Galileo International Technology, LLC v European Union

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 paragraph 102 of Anheuser Busch which says this:

“As to the extent of the use to which the earlier trade mark is being put, account should be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use.”

Mr Malynicz submitted, firstly, that this passage may have been taken by the Hearing Officer as indicating a quantitative minimum amount of use which has to be shown before genuine use can be accepted. Mr Malynicz also submitted, secondly, that the General Court had adopted a stricter approach to the evidential requirements for genuine use than had been adopted elsewhere. He drew attention to paragraph 105 of Anheuser-Busch where the court said:

"Moreover the Court of First Instance has held that genuine use of a trade mark could not be proved by means of probabilities or suppositions, but had to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned"

It is common ground that there is in fact no qualitative quantitative threshold which use must satisfy before it is entitled to be taken into consideration in establishing genuine use of a trade mark: see Ansul BV v Ajax Brandbeveiliging BV [2003] RPC 40; La Mer Technology Inc v Laboratoires Goemar [2004] FSR 38; Laboratoire de la Mer Trade Mark [2005] EWCA Civ 978; [2006] FSR 5.

Nevertheless, as the Court of Justice said in Ansul at paragraph 39:

“Assessing the circumstances of the case may thus include giving consideration, inter alia, to the nature of the goods or services at issue, the characteristics of the market concerned and the scale and frequency of use of the mark.” (emphasis supplied)

The Court summarised the position at paragraph 43:

“When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market of the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark. (emphasis supplied).

So far as the first limb of Mr Malynicz’s submission is concerned, I am unable to detect any difference between the approach taken in the passage cited by the Hearing Officer from Anheuser-Busch and that laid down by the court Court of Justice in Ansul. Indeed, the passages in the former case which the Hearing Officer cited are littered with cross-references to Ansul. It is true that the citation from Anheuser-Busch does not expressly mention the fact that there is no threshold quantitative requirement for the relevant use. Subject to that observation, it seems to me that the passage from Anheuser-Busch is an accurate summary of the relevant law. It certainly goes no distance towards suggesting that there is a quantitative requirement. I cannot believe that if the General Court thought that such a condition existed under the Regulation (in contrast with the Directive) that it would not have said so.

It follows that Mr Malynicz can only make headway with his submission that the Hearing Officer imposed a quantitative threshold if this emerges from other parts of the decision. In other words, he needs to establish that the Hearing Officer did in fact impose a quantitative threshold in his evaluation of the evidence of use. In my judgement it is plain that he did not. It is more convenient to show why this is so in considering the individual trade marks in issue.

So far as the second limb of the submission is concerned, I can see nothing in the Hearing Officer’s decision to suggest that he applied any special standard of proof to his evaluation of the evidence. He was making the best, in the difficult circumstances presented by the manner in which GI’s evidence was prepared, to determine what use of the mark had been made. I do not think that any aspect of his decision is open to criticism on this ground.

In relation to trade marks 333 and 651, GI contend contends by its grounds of appeal that the Hearing Officer should not have partially revoked either trade mark (by restricting the specification of goods as he did) given that the pleaded attack on the mark extended and extended only to the entire specification of goods. No mention, expressly or by implication, was made in the pleading attached to form TM 26(N) of section 46(5) of the Act which provides:

“(5)

Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.”

The Hearing Officer dealt with this point, as follows:

"It is inherent in [sub-section (5)] that where there is [semble non-] use for some goods or services the application shall be revoked for those goods or services, where they fall within the parameters of the application for revocation. The registered proprietor in its counterstatement can identify the goods/services upon which it claims there has been use; it is the counterstatement that sets out the final parameters of the application. In this case in its counterstatements GI states that it has used the trade marks in respect of all the goods (sic) for which they are registered. The corollary of Mr Malynicz’s argument is that if GI does not show use on all of the goods and services of the registrations, the registrations should be revoked in their entireties. The applications will be considered upon the basis of the use, if any shown, and a specification constructed reflective of that use, if it is partial use."

