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.
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
* 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.
* 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