JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
11 September 2014 (*)
(Community trade mark — Opposition proceedings — Application for the Community figurative mark GALILEO — Earlier Community word marks GALILEO — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — No similarity between the goods and services at issue)
In Case T‑450/11,
Galileo International Technology LLC, established in Bridgetown (Barbados), represented by S. Malynicz, Barrister, M. Blair and K. Gilbert, Solicitors,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other parties to the proceedings before the Board of Appeal of OHIM, interveners before the General Court, being
European Commission, represented by J. Samnada and F. Wilman, acting as Agents,
and
European Space Agency (ESA), established in Paris (France), represented by M. Buydens, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 14 April 2011 (Case R 1423/2005-1), relating to opposition proceedings between Galileo International Technology LLC and the European Union,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 August 2011,
having regard to the response of OHIM lodged at the Court Registry on 29 November 2011,
having regard to the response of the Commission lodged at the Court Registry on 22 December 2011,
having regard to the response of the ESA lodged at the Court Registry on 23 December 2011,
having regard to the reply lodged at the Court Registry on 15 May 2012,
having regard to the rejoinder of OHIM lodged at the Court Registry on 30 July 2012,
having regard to the rejoinder of the ESA lodged at the Court Registry on 26 July 2012,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
having regard to the measure of organisation of procedure of 14 March 2014,
gives the following
Judgment
Background to the dispute
1 On 21 June 2002, the European Commission filed, on behalf of the European Union, an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The services in respect of which registration was sought are in Class 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Research and development in the field of satellite radionavigation’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 18/2003 of 24 February 2003.
5 On 14 February 2003, the Commission transferred half of the rights in the mark applied for to the European Space Agency (ESA).
6 On 14 March 2003, the applicant, Galileo International Technology LLC, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the services referred to in paragraph 3 above.
7 The opposition was based, inter alia, on the following earlier rights:
– the earlier Community word mark GALILEO, in respect of which an application for registration, under No 170167, was filed on 1 April 1996, for goods and services in Classes 9, 39, 41 and 42 corresponding, for each of those classes, to the following description:
– Class 9: ‘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; semiconductor 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’;
– Class 39: ‘Travel services; booking and reservation services for transportation and travel’;
– Class 41: ‘Booking and reservation services for entertainment’;
– Class 42 : ‘Hotel, accommodation and restaurant services; booking and reservation services for hotels, accommodation and restaurants [but] expressly excluding the aforesaid services related to accommodation and booking of university residences and for other lodging accommodation to be used by all types of students of all ages for the purpose of attending university’.
– the earlier Community word mark GALILEO, registered on 1 October 2003 under No 2157501, for goods and services in Classes 9, 16, 35, 38, 39, 41 and 42 corresponding, for each of those classes, to the following description:
– Class 9: ‘Computers, computer software, data processors, computer screens, computer printers, and parts therefor; computer software for use in the travel industry, network linking, travel and business expense accounting and reporting; computer programmes for use in connection with travel, transportation, travel and entertainment reservation and booking, car hire, data base access, interactive display, real time access for reservation and booking, marketing data, travel management, inventory management, market research for the travel industry, booking records, advertising, on-line information storage and retrieval, office and business management in the travel field, ticketing, hotel and accommodation reservation and description; computerised travel directories and maps; computer utility software and computer software for use by travel agencies for making transportation arrangements for customers, spreadsheets, accounting, word processing and business management applications; modems and telecommunication apparatus and instruments; computer software and programmes for business expense reporting’;
– Class 16: ‘Periodical publications, instruction manuals; computer manuals; printed matter; printed publications relating to computers, computer systems, computer related goods and computer related services; operating and user manuals; instructional and teaching materials; books; computer print outs; newsletters; periodicals; newspapers’;
– 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’;
– Class 39: ‘Car hire booking and reservation services; transportation and travel services; booking and reservations services for transportation and travel; computerised travel agency services; airline seat inventory information services; providing travel reservations and ticketing services for others; computerised travel directory services for the travel industry; interactive display, reservation, booking, selling of travel and transportation’;
– Class 41: ‘Entertainment reservation and booking services; education and training in the field of computerised booking and reservation systems; arranging seminars and courses relating to the use of computerised reservation and booking systems and databases’;
– Class 42: ‘Hotel and the like accommodation booking and reservation services; providing access time to computer databases; consultancy and technical co-operation in the field of database use and exploitation; rental of computer and computer software products for purposes of database interrogation; collection, processing and distribution services for data, images and electronic messages; computer time sharing and computerised information retrieval services; interactive display, reservation, booking, and selling for others of hotel rooms and the like accommodation including display and advertising of location and facilities; leasing of computer equipment’.