Having rejected what he described as the "pleadings issue", the Hearing Officer formulated what he described as "fair specifications" in relation to each of the trade marks. However, he recognised that the proprietor should have an opportunity of commenting and suggesting amendment. At paragraph 22 of his decision, under the heading "Possible amendment to specifications" he said this:

"At the hearing it was agreed that GI would be granted four weeks from the date of the issue of this decision in order to suggest alternative specifications based on the findings in this decision. Any such specifications must be within the parameters outlined in the decision. Allowing GI this facility is not to be taken as being tantamount to a general review of the findings of this decision. Any proposed specifications must clearly fall within the parameters of the revised specifications.”

I am wholly unimpressed by the pleading point, as such. Whilst the position is obviously different where an applicant for revocation only seeks partial revocation, an applicant for revocation who believes that a mark has not been used at all within the relevant period in relation to any of the goods or services for which it was registered is entitled to plead that case. I agree with the Hearing Officer that it is then for the proprietor to plead what use he has made of the mark. Whilst the burden of proof and the obligation to plead facts are different things, it is nevertheless relevant to note that the burden of proving use is on the proprietor: see section 100 of the Act. In the normal case, therefore, issue will be joined on the categories of goods on which the proprietor claims to have used the mark. If this is less than the entire specification, the unused portion is vulnerable, as every proprietor must appreciate.

The proprietor faced with an unrestricted application for revocation cannot seriously claim to be taken by surprise by the suggestion that, if he fails to prove use across the entire specification of goods, his mark will be revoked in respect of those goods for which use is not shown. Mr Malynicz did not suggest that his clients were unaware that the proceedings might progress in that way. He could not have done so with any conviction, as in relation to another of the GI marks (in issue before the Hearing Officer but not in issue on this appeal) where the case was pleaded in the same way, his clients had proposed amendments to the specification to deal with the revocation application. If he is right on his pleading point, this was a quite unnecessary concession on the part of GI.

However, Mr Malynicz’s real complaint is that his clients had an inadequate opportunity to deal with the limitations proposed by the Hearing Officer. He says that the directions given in paragraph 22 of the decision were so restrictive that his clients would not have been entitled to argue for a wider specification, or adduce any further evidence.

It is of course vitally important to ensure procedural fairness in proceedings of all kinds. It is particularly important where a Hearing Officer ventilates possible restrictions to the specification at a hearing which have not previously been addressed in writing. A party who is faced with a restriction which takes him by surprise, or which he considers requires further evidence which he could not otherwise have anticipated as being necessary needs to take that objection at the time, and ensure that, if necessary, an adequate opportunity is given to him to deal with it.

I propose to consider whether there is any justification for the complaint that there was in fact procedural unfairness in the present case in dealing with the individual registrations where the point arises.

477 is registered in respect of computer hardware. I have already set out the Hearing Officer’s findings in paragraph 14 in relation to the use made on computer hardware. Mr Malynicz focussed on the two sentences:

“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.”

Viewed in isolation, those sentences are not entirely clear. Mr Malynicz submitted that the Hearing Officer had found that there had in fact been sales of computer equipment under the mark Galileo, but then somehow disregarded them. If there had been sales of such equipment and the mark had been used for the goods sold then, Mr Malynicz asks, why has there not been use of the marks in relation to those goods?

I have been shown the relevant photographs and invoices. The Hearing Officer was plainly right not to attach any significance to the photographs. There is no provenance for any of them, and the keyboard is not the standard QWERTY keyboard of the kind one would expect on a computer supplied in the UK. Such specific contracts as were shown to me expressly indicated that no hardware was in fact sold, although the offered package indicated that the supply of hardware was a possibility. The crucial documents were obviously the invoices. The Hearing Officer recorded that these invoices related to undertakings in the United Kingdom and referred to maintenance and rental charges for GALILEO PCs. The context in which words are used is always important. He concluded that use of the term GALILEO PCs in the context of the rental of computers belonging to Galileo and bearing well known manufacturers’ marks could equally be an indication of ownership rather than trade origin.

