Galileo International Technology, LLC v European Union (Formerly European Community)
| Jurisdiction | England & Wales |
| Judge | THE HON MR JUSTICE FLOYD,Mr Justice Floyd |
| Judgment Date | 20 January 2011 |
| Neutral Citation | [2011] EWHC 35 (Ch) |
| Docket Number | Case No: CH/2010/0436 |
| Court | Chancery Division |
| Date | 20 January 2011 |
[2011] EWHC 35 (Ch)
The Hon Mr Justice Floyd
Case No: CH/2010/0436
Simon Malynicz (instructed by Marks & Clerk Solicitors LLP) for the Appellant
Mark Vanhegan QC (instructed by Mewburn Ellis LLP) for the Respondent
Hearing date: 14 th January 2011
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Mr Justice Floyd :
This is an appeal from the decision of Mr David Landau, for the Comptroller, dated 28 th May 2010. That decision was initially provisional, because he gave directions to allow the registered proprietor, Galileo International Technology, LLC ("GI") to comment on revised specifications of goods. It became final by virtue of a further decision dated 2 nd July 2010, when GI had not availed itself of that opportunity.
The appellant, GI, is the registered proprietor of the following United Kingdom trade marks for the word mark GALILEO, registered in respect of the goods, and in the Classes, identified:
| Number | Date registration process completed | Specification of goods | Class |
| 1319477 ("477") | 2 March 1990 | electrical and electronic apparatus and instruments; computers; data processing apparatus; parts and fittings for all the aforesaid goods; all included in Class 9 | 9 |
| 1419333 ("333") | 3 March 2000 | electrical and electronic apparatus and instruments; computers; word processors; data processing apparatus; electrical and optical data processing apparatus; apparatus and instruments; all for the retrieval, storage, input, processing and display of data; semi-conductor memory apparatus; micro processors; computing apparatus; keyboard apparatus for use with computers; printers for use with computers; computer programmes and computer software; punched (encoded) cards and punched (encoded) tapes; magnetic tapes and discs; disc drives; modems; electrical and electronic communication apparatus; computer communication apparatus; parts and fittings for all the aforesaid goods; all included in Class 9 | 9 |
| 1419651 ("651") | 18 May 1992 | computer services; computer programming; design of computer software; all included in Class 42 | 42 |
In January 2006 the applicant for revocation, originally the European Community (now the European Union), represented by the European Commission, filed applications for revocation of the three registrations. No point is taken about the identity of this somewhat unusual party. The name GALILEO is the name for the European satellite navigation research program. I am told there is European-wide litigation about these marks.
The applications for revocation were based on section 46(1)(a) of the Trade Marks Act 1994 ("the Act"). That section provides as follows:
"(1) The registration of a trade mark may be revoked on any of the following grounds -
(a) that within a period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use."
It follows from the terms of that section that an application for revocation of a trade mark will fail if it is proved that there has been genuine use of the mark by the proprietor or with his consent within the five-year period mentioned. Moreover section 46(3) provides:
"(3) The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1)(a) or (b) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five-year period and before the application for revocation is made.
Provided that any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption again for the proprietor became aware that the application might be made."
Based on the applications for revocation, the Hearing Officer revoked 477 in its entirety and partially revoked 333 and 651 (by restricting the specifications of goods).
The evidence and argument before the Hearing Officer concentrated on the period 2000 to 2005. As the Hearing Officer records, almost all of the evidence of GI as to use of the marks was furnished by a Mr Morgan who is the independent trade mark attorney acting for GI in the UK. Broadly, that evidence was given by exhibiting, without describing, large numbers of documents. The Hearing Officer said this about Mr Morgan's evidence:
"He … gives no details of turnover in relation to specific goods and services. … The evidence that has been furnished lacks clarity and specificity in relation to date, jurisdiction and the exact nature of the goods and services in relation to which GI claims the trade mark has been used."
Notwithstanding this, the Hearing Officer conducted a painstaking and detailed analysis of the exhibits, doing the best he could to determine what they established in the absence of explanation from the proprietor. Given the absence of narrative explanation, he had no option but to do so. His main conclusions as to computer hardware were set out in paragraph 14 of his decision:
"… putting aside software, the evidence of use in relation to goods effectively boils down to a couple of pictures of PCs bearing the Galileo name and device, a computer mouse bearing the name Galileo and invoices referring to Galileo PCs. The evidence shows that part of the package that GI furnishes includes the rental or sale of equipment. Use of a sign for rental and sale of equipment is not the same as use of the sign for the goods. Equipment that is being rented is most likely to bear the renter's name or trade mark to identify the goods as belonging to it. The pictures of the PCs and mouse have no provenance. However even if they did all that this indicates is that the goods have been rented or are used for accessing the Galileo systems, not that GI is creating or maintaining a market in computer hardware. … The invoices that refer to Galileo PCs can simply refer to computers that GI has rented to an undertaking. If GI was maintaining or creating a market in computer hardware one would expect to see documentation relating to the capabilities of the equipment e.g. the nature of the processor, the speed of the processor, the Ram, the main memory capacity and the nature of the connections. There is no such documentation. One would also expect to see brochures and manuals of such equipment, none has been adduced. On the other hand there is clear identification of the equipment of other undertakings e.g. Oki, Sprite, UNIX, IBM, Tandem, Dell, Unimark and Data General. There is also clear identification of the hardware and operating system requirements for the use of Galileo applications."
In relation to software, the Hearing Officer held at paragraph 20 of his decision:
"The only goods for which use has been shown is computer software for travel and accommodation reservations. "
That finding is attacked by GI, on the basis that wider use had been shown.
The approach on appeal
This is an appeal brought pursuant to section 76 of the Act. Such appeals are not by way of a rehearing but are a review. The principles were set out by Robert Walker LJ in Bessant and others v South Cone Inc [2003] RPC 5, at paragraphs 17 to 30. Robert Walker LJ said at [28]:
"The appellate court should in my view show real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle."
At paragraph 29, Robert Walker LJ said this:
"The appellate court should not treat a judgement or a written decision as containing an error principle simply because of its belief that the judgement or decision could have been better expressed."
In that case the High Court judge had reversed the decision of a Hearing Officer. The Court of Appeal held that he had been wrong to do so. Robert Walker LJ in dismissing the appeal said this:
"I consider that the Hearing Officer did not err in principle, nor was he clearly wrong."
I conclude that, unless I am satisfied that the Hearing Officer made an error of principle, I should be reluctant to interfere. I should interfere if I consider that his decision is clearly wrong, for example if I consider that he has drawn inferences which cannot properly be drawn, or has otherwise reached an unreasonable conclusion. I should not interfere if his decision is one which he was properly entitled to reach on the material before him.
The grounds of appeal
Incorrect legal standard
By its first ground of Appeal, GI submits that the Hearing Officer applied the incorrect legal standard to the assessment of the evidence in relation to genuine use. The Hearing Officer cited as "a convenient summary of the criteria relating to genuine use" a decision of the General Court (then the CFI) in Anheuser-Busch Inc v OHIM, Case T-191/07 [2009] ETMR 50. The criticism which is made is that, in so doing, he was relying on a decision under the Community Trade Marks Regulation rather than, as he should have done, under the Trade Marks Directive. Appeals in the former case go to the General Court and from there to the Court of Justice. National trade marks are governed by the Directive, on which CJEU provides guidance. Mr Malynicz, who appeared on behalf of GI focused on...
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