8 As regards the two earlier Community word marks referred to above (‘the earlier marks’), the ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
9 On 29 September 2005, the Opposition Division rejected the opposition, taking the view that the services covered by the mark applied for were not similar to the goods or services covered by the earlier marks and that it could not therefore be alleged that there was infringement of Article 8(1)(b) of Regulation No 40/94, regardless of the similarity of the signs at issue. Furthermore, the Opposition Division found that the provisions of Article 8(4) and (5) of Regulation No 40/94 had not been met.
10 On 25 November 2005, the applicant filed a notice of appeal with OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.
11 By decision of 14 April 2011 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal and upheld the decision of the Opposition Division. In particular, as regards the earlier marks, it found that all the goods and services covered by those marks were dissimilar to the services covered by the mark applied for and that, consequently, one of the conditions provided for by Article 8(1)(b) had not been satisfied.
12 Furthermore, by decision of 11 July 2011, the Cancellation Division of OHIM, before which the Commission had brought proceedings, revoked trade mark No 2157501, inter alia, in respect of certain goods covered by that mark in Classes 9 and 16. That decision was the subject-matter of an appeal by the Commission before the Board of Appeal of OHIM as well as of a cross-appeal on the part of the applicant, which are still pending before OHIM.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM and the interveners to pay the costs.
14 OHIM and the interveners contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The subject-matter of the proceedings
15 The applicant states in the application that it intends to rely on all of the earlier rights cited in the contested decision, but that, for reasons of procedural economy, it bases its arguments in the present action only on earlier Community trade mark No 170167 and earlier Community trade mark No 2157501.
16 As the Commission points out, Article 44(1)(c) of the Rules of Procedure of the General Court provides that an application for annulment must state the subject-matter of the proceedings and a summary of the pleas in law on which the application is based. It is not therefore for the Court to remedy the shortcomings of the application, since any failure to comply with that provision deprives the other parties to the present proceedings of the opportunity properly to put forward their views on the arguments relied on in support of the application.
17 Consequently, it must be held that the subject-matter of the present action is to be restricted to an examination of the contested decision on the opposition which is based solely on the earlier marks, since all of the pleas in law and arguments put forward by the applicant in the present action relate only to those two marks.
Substance
18 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 inasmuch as the Board of Appeal did not take account of the fact that there was a high degree of similarity between the goods and services covered by the earlier marks and the services covered by the mark applied for.
19 In particular, the applicant complains that the Board of Appeal did not take into account the fact that some of the relevant goods and services could be complementary, as well as the fact that they could be aimed at the same consumer and have the same purpose.
20 The applicant puts forward a number of arguments to establish a similarity between the services covered by the mark applied for and the goods and services covered by the earlier marks on which the opposition is based.
21 According to the applicant, first, the term ‘research and development’, used in the description of the services in Class 42 covered by the application for the Community trade mark, covers any stage of the technological development of a product, from initial conception to execution, manufacture and improvement. The specification ‘in the field of satellite radionavigation’ is wide and does not confine the services to a particular sector. Consequently, the term ‘research and development’ may cover the research into and development of any component of satellite radio navigation systems, from the most complex to the most basic (GPS devices).
