In case T-450/11, the European Commission filed on behalf ofthe European Space Agency (ESA) applied for the CTM (see left) for Class f42  services ‘Research and development in the field of satellite radionavigation’.

Galileo International Technology LLC, filed a notice of opposition on the basis of two earlier CTM’s GALILEO registered for classes 9, 16, 35, 38, 39, 41 and 42 , among others  ‘modems and telecommunication apparatus and instruments; computer software and programmes for business expense reporting’  in Class 9 and in 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 service’ etc.

Both the Opposition Division and Board of Appeal rejected the opposition because they found that all the goods and services covered by those earlier marks to be dissimilar to the services covered by the mark applied for and, consequently, one of the conditions provided for by Article 8(1)(b) was not satisfied.

The General Court dismissed the appeal on the grounds explained here after.

The relevant public is a specialist public of undertakings engaged in R&D in the field of satellites and highly sophisticated localisation software and, thus, those services are  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 — since what was involved was not an industrial activity or a service aimed at the production of goods, but an activity focused on scientific innovation.

 Regarding the  comparison of the goods, as regards the extremely wide definition of research and development proposed by the applicant, the Court has indeed already held that the Commission’s Galileo project is limited to the launching of a satellite radio navigation project as 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 is not undertaking an economic activity since it is not offering goods or services on the market (see, to that effect, Case T‑279/03 Galileo International Technology and Others v Commission [2006] ECR II‑1291, paragraphs 116 and 117).

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 is not an industrial activity or a service aimed at the production of goods, but is focused on scientific innovation.

It follows that there can be no complementary connection between, on the one hand, the goods and services which are necessary for the running of a commercial undertaking and, on the other, the goods and services produced or supplied by that undertaking.

The goods in Class 9 registered for GALILEO 9 may be used or be necessary for research purposes, but they do not constitute the actual purpose of that research. Furthermore, a specialist public knows that undertakings and institutions engaged in research and development do not themselves manufacture any end products. Moreover, as the ESA correctly states, the purpose of R&D services in the field of satellite radio navigation is not to develop or improve a computer, a piece of software or an electronic apparatus as such but to accumulate knowledge on the basis of which independent undertakings could perform their own research and development in order to develop devices that allow a person’s exact position to be determined and to develop associated services that make use of such positioning capabilities. 

In addition, the BoA did not err either in finding that the data-collection, conversion and circulation services in relation to schedules, availability and pricing in the field of tourism and travel are fundamentally different from R&D in the field of satellite radio navigation. Likewise, the business management activities were different from research and development activities and are  not complementary to them. It is hard to imagine that business management activities are indispensable for the use or performance of research and development in the field of satellite radio navigation, and vice versa. Therefore, the BoA rightly fond that the goods and services at issue are different.