Galileo International Technology, LLC v European Union

On an appeal from a trade mark revocation decision, the court should intervene only for an error of principle, a clearly wrong conclusion, or an unreasonable inference. Genuine use has no minimum quantitative threshold. The assessment is fact-sensitive and must consider all relevant circumstances, including the goods or services, the market, and the scale and frequency of use. An unrestricted revocation application can result in partial revocation where use is proved only for part of the specification; the proprietor bears the burden of proving use. A fair specification reflects the trade and the way the average consumer would perceive the use. Ancillary functions within a software package do not necessarily justify extending the specification beyond its core commercial purpose.

Galileo International Technology, LLC appealed under section 76 of the Trade Marks Act 1994 against decisions of the Hearing Officer, acting for the Comptroller, dated 28 May and 2 July 2010. The European Union sought revocation of three UK registrations for GALILEO under section 46(1)(a), alleging non-use. Registration 477 was revoked in full. Registrations 333 and 651 were partially revoked by restricting their specifications. The appeal challenged the legal approach to genuine use, the partial-revocation procedure, the treatment of computer hardware and software, and the scope of the restrictions.

1. Appellate approach. The appeal was a review rather than a rehearing. Applying Bessant and others v South Cone Inc [2003] RPC 5, the court should show real reluctance to interfere absent a distinct and material error of principle, a clearly wrong decision, or an unreasonable inference. The Hearing Officer was entitled to decide the case on the material before him.
2. Genuine use. There is no qualitative or quantitative minimum threshold before use can be considered. The correct assessment considers all relevant circumstances, including the nature of the goods or services, the characteristics of the market, and the scale and frequency of use. The Hearing Officer’s reference to Anheuser-Busch Inc v OHIM Case T-191/07 [2009] ETMR 50 was an accurate summary of the law and did not impose a quantitative threshold. The evidence did not establish genuine UK use of GALILEO for hardware.
3. Partial revocation and fairness. An applicant alleging complete non-use may seek revocation of the whole specification. If the proprietor proves use only for some goods or services, partial revocation is available under section 46(5) of the Trade Marks Act 1994. The proprietor bears the burden of proving use under section 100. Procedural fairness requires an opportunity to address proposed restrictions, but the Hearing Officer’s directions gave an adequate opportunity to make submissions on the wording and categorisation.
4. Fair specification. The appropriate specification reflects the circumstances of the trade and public perception. Software functionality ancillary to a core travel and accommodation reservation system did not require separate categories for calendars, document management or calculators. Registration 333 was therefore properly restricted to computer software for travel and accommodation reservations.
5. Disposition. The appeal failed in relation to registrations 477 and 333. Registration 651 was also upheld subject to a limited amendment adding consultancy in the field of computer hardware, while retaining the travel and accommodation reservations limitation.

• High Court (Chancery Division): on appeal under section 76 of the Trade Marks Act 1994, the court dismissed the challenges concerning registrations 477 and 333 and allowed a limited amendment to registration 651.
• UK Intellectual Property Office: the Hearing Officer’s decisions dated 28 May and 2 July 2010 revoked registration 477 in full and partially revoked registrations 333 and 651.