22 Second, the relevant consumers of the goods in Class 9 covered by earlier Community word mark No 170167 are the same as those of the services in Class 42 covered by the mark applied for. The fact that one mark covers goods, whereas the other mark covers services is irrelevant if the intended purpose of the goods and services at issue and the relevant public are the same and if those goods and services are complementary to each other. The Board of Appeal erred in categorising the abovementioned goods in Class 9 as being aimed at consumers who are members of the general public. That resulted in an incorrect analysis of the similarity between the goods and services at issue. Research and development in the field of satellite radio navigation is aimed at improving the goods in Class 9. The goods and services in question are therefore complementary to each other.
23 Third, the abovementioned arguments also apply to the goods covered by earlier Community word mark No 2157501. The telecommunication apparatus and instruments in Class 9 are equipment that is complementary to the services in Class 42 covered by the mark applied for. The services in Classes 35 and 38 could all relate to the operation of a GPS system and are therefore complementary to the services in Class 42 covered by the mark applied for (a GPS system is ‘processing’ data, ‘collecting’ data and is also involved in the ‘communication of data’). There is an overlap between the relevant publics that is related to the goods and services at issue. An aircraft manufacturer wishing to improve its navigation system is the customer of both a research and development undertaking and of a GPS communication service. Furthermore, the Board of Appeal erred in finding that the services in Class 38 covered by earlier Community word mark No 2157501 are mostly aimed at the general public. Those services are equally aimed at specialist consumers who may also be customers of research and development services in the field of satellite radio navigation.
24 Lastly, the applicant considers implicitly that the Board of Appeal’s decision is vitiated by a failure to state reasons, inasmuch as it submits, first, that no reasoning was provided to support the finding relating to the difference between the services in Class 35 covered by the applicant’s earlier Community word mark No 2157501 and the services covered by the mark applied for and, second, that no reasoning was provided as regards the goods in Class 9 covered by the same earlier Community word mark, in particular as regards ‘telecommunication apparatus and instruments’, which are not covered by earlier Community word mark No 170167.
25 OHIM, supported by the Commission and the ESA, disputes those arguments and takes the view that the Board of Appeal did not err in finding that the goods and services covered by the earlier marks and the services covered by the mark applied for were not similar.
26 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
27 It is necessary to examine, first, the claim alleging failure to state the reasons for the contested decision before examining whether the Board of Appeal was right in upholding the Opposition Division’s decision rejecting the opposition.
The statement of reasons for the contested decision
28 The applicant takes the view, in particular as regards earlier Community word mark No 2157501, that the Board of Appeal carried out a rather superficial assessment of the goods covered by that mark, in paragraph 37 of the contested decision in particular, inasmuch as those goods also covered ‘telecommunication apparatus and instruments’ in Class 9.
29 In paragraph 37 of the contested decision, the Board of Appeal observed, by way of a preliminary remark, that the goods in Class 9 and the services in Classes 39, 41 and 42 covered by earlier Community word mark No 2157501 were more or less identical to those covered by earlier Community word mark No 170167.
30 That paragraph must be read in conjunction with paragraphs 30 and 31 of the contested decision, in which the Board of Appeal found, as regards earlier Community word mark No 170167, that all the goods in Class 9 on which the opposition is based were dissimilar to the services in Class 42 covered by the mark applied for.
31 It must also be borne in mind that the obligation to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 12 July 2012 in Case T‑389/11 Gucci v OHIM — Chang Qing Qing (GUDDY), not published in the ECR, paragraph 17 and the case-law cited).
32 It must therefore be held that the Board of Appeal did not fail to comply with its obligation to state reasons by not examining in a more detailed manner the applicant’s argument that earlier Community word mark No 2157501 also covers ‘telecommunication apparatus and instruments’ in Class 9, since a possible error of assessment as to whether or not the goods covered by Class 9 of earlier Community word mark No 2157501 are similar to the services in Class 42 covered by the mark applied for comes within the remit of the substantive examination.
33 The applicant also alleges that the Board of Appeal found, in paragraph 38 of the contested decision, that the services in Class 35 covered by earlier Community word mark No 2157501 were dissimilar to those covered by the mark applied for, without providing any reasoning.
