of satellite radio navigation R&D services, Galileo had to argue that its earlier marks might also be aimed at a specialist public.  However, there was no definition of research and development that ran wide enough to include the conception and manufacture of goods. Thus
The OECD's definition of ‘research and development', on which the parties relied, referred to the ‘creative work undertaken on a systematic basis in order to increase the stock of knowledge, including knowledge of man, culture and society, and the use of this stock of knowledge to devise new applications’. That definition did not refer to the production of goods or to their marketing. 
A further definition of that term submitted by Galileo, which appears in Article 1(c) of Commission Regulation 1217/2010 on the application of Article 101(3) [TFEU] to certain categories of research and development agreements, provided that research and development means ‘the acquisition of know-how relating to products, technologies or processes and the carrying out of theoretical analysis, systematic study or experimentation, including experimental production, technical testing of products or processes, the establishment of the necessary facilities and the obtaining of intellectual property rights for the results’. However, recital 6 in the preamble to Regulation 1217/2010 expressly excluded the stage of industrial application from the concept of research and development.
* The General Court had in earlier proceedings already held that the Commission’s Galileo project was limited to the launching of a satellite radio navigation project, this being the European response to the American GPS and Russian Glonass systems, to providing financial support for the project’s research, development and deployment phases, as well as to establishing the appropriate framework for the subsequent economic operational phase. In doing so, the Commission was not undertaking an economic activity since it was not offering goods or services on the market. Consequently the Board of Appeal did not make any error of assessment in finding that the activity of research and development in the field of satellite radio navigation was not an industrial activity or a service aimed at the production of goods, but was focused on scientific innovation. [This raises an interesting question, says Merpel: if the Commission was not undertaking an economic activity or an industrial activity, what does it need a Community trade mark for? And what criteria will be invoked for establishing whether genuine use has been made of it?]

* Goods and services are only complementary if they are closely connected in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot therefore be complementary. Here there could be no complementary connection between the goods and services which are necessary for the running of a commercial undertaking and those which are produced or supplied by that undertaking: those two categories of goods or services are not used together since those in the first category are used by the relevant undertaking itself while those in the second are used by customers of that undertaking.

This ruling, available so far only in English and French, looks right in law and will, in this Kat's view, be upheld in the event that Galileo appeals further to the Court of Justice.  He still wonders why so much time, effort and money is spent by both sides in seeking to carve out a niche entitlement to use the word Galileo, in literal or pictorial format, when there are so many good folk already using the name for various purposes and it's not as if they are going to encounter the sort of obstacles to brand extension that face owners of brands for popular consumer goods.  

Galileo Global Branding Group here
Galileo Research & Strategy Consultancy here
Galileo Open Air Cinema here
Galileo Telescope Makers here
Galileo BioScience here
How to pick the perfect brand name here

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