In such circumstances it is most unlikely that the Hearing Officer was making a positive finding that there had been sales in the UK. It seems to me that, in a somewhat compact fashion, he was explaining that GI did leave open the possibility of selling equipment as part of the package. That possibility is provided for in their terms and conditions. The evidence did not, however, establish any sale of equipment bearing the mark GALILEO within the relevant period in the UK.

I was not shown any case which decided whether merely offering to sell goods under the mark would be adequate to amount to genuine use, and Mr Vanhegan QC, who appeared for the EU, did not submit that offers were irrelevant. He submitted that where, as here, the offer was of a package of software coupled with hardware made by other manufacturers, care is necessary to determine whether the average consumer understands that the mark is being used as a mark for the goods supplied, or for the service of assembling and supplying the package. He submitted that the evidence here as to the offers themselves, and as to how the consumer would have perceived the significance of the use of the mark, did not give the court any basis for reliance on such offers. He submitted that the Hearing Officer was therefore fully entitled to reach the conclusion that he did, that the evidence did not establish genuine use in the United Kingdom in relation to any of the goods within the specification within the relevant period.

In my judgment, with the benefit of the background that the documentary evidence gives one, there are no grounds for criticism of the conclusion which the Hearing Officer reached on this aspect of the appeal. It is here that I have to remind myself of the permissible extent of the appellate jurisdiction. I am a very long way from being able to conclude that the Hearing Officer was clearly wrong.

It follows that there is no basis for suggesting either that the Hearing Officer applied a quantitative threshold to his evaluation of the evidence of use, or that he applied an incorrect standard of proof to his evaluation of the evidence. He conducted the overall assessment of the use and concluded that there had been no genuine use in relation to hardware in the UK within the relevant period. The appeal in relation to 477 fails.

To the extent that 333 covered hardware, the decision reached by the Hearing Officer in relation to 477 drove him to the same result. As the appeal fails in relation to 477, the corresponding attack on 333 fails as well. But 333 extends to computer software as well. The Hearing Officer decided that a fair specification for the goods (subject to any further submissions pursuant to paragraph 22 of his decision) was “computer software for travel and accommodation reservations”. It was, in the end, common ground that the word “reservations” qualifies both “travel" and “accommodation". So the specification is limited to software with that objective.

The unrestricted specification is of enormously wide scope. The Hearing Officer wisely reminded himself of what Laddie J had said about wide specifications for computer software in Mercury Communications Ltd v Mercury Interactive (UK) Ltd [1995] FSR 850. Laddie J considered that:

“… there is a strong argument that a registration of a mark simply for "computer software " will normally be too wide. In my view the defining characteristic of a piece of computer software is not the medium on which it is recorded, nor the fact that it controls the computer, nor the trade channels through which it passes but the function it performs. A piece of software which enables a computer to behave like a flight simulator is an entirely different product to software which, say, enables a computer to optically character read text or design a chemical factory. In my view it is thoroughly undesirable that a trader who is interested in one limited area of computer software should, by registration, obtain a statutory monopoly of indefinite duration covering all types of software, including those which are far removed from his own area of trading interest. If he does he runs the risk of his registration being attacked on the ground of non-use and being forced to amend down the specification of goods. I should make it clear that this criticism applies to other wide specifications of goods obtained under the 1938 Act. I understand that similar wide specifications of goods may not be possible under the 1994 Act."

That was a case decided under the Trade Marks Act 1938, but, like Laddie J, I see no reason why the views there stated should not apply under the Act.

The Hearing Officer having concluded at paragraph 20 of his decision that "the only goods for which use has been shown is computer software for travel and accommodation reservations" added that:

“… the software is used in a clearly defined and specific field. A field in which there is clearly a category of specific software targeted at a specific market ...”

Mr Malynicz challenges those findings. He took me on a tour of three of the items of software marketed by GI: Focalpoint, Viewpoint and Viewpoint Maps. The purpose of doing so was to show me that the functionality of the software extended beyond travel and accommodation reservations.