34 It must, however, be stated that the Board of Appeal provided some explanation in that regard, by stating, in paragraph 38 of the contested decision, that the goods in Class 16 and the services in Class 35 were totally dissimilar to the services covered by the mark applied for, with the result that they had no connection or intercepting points.
35 Furthermore, it is also necessary to take into account the more detailed statement of reasons provided by the Opposition Division. Given that the Board of Appeal upheld the Opposition Division’s decision in its entirety, and in view of the continuity in terms of function between the Opposition Divisions and the Boards of Appeal, to which Article 64(1) of Regulation No 207/2009 attests (see, to that effect, Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 30, and Case T‑323/03 La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE) [2006] ECR II‑2085, paragraphs 57 and 58), that decision and its reasoning form part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to carry out in full its review of legality as regards the merits of the assessment of the likelihood of confusion (see, to that effect, judgment of 21 November 2007 in Case T‑111/06 Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), not published in the ECR, paragraph 64).
36 The Opposition Division also provided explanations in its decision in support of the finding that the services in Class 35 covered by earlier Community word mark No 2157501, which relate inter alia to the processing and distribution of data, are different from the research and development services covered by the mark applied for.
37 It must therefore be held that the contested decision is sufficiently reasoned.
The merits of the contested decision
38 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
39 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
40 Consequently, in accordance with that case-law, it is sufficient, in order to exclude a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, for there to be no similarity between the goods or services covered by the earlier marks and those covered by the mark applied for.
– The relevant public
41 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well-informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
42 In the present case, the Board of Appeal found, in paragraph 27 of the contested decision, a finding which the parties do not, moreover, dispute, that the research and development in the field of satellite radio navigation covered by the mark applied for was aimed at a specialist public of undertakings engaged in research and development in the field of satellites and highly sophisticated localisation software and, thus, that those services were 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.
43 The applicant does not dispute that finding, but nevertheless claims that the goods covered by the earlier marks may also be aimed at a specialist public, and it disputes the Board of Appeal’s assessments in that regard. Those assessments will, however, be appraised in the context of the examination of the similarity of the goods which follows.
– The comparison of the goods and services
44 It must be borne in mind that the applicant complains that the Board of Appeal did not take into account the fact that some of the relevant goods and services could be complementary, as well as the fact that they could be aimed at the same consumer and have the same purpose.
45 According to settled case-law, in assessing the similarity between the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 23, and Case T‑443/05 El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
46 The applicant submits that on account of the complementarity between the goods and services covered by the earlier marks and the services covered by the mark applied for, as well as the fact that some of those goods and services are also aimed at a specialist public, like the services covered by the mark applied for, the Board of Appeal should have found that there was some similarity between the goods and services at issue. That degree of similarity, even if it were low, could have been offset by the fact that the marks at issue are similar in order to establish that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
47 As regards, in the first place, the extremely wide definition of research and development proposed by the applicant, which also includes the technological development, manufacture and improvement of goods, although it may be accepted, as does OHIM, that successful research and development may lead to the production of prototypes or models and to the testing and analysis of such working prototypes or models in the field concerned, that does not mean that the actual focus of research and development activities also includes the conception and manufacture of goods.
48 The definition of ‘research and development’ provided by the Organisation for Economic Co-Operation and Development (OECD), on which the parties rely, refers 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 does not refer to the production of goods or to their marketing.
49 It is true, as the applicant submits, that the ‘experimental development’ aspect is also part of the concept of research and development, as are basic research and applied research. However, as the ESA correctly points out, the purpose of ‘experimental development’ is not to market or manufacture new goods, but only to increase the stock of knowledge and, at the very most, to test certain prototypes, without the intention of marketing them.
50 The definition provided by the applicant, which appears in Article 1(c) of Commission Regulation (EU) No 1217/2010 of 14 December 2010 on the application of Article 101(3) [TFEU] to certain categories of research and development agreements (OJ 2010 L 335, p. 36), also provides 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’.
51 It must be noted, as the ESA points out, that recital 6 in the preamble to Regulation No 1217/2010 expressly excludes the stage of industrial application from the concept of research and development.
52 The applicant nevertheless attempts to claim, on the basis of that definition, that, in some cases, undertakings which manufacture goods may also be engaged in research and development relating to those goods, and vice versa. The applicant does not, however, at any time state how the Commission or the ESA, which both hold rights in the mark applied for, are also engaged in the production or marketing of GPS-type devices, as it seems to imply.
53 Furthermore, as OHIM correctly points out, many research and development projects do not focus on the development of a specific product and do not necessarily have as their purpose or consequence the manufacturing or production of goods or services.
54 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).
55 Consequently, the Board of Appeal did not make any error of assessment in finding, in paragraph 27 of the contested decision, 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.
56 As regards, in the second place, the applicant’s argument relating to the allegedly complementary nature of the services covered by the mark applied for and the goods and services covered by the earlier marks, it must be borne in mind that complementary goods and services are those which 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 be complementary (see easyHotel, paragraphs 57 and 58 and the case-law cited).
57 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. Those two categories of goods or services are not used together since those in the first category are used by the relevant undertaking itself whilst those in the second are used by customers of that undertaking (easyHotel, paragraph 58).
58 It is therefore in accordance with that case-law that the Board of Appeal examined, in the contested decision, whether the relevant public for which the services covered by the mark applied for were intended was the same as that for which the goods and services covered by the earlier marks on which the opposition was based was intended, in order to examine the degree to which those goods and services are complementary to each other.
59 The applicant claims that the Board of Appeal made errors of assessment in that regard in relation to the earlier marks. It is therefore necessary to examine the comparisons that the Board of Appeal made between the services covered by the mark applied for and, in turn, the goods and services covered by the earlier marks.
– The comparison between earlier Community word mark No 170167 and the mark applied for
60 As regards, first of all, the comparison between the goods in Class 9 covered by earlier Community word mark No 170167, such as electrical and electronic apparatus and instruments, computers, computer software and electronic communication apparatus, and the research and development in Class 42 covered by the mark applied for, the Board of Appeal found, in paragraph 26 et seq. of the contested decision, that those goods and services were not aimed at the same public and were thus neither complementary nor similar.
61 The applicant disputes that finding and submits that the purpose of a research and development undertaking is to develop prototypes and models for the purpose of carrying out functional tests of existing products and systems and modifications and improvements to them. Furthermore, according to the applicant, research and development undertakings produce end products, especially in the software sector. The same entity may both produce software and provide research and development in the field of satellite radio navigation. That shows that the goods covered by earlier Community word mark No 170167 and the services covered by the mark applied for are complementary to each other.
62 That argument cannot be accepted.
63 It must be pointed out, first, that, as the Opposition Division stated in its decision, goods are, by nature, generally dissimilar to services. Whereas the sale of goods in general involves the transfer of something physical, a supply of services generally involves an intangible activity.
64 Furthermore, according to the case-law, even though, in certain cases, goods and services may be complementary to each other (see, to that effect, judgment of 16 October 2013 in Case T‑282/12 El Corte Inglés v OHIM — Sohawon (fRee YOUR STYLe.), not published in the ECR, paragraph 37, and judgment of 16 January 2014 in Case T‑304/12 Message Management v OHIM — Absacker (ABSACKER of Germany), not published in the ECR, paragraph 29), if the publics for which the goods and services are intended are different, those goods and services are generally different (easyHotel, paragraphs 57 and 58).
65 In the present case, it is necessary to uphold the Board of Appeal’s finding in paragraphs 26 and 27 of the contested decision that, whereas the services covered by the mark applied for are aimed at a specialist public in the field of research and development of satellite radio navigation, the goods in Class 9 covered by earlier Community word mark No 170167, which are electrical and electronic apparatus and instruments, computers and electronic communication apparatus are aimed at the general public.