As to some of this "extra" functionality, I was not satisfied that the wording chosen by the Hearing Officer did in fact exclude it. For example Mr Malynicz submitted that the booking of car hire would be outside the restricted specification. He also submitted that booking coach tours would not be covered. These were not good points. In context, booking of car hire and tours would be within the definition “travel reservation”. Other aspects of the extra functionality are less controversial. For example he drew my attention to the existence of calendars, scratch pads, document management software and calculators which were made available as part of the complete pacakage. However there was no evidence before the Hearing Officer that any of this extra functionality was sold or offered for sale independently of the core travel and accommodation reservation system.

The EU submitted that each of the elements of extra functionality was part of a system for travel and accommodation reservations, and was therefore covered by the Hearing Officer’s restrictions. They also made various criticisms of the documents relied upon by GI, as being either outside the relevant period or not strictly tied to the UK.

In Thomson Holidays Ltd v The Norwegian Cruise Line Ltd [2003] RPC 32 Aldous LJ described the task of the court in setting the correct specification of goods in the following way:

"In my view the that task should be carried out so as to limit the specification so that it reflects the circumstances of the particular trade and the way that the public would perceive the use. The court, when deciding whether there is confusion under section 10(2) adopts the attitude of the average reasonably informed consumer of the products. If the test of infringement to be applied by the court has adopted the attitude of such a person, then I believe it appropriate that the court should do the same when deciding what is the fair way to describe the use that the proprietor has made of his mark. Thus the court should inform itself of the nature of the trade and then decide how the notional consumer would describe such use."

In Animal Trade Mark [2004] RPC 19 Jacob J (as he then was) explained why public perception was relevant:

“The reason for bringing the public perception in this way is because it is the public which uses and relies upon trade marks. I do not think there is anything technical about this: the consumer is not expected to think in a pernickety way because the average consumer does not do so. In coming to a fair description the notional average consumer must, I think, be taken to know the purpose of the description. Otherwise they might choose something too narrow or too wide. Thus, for instance, if there has only been used for three-holed razor blades imported from Venezuela (Mr T. A. Blanco White's brilliant and memorable example of a narrow specification) "three-holed razor blades imported from Venezuela" is an accurate description of the goods. But it is not one which an average consumer would pick for trade mark purposes. He would surely say "razor blades" or just "razors". Thus the "fair description" is one which would be given in the context of trade mark protection. So one must assume that the average consumer is told that the mark will get absolute protection ("the umbra") for use of the identical mark for any goods coming within his description and protection depending on confusability for a similar mark or the same mark on similar goods ("the penumbra"). A lot depends on the nature of the goods -- of a specialist or are they more general, everyday nature? Has there been use for just one specific item or for a range of goods? Are the goods on the High Street? And so on. The whole exercise consists in the end of forming a value judgement as to the appropriate specification having regard to the use which has been made"

It is clear from reading the Hearing Officer's decision as a whole that he was aware that not every aspect of the Galileo system was exclusively directed to the actual process of making travel and accommodation reservations. For example he was aware of Viewpoint Maps. It seems to me that the core question on which he had to decide was whether "computer software for travel and accommodation reservations" was a fair description of the use which the proprietor had proved, notwithstanding that aspects of the functionality of the software package could be used for tasks which were not themselves the making of reservations. The making of reservations was undoubtedly the core function of everything which the proprietor sold. All the extra functionality was ancillary to that purpose.

It is true that in a technical sense one could say that GI was selling software for calendars and for document management. But the Hearing Officer was entitled to come to the conclusion that this is not how the average consumer would have perceived the use. He was plainly entitled to come to the conclusion that this description “reflects the circumstances of the particular trade and the way that the public would perceive the use”. Nor is there anything “pernickety”, nor any element of “Venezuelan razor blades” about such a restriction. The average consumer does not see the sale of a car as a sale of climate control systems or computers or satellite navigation systems, although cars are now often sold with such built-in functionality. These are plainly questions on which different Hearing Officers or different judges may arrive at different views. I am wholly unpersuaded that the Hearing Officer erred by not extending the specification to cover expressly the extra functionality relied on by GI. The limitation which the Hearing Officer arrived at was, in my judgment, clearly a value judgment which he was entitled to reach.