66 Admittedly, as the Board of Appeal acknowledged in paragraph 29 of the contested decision, such goods may also be aimed at and used by a specialist public, but for different purposes. The goods in Class 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.
67 Moreover, it has already been held that to acknowledge similarity in all cases in which the earlier right covers computers and where the services covered by the mark applied for may use computers clearly exceeds the scope of the protection granted by the legislature to the proprietor of a trade mark (see, to that effect, Case T‑336/03 Éditions Albert René v OHIM — Orange (MOBILIX) [2005] ECR II‑4667, paragraph 69).
68 In addition, it must be stated that, in accordance with the case-law referred to in paragraph 56 above, the goods and services covered by the two marks may be complementary only if they are indispensable or important for the use of each other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. In the present case, the goods and services covered by the earlier marks already existed, without the research and development in the field of satellite radio navigation covered by the mark applied for being indispensable for their use. There is therefore no risk that consumers of the goods and services covered by earlier Community word mark No 170167 and by the mark applied for might think that the same undertaking is responsible for providing those goods and services.
69 Moreover, as the ESA correctly states, the purpose of research and development 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. Consequently, the applicant’s argument that the whole focus of the research and development services in the field of satellite radio navigation is on the goods in Class 9 covered by earlier Community word mark No 170167 is unfounded.
70 The Board of Appeal did not therefore err in finding, in paragraphs 28 and 29 of the contested decision in particular, that the goods in Class 9 covered by earlier Community word mark No 170167 were not complementary to the services in Class 42 covered by the mark applied for.
71 Lastly, nothing in the file relating to the present case makes it possible to hold that there is any similarity between the services in Classes 39, 41 and 42 covered by earlier Community word mark No 170167 and the services covered by the mark applied for and the applicant has not, moreover, called into question the Board of Appeal’s findings on that point.
72 It must therefore be held that the Board of Appeal did not make an error of assessment in finding that the goods and services covered by the mark applied for were not similar to the goods and services covered by earlier Community word mark No 170167.
– The comparison between earlier Community word mark No 2157501 and the mark applied for
73 First, as regards the comparison between the services in Class 42 covered by the mark applied for and the goods in Class 9 covered by earlier Community word mark No 2157501, the Board of Appeal found that the latter were more or less identical to those covered by earlier Community word mark No 170167, with the result that the same conclusions applied regarding the comparison between the services and goods in the classes at issue.
74 The applicant disputes that finding and takes the view that the Board of Appeal should also have taken into account the ‘telecommunication apparatus and instruments’ in Class 9, since they were exclusively covered by earlier Community word mark No 2157501.
75 It must, however, be held that the Board of Appeal did not make any error of assessment in finding that the goods in Class 9 covered by earlier Community word mark No 2157501, inter alia telecommunication apparatus and instruments, were more or less identical to the goods in Class 9 covered by earlier Community word mark No 170167, which include, inter alia, electrical and electronic communication apparatus. In addition, the applicant has not explained in what way those goods are so different that their comparison with the services covered by the mark applied for should have constituted the subject-matter of a more detailed analysis on the part of the Board of Appeal.
76 It is consequently necessary to reject the applicant’s argument that the Board of Appeal made an error of assessment by not examining whether there were any similarities between the telecommunication apparatus and instruments in Class 9 covered by earlier Community word mark No 2157501 and the services covered by the mark applied for, and there is no need to rule, in that regard, on whether the revocation declared by the Cancellation Division of OHIM with regard to the applicant in respect of certain goods covered by earlier Community word mark No 2157501 is final or not.
77 Second, as regards the comparison between the services covered by the mark applied for and the services in Classes 35 and 38 covered by earlier Community word mark No 2157501, the Board of Appeal found, in paragraphs 38 and 39 of the contested decision, first, that the services in Class 35 were totally dissimilar to the services covered by the mark applied for and, second, that the services in Class 38 were of a different nature, were aimed at a different public and were not in competition with the services covered by the mark applied for, with the result that they could not be considered to be complementary to them.