I turn finally to consider whether it was procedurally unfair for the Hearing Officer to have imposed the restriction which he did. As I have indicated, he allowed an opportunity for GI to make submissions on possible amendments to the specifications. Mr Malynicz submitted that this did not cure the procedural unfairness essentially for two reasons. Firstly, he submitted that the directions did not provide any opportunity for GI to put in further evidence as to the appropriateness of the categorisation. Secondly, he submitted that the language in which the Hearing Officer gave the directions meant that GI could not seek a wider specification in any event.

I do not think there is any substance in the first point for two reasons. Firstly, whilst of course the Hearing Officer was concerned to avoid further evidence of alleged use (which GI had already had ample opportunities to adduce), I do not think that the Hearing Officer was in fact excluding the possibility of further evidence relating to categorisation and fairness of the specification. Secondly, the point appeared to me to be more theoretical than real: Mr Malynicz did not give me any real clue as to what evidence GI would have wished to call to challenge the restriction proposed by the Hearing Officer. It is notable that the further evidence sought to be adduced on this appeal did not relate to categorisation, but to further allegations of use.

As to the second point, I do not think that the Hearing Officer was saying in paragraph 22 of his Decision that he was not prepared to go any wider. Alternative specifications were to be “based on” the findings in the decision; there was to be no “general review” of those findings; the amendments were to fall within “the parameters” of the decision. It would, in my judgment, plainly have been open to GI to make the sort of submissions that were made to me about the width of the restriction, although the Hearing Officer would not, for reasons I have given, have been bound to accept them.

For those reasons, the appeal in relation to this mark fails as well.

Here the Hearing Officer limited the specification to:

"rental of computer hardware, rental and leasing of computer software, installation, maintenance and updating of computer software; all for use in relation to travel and accommodation reservations."

In paragraph 64 of his skeleton Mr Malynicz submits:

"The appellant is prepared to accept that, in principle, "computer services" may be considered to be too wide. Accordingly if it is legitimate to carry out the partial revocation exercise at all (which is not admitted), then the appellant would accept the Hearing Officer's decision in relation to rental of hardware (though this should include leasing) and in relation to the rental and leasing of software. In addition, the Hearing Officer was correct to hold that the proprietor had shown use in relation to the installation, maintenance and updating of software (though he should also found that such services had been supplied in relation to both software and hardware, as explained above). He ought to have also made some accommodation for the sale of hardware and electronic components (as he had previously held that there was evidence of such)."

In addition to these points GI raises the procedural unfairness point and the attack on the qualification "all for use in relation to travel and accommodation reservations", both of which are dealt with in relation to 333. Those points raise substantially the same questions in the context of this mark and are disposed of identically. Mr Malynicz did submit, rather faintly, that given the limitations to rental, there was no need for the further limitation to travel and accommodation. I do not see why this follows. If the use of 651 did not extend beyond travel and accommodation, there was no justification for a wider specification in the case of this mark than there was in relation to 333.

Mr Malynicz did not major on the point about leasing hardware. The point about sale of hardware is dependent on the point, which has failed, concerning evidence of use of hardware.

That leaves the point about installation and maintenance of hardware, about which there does appear to have been some evidence of use, albeit within the travel and accommodation reservation limitation. The Hearing Officer pointed out that these were, according to the Registrar’s practice, services within Class 37 and not Class 42. Mr Vanhegan submitted that, given the Registrar’s practice, it would be wrong to register installation and maintenance of hardware in Class 42. Mr Malynicz’s response, in a submission after a draft of this judgment was distributed, is that the specification should be re-worded to include “consultancy in the field of computer hardware”, services which fall properly within Class 42. Although Mr Vanhegan submitted that this was not so, I think the evidence did go far enough to justify this additional wording albeit still subject to the “travel and accommodation reservations” limitation. Although this is the sort of point which GI could and should have taken below, and the Hearing Officer cannot be criticised in any way for not spotting this point, the fact remains that the specification is too restrictive in the light of the evidence. I propose therefore to allow the specification in the amended form:

“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”

Subject to that very limited point, the appeal in relation to 651 will also be dismissed. .