78 The applicant submits that the Board of Appeal should have provided more explanations as regards the services in Class 35 and that it erred in finding that the services in Class 38 were aimed at the general public and were not in competition with the services covered by the mark applied for.
79 It must be borne in mind at the outset, that, in accordance with the case-law cited in paragraph 45 above, whether the goods or services are in competition with each other constitutes one of the criteria that makes it possible to assess the similarity between those goods and services, as do their nature, their intended purpose and whether they are complementary. It is therefore in that sense that paragraph 39 of the contested decision and the applicant’s arguments referring to that paragraph must be read.
80 So far as concerns, first, the comparison made with the services in Class 35, inasmuch as the Board of Appeal implicitly upheld the Opposition Division’s decision in that regard, paragraph 38 of the contested decision must be read in conjunction with the Opposition Division’s findings, as has been stated in paragraph 35 above.
81 The Opposition Division did not err 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 research and development in the field of satellite radio navigation. Likewise, the Opposition Division was right in finding that the business management activities were different from research and development activities and were 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.
82 So far as concerns, second, the comparison with the services in Class 38 made by the Board of Appeal in paragraph 39 of the contested decision, it is sufficient also to state that the Board of Appeal was right in finding that those services were different from those covered by the mark applied for. As OHIM points out, the data-communications services in Class 38 covered by earlier Community word mark No 2157501 are not aimed at the same public as research and development in the field of satellite radio navigation. Likewise, there can be no competition between those services because a consumer of data-communications services cannot simply replace them with research and development services, on account of the different purposes of those services (see, by analogy, judgment of 16 May 2007 in Case T‑158/05 Trek Bicycle v OHIM — Audi (ALLTREK), not published in the ECR, paragraph 55).
83 Furthermore, the applicant’s argument that the services concerned are complementary because GPS devices process data, collect data and are also involved in the communication of data must be rejected. As has been stated above, the purpose of the mark applied for is not the marketing or manufacture of GPS devices, but solely that of research and development in the field of satellite radio navigation. The mere fact that the potential applications of that research may have a connection with the communication of data is not sufficient to establish that there is complementarity between the services concerned.
84 Lastly, the applicant’s argument that the services in Class 38 are also aimed at a specialist public, including consumers of research and development services in the field of satellite radio navigation, is not sufficient to establish that there is a similarity between the services in question. The fact that some consumers of data communications may also be consumers of research and development in the field of satellite radio navigation does not allow the inference to be drawn that those services are generally aimed at the same public and are in competition with each other. The Board of Appeal was therefore right to find, in paragraph 40 of the contested decision, that a specialist public knows that undertakings and institutions engaged in the field of research and development do not operate telecommunications networks.
85 As regards the remainder of the reasoning followed by the Board of Appeal, which the applicant does not, moreover, dispute, it must be held that the Board of Appeal did not make any error in finding that the goods and services covered by earlier Community word mark No 2157501 were of a different nature than the services covered by the mark applied for, with the result that they were neither in competition with or complementary to those services and were not therefore similar to them.
86 The applicant’s single plea in law must therefore be declared unfounded and the action must be dismissed in its entirety.
Costs
87 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
88 Since the applicant has been unsuccessful, it must be ordered to pay the costs, including those incurred by OHIM, in accordance with the form of order sought by the latter.
89 Under the first subparagraph of Article 87(4) of the Rules of Procedure, Member States and institutions which intervened in the proceedings are to bear their own costs. The Commission must therefore bear its own costs. Furthermore, under the last subparagraph of Article 87(4) of the Rules of Procedure, the Court may order an intervener to bear his own costs. It must be held that, in view of the circumstances of the case, the ESA, as an intervener which is the joint holder of the rights in the mark applied for, must also bear its own costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Galileo International Technology LLC to bear its own costs and to pay those incurred by OHIM;
3. Orders the European Commission and the European Space Agency to bear their own respective costs.
Delivered in open court in Luxembourg on 11 September 2014.
[Signatures]